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UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MYLAN PHARMACEUTICALS INC. and MYLAN LABORATORIES
`LIMITED,
`Petitioner,
`
`v.
`
`UCB PHARMA GMBH,
`Patent Owner.
`
`Case IPR2016-00510
`Patent 6,858,650 B1
`
`
`
`
`
`PATENT OWNER MANDATORY NOTICE
`INFORMATION
`UNDER 37 C.F.R. § 42.8
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`
`IPR2016-00510
`Patent 6,858,650 B1
`A. Real Party in Interest
`UCB Pharma GmbH (“UCB”), formerly known as Schwarz Pharma AG and organized
`
`and existing under the laws of Germany, holds title to U.S. Patent No. 6,858,650 (the “‘650
`
`patent”) and is the real party-in-interest.
`
`B. Related Matters
`UCB and Pfizer Inc. (“Pfizer”), the exclusive licensee of the ‘650 patent, have sued
`
`Mylan Pharmaceuticals Inc. for infringement of the ‘650 patent in the following actions: Pfizer,
`
`Inc. and UCB Pharma GMBH v. Mylan Pharmaceuticals, Inc., No. 1:15-cv-00079-GMS (D.
`
`Del.) and Pfizer Inc. and UCB Pharma GMBH v. Mylan Pharmaceuticals Inc., Case No. 1:15-
`
`cv-00013-IMK (N.D.W.Va.).
`
`The following pending action also involves the ‘650 patent: Pfizer, Inc. and UCB
`
`Pharma GMBH v. Sandoz, Inc., et al., No. 1:13-cv-01110- GMS (D. Del.). UCB and Pfizer tried
`
`the case before Judge Gregory Sleet in the District Court of Delaware in July of 2015. Judgment
`
`has been entered that, inter alia, (1) the claims are not anticipated, and (2) the claims are not
`
`indefinite under 35 U.S.C. §112. Judgment regarding Defendants’ argument that the asserted
`
`claims are obvious under 35 U.S.C. §103 is pending. Defendants’ arguments at trial regarding
`
`obviousness included the assertion of, inter alia, Brynne [Petitioner’s Ex. 1007], Bundgaard
`
`[Petitioner’s Ex. 1012], Johansson [Petitioner’s Ex. 1005], and the Detrol Label [Petitioner’s Ex.
`
`1009]. Defendants identified Postlind [Petitioner’s Ex. 1010] in the Pretrial Order as a prior art
`
`reference potentially relevant for obviousness.
`
`The following action involving the ‘650 patent was recently dismissed by Judge Sleet:
`
`Pfizer, Inc. and UCB Pharma GMBH v. Dr. Reddy’s Laboratories, Ltd. and Dr. Reddy’s
`
`Laboratories, Inc., No. 1:15-cv-01067 (GMS) (D. Del.).
`
`
`
`
`2
`
`
`
`
`
`

`
`IPR2016-00510
`Patent 6,858,650 B1
`In addition, UCB understands that the Petitioners have filed the Inter Partes Review
`
`Petitions listed in the table below relating to either the ‘650 patent or four other patents related to
`
`the ‘650 patent (U.S. Patent Nos. 7,384,980; 7,855,230; 7,985,772; and 8,338,478):
`
`Patent No.
`
`Case Number
`
`IPR Filing Date
`
`Claims
`
`6,858,650
`
`7,384,980
`
`7,855,230
`
`7,985,772
`
`8,338,478
`
`IPR2016-00510
`
`January 28, 2016
`
`1-5, 21-24
`
`IPR2016-00512
`
`January 28, 2016
`
`IPR2016-00514
`
`January 28, 2016
`
`1-16
`
`1-5
`
`IPR2016-00517
`
`January 28, 2016
`
`1, 3, 4, 6-8
`
`IPR2016-00516
`
`January 28, 2016
`
`1-3, 5-8, 10-12
`
`
`3
`
`
`
`
`
`C. Lead and Back-up Counsel
`Lead Counsel
`Jeffrey J. Oelke, Reg. No. 37,409
`White & Case LLP
`1155 Avenue of the Americas
`New York, NY 10036
`(212) 819-8936
`joelke@whitecase.com
`
`
`
`Back-Up Counsel
`
`James S. Trainor, Jr., Reg. No. 52,297
`White & Case LLP
`1155 Avenue of the Americas
`New York, NY 10036
`(212) 819-8580
`jtrainor@whitecase.com
`
`Robert E. Counihan, Reg. No. 61,382
`White & Case LLP
`
`
`
`
`
`

`
`IPR2016-00510
`Patent 6,858,650 B1
`1155 Avenue of the Americas
`New York, NY 10036
`(212) 819-8255
`rcounihan@whitecase.com
`
`
`
`
`D. Service Information
`
`UCB may be served at its counsel, White & Case, LLP, at the above-indicated email
`
`addresses.
`
`E. Patent Owner Preliminary Response
`
`Patent Owner reserves the right to file a preliminary response at a later date.
`
`
`
`
`4
`
`
`
`
`
`
`
`
`
`

`
`IPR2016-00510
`Patent 6,858,650 B1
`
`Date: February 18, 2016
`
`
`
`
`
`WHITE & CASE LLP
`
`/Jeffrey J. Oelke/ (Electronically signed)______
`Jeffrey J. Oelke, Reg. No. 37,409
`James S. Trainor, Jr., Reg. No. 52,297
`Robert E. Counihan, Reg. No. 61,382
`White & Case LLP
`1155 Avenue of the Americas
`New York, NY 10036
`(212) 819-8200
`
`Attorneys for UCB Pharma GmbH
`
`
`
`
`5
`
`
`
`
`
`

`
`IPR2016-00510
`Patent 6,858,650 B1
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Patent Owner Mandatory
`
`Notice Information Under 37 CFR § 42.8 and the associated Power of Attorney document were
`
`served on February 18, 2016, by filing this document through the Patent Review Processing
`
`System as well as delivering a copy via electronic mail upon the following attorneys of record
`
`for the Petitioner:
`
`Mitchell G. Stockwell, Reg. No. 39,389
`mstockwell@kilpatricktownsend.com
`D. Clay Holloway, Reg. No. 58,011
`cholloway@kilpatricktownsend.com
`Alyson L. Wooten, Reg. No. 58,045
`awooten@kilpatricktownsend.com
`Kilpatrick Townsend & Stockton Kilpatrick Townsend & Stockton LLP
`LLP 1100 Peachtree Street, NE
`1100 Peachtree Street, NE Suite 2800
`Suite 2800 Atlanta, Georgia 30309
`Atlanta, Georgia 30309
`(404) 815-6500
`
`Respectfully submitted
`
`/Jeffrey J. Oelke/ (Electronically signed)______
`Jeffrey J. Oelke
`Reg. No. 37,409
`Phone: (212) 819-8936
`
`
`
`Date: February 18, 2016
`
`
`
`
`
`6

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