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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`LUPIN LIMITED and LUPIN PHARMACEUTICALS INC.
`Petitioner
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`v.
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`ICEUTICA PTY LTD.
`Patent Owner
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`Case IPR2016-00397
`Patent 8,999,387
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`PATENT OWNER ICEUTICA PTY LTD.’S
`MANDATORY NOTICES
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`Case IPR2016-00397
`Attorney Docket No: 31215-0011IP3
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`PATENT OWNER’S MANDATORY NOTICES
`UNDER 37 C.F.R. § 42.8
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`Pursuant to 37 C.F.R. § 42.8, the patent owner, iCeutica Pty Ltd. (“Patent
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`Owner”), hereby submits the following Mandatory Notices in response to the
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`Petition for Inter Partes Review of U.S. Patent No. 8,999,387.
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`1.
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`Real Party-In-Interest under 37 CFR § 42.8(b)(1)
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`iCeutica Pty Ltd. is the Patent Owner and the Real Party-In-Interest in this
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`proceeding. Iroko Pharmaceuticals, LLC is also a Real Party-In-Interest in this
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`proceeding.
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`2.
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`Related Matters under 37 CFR § 42.8(b)(2)
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`The following judicial or administrative matters may affect or be affected by
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`a decision in this proceeding:
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`U.S. 8,999,387 claims priority to USSN 13/266,122, now issued as U.S.
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`8,735,450.
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`The following pending U.S. applications and issued U.S. patents claim
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`priority to U.S. 8,999,387:
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`(a) U.S. 9,017,721
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`(b) U.S. 9,180,096
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`2
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`Case IPR2016-00397
`Attorney Docket No: 31215-0011IP3
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`(c) U.S. 9,180,095
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`(d) U.S. 9,186,328
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`(e) U.S. 9,173,854
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`(f) USSN 14/936,494
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`(g) USSN 14/942,513.
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`U.S. 9,017,721 is the subject of an IPR concurrently filed by Petitioner:
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`IPR2016-00399.
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`U.S. 8,999,387; U.S. 9,017,721; and U.S. 8,679,544 are the subject of a
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`patent infringement lawsuit pending in the District Court of Delaware: iCeutica
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`Pty Ltd. and Iroko Pharmaceuticals, LLC v. Lupin Ltd. and Lupin Pharmaceuticals
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`LLC, Case 1:14-cv-01515-SLR (United States District Court for the District of
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`Delaware).
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`3.
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`Lead and Back-Up Counsel, under 37 CFR § 42.8(b)(3)
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`The Patent Owner designates the following lead and back-up counsel:
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`LEAD COUNSEL
`Dorothy P. Whelan, Reg. No. 33,814
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: (612) 337-2509
`Fax: (612) 288-9696
`Email: IPR31215-0011IP3@fr.com
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`4.
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`BACK-UP COUNSEL
`Martina Tyreus Hufnal, Reg. No. 58,916
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: (302) 778-8471
`Fax: (612) 288-9696
`Email: PTAB-Inbound@fr.com
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`Service Information under 37 CFR § 42.8(b)(4)(i) et seq.
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`3
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`Case IPR2016-00397
`Attorney Docket No: 31215-0011IP3
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`Please address all correspondence and service to both counsel as listed
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`above. Patent Owner consents to service by email at IPR31215-0011IP3@fr.com.
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`Respectfully submitted,
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`/Dorothy P. Whelan/
`Dorothy P. Whelan
`Reg. No. 33,814
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`4
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`Date:/January 19, 2016/
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`Customer Number 26161
`Fish & Richardson P.C.
`Telephone: (612) 337-2509
`Facsimile: (202) 783-2331
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`Case IPR2016-00397
`Attorney Docket No: 31215-0011IP3
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4) and 42.205(b), the undersigned certifies that on
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`January 19, 2016, a complete and entire copy of this Patent Owner iCeutica Pty
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`Ltd.’s Mandatory Notices and Power of Attorney were provided via email to the
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`Petitioner by serving the correspondence address of record as follows:
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`Christy G. Lea
`Knobbe, Martens, Olson & Bear, LLP
`2040 Main St., 14th Floor
`Irvine, CA 92614
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`Kerry Taylor
`Benjamin Anger
`Knobbe, Martens, Olson, & Bear, LLP
`12790 El Camino Real
`San Diego, CA 92130
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`Email: BoxLupin15A@knobbe.com
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`/Christine Rogers/ __________
`Christine Rogers
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(650) 839-5092
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`5
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