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`Filed: March 16, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`MYLAN PHARMACEUTICALS, INC.
`Petitioner
`v.
`
` SENJU PHARMACEUTICAL CO., LTD.
`Patent Owner
`_________________
`Case IPR2016-00626
`U.S. Patent 8,784,789
`_________________
`
`PATENT OWNER’S MANDATORY NOTICES
` PURSUANT TO 37 C.F.R. § 42.8
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`Case IPR2016-00626
`U.S. Patent 8,784,789
`
`
`
`Pursuant to 37 C.F.R. § 42.8(a)(2), Patent Owner Senju Pharmaceutical Co.,
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`Ltd. hereby submits the following mandatory notices in connection with this
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`proceeding.
`
`I.
`
`SENJU’S POWER OF ATTORNEY
`
`A Power of Attorney appointing lead and back-up counsel is being filed
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`concurrently with these Notices.
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`II.
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`SENJU’S MANDATORY NOTICES
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`(a) 37 C.F.R. § 42.8(b)(1): Real Party-in-Interest
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`The real party-in-interest for the Patent Owner is Senju Pharmaceutical Co.,
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`Ltd. Other real parties-in-interest include Bausch & Lomb Incorporated and
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`Bausch & Lomb Pharma Holdings Corp.
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`(b) Related Matters
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`1. Judicial
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`The patent challenged here, U.S. Patent 8,784,789 (“the ’789 patent”), has
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`been asserted in Bausch & Lomb Incorporated, Bausch & Lomb Pharma Holdings
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`Corp. and Senju Pharm. Co., Ltd. v. Micro Labs USA, Inc. and Micro Labs
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`Limited, Civil Action No. 1:14-cv-07406-NLH-JS, in the United States District
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`Court for the District of New Jersey, filed on November 26, 2014. There is a
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`related patent, U.S. Patent No. 8,877,168 (“the ’168 patent”), that is currently
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`2
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`
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`involved in a parallel district court proceeding. As the Patent Owner reads 37
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`C.F.R. § 42.8, Patent Owner is not required to individually identify the proceeding,
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`Case IPR2016-00626
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`U.S. Patent 8,784,789
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`but if the Board prefers it identified, Patent Owner will do so.
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`2. Administrative
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`Patent Owner notes the existence of U.S_ Patent No. 8,883,825 (“the ’825
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`patent”), which issued on November 11, 2014, based on U.S_ Patent Application
`
`No. 13/599,212, which is a division of the ’789 patent. Patent Owner also notes
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`the existence of pending U.S_ Application No. 14/511,393, which is a continuation
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`of the ’825 patent.
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`(b) 37 C.F.R. § 42.8(b)(3) and (4): Lead and Back—Up Counsel, and
`Service Information
`
`Senju designates the following counsel to transact all business in the United
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`States Patent & Trademark Office associated with the above-captioned proceeding.
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`Lead Counsel
`
`Back-Up Counsel
`
`Bryan C. Diner
`(Reg. No. 32,409)
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`
`Justin J- Hasford
`(Reg. No. 62,180)
`Finnegan, Henderson, Farabow,
`Garrett & Durmer, LLP
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`901 New York Avenue, NW
`
`901 New York Avenue, NW
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`Washington, DC 20001-4413
`Phone: (202) 408-4116
`Fax: (202) 408-4400
`Email: Bryan.Diner@finnegan.com
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`Washington, DC 20001-4413
`Phone: (202) 408-4175
`Fax: (202) 408-4400
`Email: Justin.Hasford@finnegan.com
`
`Joshua L. Goldberg
`(Reg. No. 59,369)
`Finne an, Henderson, Farabow,
`
`
`
`Case IPR2016-00626
`U.S. Patent 8,784,789
`Garrett & Dunner, LLP
`
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Phone: (202) 408-6092
`Fax: (202) 408-4400
`Email: Joshua.Goldberg@finnegan.com
`
`
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`
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`Please address all correspondence regarding this proceeding to lead and back-up
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`counsel. Senju consents to electronic service by email.
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`Respectfully submitted,
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`
`
`By: /Joshua L. Goldberg/
`
`Joshua L. Goldberg, Back-Up Counsel
`Reg. No. 59,369
`
`4
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`
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`Dated: March 16, 2016
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`CERTIFICATE OF SERVICE
`
`Case IPR2016-00626
`U.S. Patent 8,784,789
`
`The undersigned hereby certifies that a copy of the foregoing Patent
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`Owner’s Mandatory Notices was served on March 16, 2016, via email directed to
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`counsel of record for the Petitioner at the following:
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`Jitendra Malik, Ph.D.
`jitty.malik@alston.com
`
`Hidetada James Abe
`james.abe@alston.com
`
`Lance Soderstrom
`lance.soderstrom@alston.com
`
`Joseph M. Janusz
`Joe.janusz@alston.com
`
`
`/Bradley J. Moore/
`Bradley J. Moore
`Litigation Legal Assistant
`
`Finnegan, Henderson, Farabow, Garrett &
`Dunner, LLP
`
`
`
`5
`
`Date: March 16, 2016
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