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Filed on behalf of: Mallinckrodt Hosp. Prods. IP Ltd.
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`Entered: April 13, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
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`PRAXAIR DISTRIBUTION, INC. AND NOxBOX LIMITED,
`Petitioner
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`v.
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`MALLINCKRODT HOSPITAL PRODUCTS IP LTD.
`Patent Owner
`_______________________
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`
`
`Case IPR2016-00779
`U.S. Patent No. 8,293,284
`_______________________
`
`Before STEVEN AMITRANI, Trial Paralegal.
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`PATENT OWNER’S MANDATORY NOTICES
`UNDER 37 C.F.R. § 42.8
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`

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`Case IPR2016-00779
`U.S. Patent No. 8,293,284
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`Pursuant to 37 C.F.R. § 42.8, Patent Owner Mallinckrodt Hospital Products
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`IP Ltd. (“Patent Owner”) submits the following Mandatory Notices in response to
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`the Petition for Inter Partes Review of U.S. Patent No. 8,293,284 (hereinafter “the
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`’284 patent”).
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`A. Real Party-In-Interest (37 C.F.R. § 42.8(b)(1))
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`The real party-in-interest is Mallinckrodt Hospital Products IP Ltd. INO
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`Therapeutics LLC, Mallinckrodt Hospital Products, Inc., and Mallinckrodt PLC,
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`affiliates of Mallinckrodt Hospital Products IP Ltd., are also real parties-in-interest.
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`B. Notice of Related Matters (37 C.F.R. § 42.8(b)(2))
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`Pursuant to 37 C.F.R. § 42.8, Patent Owner hereby provides the following
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`indication of judicial and administrative matters that would affect, or be affected
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`by, a decision in this proceeding:
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`On February 19, 2015, Patent Owner filed a complaint averring that
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`Petitioner’s Abbreviated New Drug Application (“ANDA”) infringes U.S. Patent
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`No. 8,293,284 under 35 U.S.C. § 271(e)(2). That lawsuit is pending in the United
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`States District Court for the District of Delaware and is captioned: INO
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`Therapeutics LLC et al. v. Praxair Distribution, Inc. et al., Civil Action No. 1:15-
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`cv-00170 (GMS).
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`In January 2015, Petitioner filed a petition requesting IPR of the ’284 patent
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`in IPR2015-00524 (“the 524 IPR”). On July 29, 2015, the Patent Trial and Appeal
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`Case IPR2016-00779
`U.S. Patent No. 8,293,284
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`Board (“Board”) denied that petition. IPR2015-00524, Paper 12. Petitioner also
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`filed four other petitions directed to patents in the same family as the ’284 patent,
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`U.S. Patent Nos. 8,282,966 (“the ’966 patent”); 8,431,163 (“the ’163 patent”);
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`8,795,741 (“the ’741 patent”); and 8,846,112 (“the ’112 patent”). Three of those
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`petitions were denied on July 29, 2015 in the same decision that denied the 524
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`IPR. See IPR2015-00522, Paper 12; IPR2015-00525, Paper 12; IPR2015-00526,
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`Paper 12. The fourth petition, requesting IPR of the ’112 patent, was granted, and
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`the Board instituted review of that patent on July 29, 2015. IPR2015-00529, Paper
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`No. 12. That proceeding is currently pending, with a final written decision
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`expected in the July/August 2016 timeframe.
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`Concurrently with this petition, Petitioner has again requested inter partes
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`review of the ’966 patent, the ’163 patent, the ’741 patent, and the ’112 patent. See
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`IPR2016-00777; IPR2016-00778; IPR2016-00780; IPR2016-00781.
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`One pending U.S. patent application claims priority to the ultimate parent
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`application of the ’284 patent: U.S. Application No. 13/683,444, filed on
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`November 21, 2012, which is currently on appeal from a final rejection in the US
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`Patent Office.
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`C. Designation of Lead and Backup Counsel (37 C.F.R. § 42.8(b)(3))
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`Patent Owner provides the following designation of counsel:
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`2
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`Case IPR2016-00779
`U.S. Patent No. 8,293,284
`
`
`Lead Counsel
`Robert Steinberg (Reg. No. 33,144)
`bob.Steinberg@lw.com
`Postal & Hand-Delivery Address:
`Latham & Watkins LLP
`355 South Grand Avenue
`Los Angeles, CA 90071-1560
`Telephone: 213.485.1234
`Fax: 213.891.8763
`
`D.
`
`Backup Counsel
`Daniel G. Brown (Reg. No. 54,005)
`daniel.brown@lw.com
`Postal & Hand-Delivery Address:
`Latham & Watkins LLP
`885 Third Avenue
`New York, NY 10022-4834
`Telephone: 212.906.1200
`Fax: 212.751.4864
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`Service of Information (37 C.F.R. § 42.8(b)(4))
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` Service of any documents via hand-delivery may be made at the postal
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`mailing address of the respective lead and back-up counsel designated above.
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`Patent Owner consents to electronic service at the email addresses listed above.
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`Respectfully submitted,
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`
`
`
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`By: /Robert Steinberg/
`
`Robert Steinberg (Reg. No. 33,144)
`bob.steinberg@lw.com
`Latham & Watkins LLP
`355 South Grand Avenue
`Los Angeles, CA 90071-1560
`213.485.1234; 213.891.8763 (Fax)
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`Dated: April 13, 2016
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`3
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`Case IPR2016-00779
`U.S. Patent No. 8,293,284
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I certify that on this 13th day of April,
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`2016, a true and correct copy of the foregoing Patent Owner’s Mandatory
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`Notices Under 37 C.F.R. § 42.8 was served by electronic mail on Petitioner’s
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`lead and backup counsel at the following email addresses:
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`sanjay.murthy@morganlewis.com
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`mike.abernathy@morganlewis.com
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`maria.doukas@morganlewis.com
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`benjamin.weed.PTAB@klgates.com
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`margaux.nair.PTAB@klgates.com
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`By: /Robert Steinberg/
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`Robert Steinberg (Reg. No. 33,144)
`bob.steinberg@lw.com
`Latham & Watkins LLP
`355 South Grand Avenue
`Los Angeles, CA 90071-1560
`213.485.1234; 213.891.8763 (Fax)
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`Filed on behalf of: Mallinckrodt Hosp. Prods. IP Ltd.
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`Entered: April 13, 2016
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
`
`PRAXAIR DISTRIBUTION, INC. AND NOxBOX LIMITED,
`Petitioner
`
`v.
`
`MALLINCKRODT HOSPITAL PRODUCTS IP LTD.,
`Patent Owner
`_______________________
`
`Case IPR2016-00779
`U.S. Patent No. 8,293,284
`_______________________
`
`Before STEVEN AMITRANI, Trial Paralegal.
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`PATENT OWNER’S NOTICE OF PATENT OWNERSHIP
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`

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`Case IPR2016-00779
`U.S. Patent No. 8,293,284
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`Patent Owner Mallinckrodt Hospital Products IP Ltd. (“Patent Owner”)
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`respectfully submits this notice regarding the correct identification of the Patent
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`Owner. As indicated on Public PAIR, the U.S. Patent & Trademark Office’s
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`information retrieval system, U.S. Patent No. 8,293,284 is currently assigned to
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`Mallinckrodt Hospital Products IP Limited, as of March 5, 2016. (Assignment 15,
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`Reel/Frame 038009/0016.) The Petition for Inter Partes Review of U.S. Patent
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`No. 8,293,284 (hereinafter “the ’284 patent”)
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`incorrectly
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`identifies INO
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`Therapeutics, Inc. d/b/a Ikaria, Inc. as an additional Patent Owner. The Patent
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`Owner has corrected the caption in its Power of Attorney and Mandatory Notices,
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`filed concurrently with the foregoing Notice of Patent Ownership.
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`The real parties in interest remain the Patent Owner Mallinckrodt Hospital
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`Products IP Ltd., and as affiliates of Mallinckrodt Hospital Products IP Ltd., INO
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`Therapeutics LLC, Mallinckrodt Hospital Products, Inc., and Mallinckrodt PLC.
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`Dated: April 13, 2016
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`Respectfully submitted,
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`By: /Robert Steinberg/
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`Robert Steinberg (Reg. No. 33,144)
`bob.steinberg@lw.com
`Latham & Watkins LLP
`355 South Grand Avenue
`Los Angeles, CA 90071-1560
`213.485.1234; 213.891.8763 (Fax)
`
`

`
`Case IPR2016-00779
`U.S. Patent No. 8,293,284
`
`
`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I certify that on this 13th day of April,
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`2016, a true and correct copy of the foregoing Patent Owner’s Notice of Patent
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`Ownership was served by electronic mail on Petitioner’s lead and backup counsel
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`at the following email addresses:
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`sanjay.murthy@morganlewis.com
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`mike.abernathy@morganlewis.com
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`maria.doukas@morganlewis.com
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`benjamin.weed.PTAB@klgates.com
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`margaux.nair.PTAB@klgates.com
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`By: /Robert Steinberg/
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`Robert Steinberg (Reg. No. 33,144)
`bob.steinberg@lw.com
`Latham & Watkins LLP
`355 South Grand Avenue
`Los Angeles, CA 90071-1560
`213.485.1234; 213.891.8763 (Fax)

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