UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________
`
`
`
`
`
`LUPIN LTD. AND LUPIN PHARMACEUTICALS INC.,
`Petitioner
`
`v.
`
`HORIZON THERAPEUTICS, INC.,
`Patent Owner
`
`__________
`
`
`
`Case IPR2016-00829
`Patent 9,095,559
`
`__________
`
`
`
`PATENT OWNER’S INITIAL MANDATORY NOTICES
`
`
`
`
`
`
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________
`
`
`
`
`
`LUPIN LTD. AND LUPIN PHARMACEUTICALS INC.,
`Petitioner
`
`v.
`
`HORIZON THERAPEUTICS, INC.,
`Patent Owner
`
`__________
`
`
`
`Case IPR2016-00829
`Patent 9,095,559
`
`__________
`
`
`
`PATENT OWNER’S INITIAL MANDATORY NOTICES
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.8(a), the Patent Owner submits the following
`
`initial mandatory notices.
`
`
`
`1.
`
`Real Parties-In-Interest (37 C.F.R. § 42.8(b)(1))
`
`U.S. Patent No. 9,095,559 is owned by Horizon Therapeutics, Inc. (f/k/a
`
`Hyperion Therapeutics, Inc.), a corporation organized and existing under the laws
`
`of the State of Delaware, having its principal place of business at 520 Lake Cook
`
`Road, Suite 520, Deerfield, Illinois, 60015. Pursuant to the requirements of 37
`
`C.F.R. § 42.8(b)(1), the undersigned state that the real parties-in-interest are
`
`Horizon Therapeutics, Inc., as well its corporate parents (collectively, Horizon):
`
` Horizon Pharma, Inc., a corporation organized and existing under the
`
`laws of the State of Delaware having its principal place of business at
`
`520 Lake Cook Road, Suite 520, Deerfield, Illinois, 60015, which is
`
`wholly owned by;
`
` Horizon Pharma Finance S.á r.l., an entity organized and existing under
`
`the laws of Luxembourg, having its principal place of business at 19 Rue
`
`de Bitbourg, Luxembourg, which is wholly owned by;
`
` Horizon Pharma Capital Limited, a corporation organized and existing
`
`under the laws of Ireland, having its principal place of business at
`
`Connaught House, 1st Floor, 1 Burlington Road, Dublin 4, Ireland, which
`
`is wholly owned by;
`
`IPR2016-00829
`
`PO Initial Mandatory Notices
`
`Page 1 of 6
`
`
`
` Horizon Pharma Holdings Limited, a corporation organized and existing
`
`under the laws of Ireland, having its principal place of business at
`
`Connaught House, 1st Floor, 1 Burlington Road, Dublin 4, Ireland, which
`
`is wholly owned by; and
`
` Horizon Pharma plc, a corporation organized and existing under the laws
`
`of Ireland, having its principal place of business at Connaught House, 1st
`
`Floor, 1 Burlington Road, Dublin 4, Ireland.
`
`
`
`2.
`
`Related Matters (37 C.F.R. § 42.8(b)(2))
`
`The following judicial and administrative matters may affect or be affected
`
`by a decision in this proceeding:
`
`(a)
`
`IPR2015-01117, petition filed April 29, 2015, by Par Pharmaceutical,
`
`Inc., directed at U.S. Patent No. 8,642,012, which is also owned by
`
`Horizon Therapeutics, Inc. and has one common inventor with the
`
`ʼ559 Patent at issue in this case. The Board instituted trial in an
`
`institution decision dated November 4, 2015.
`
`(b)
`
`IPR2015-01127, petition filed April 29, 2015, by Par Pharmaceutical,
`
`Inc., directed at U.S. Patent 8,404,215, which is the parent of the ʼ559
`
`Patent at issue in this case. The Board instituted trial in an institution
`
`decision dated November 4, 2015.
`
`IPR2016-00829
`
`PO Initial Mandatory Notices
`
`Page 2 of 6
`
`
`
`(c)
`
`IPR2016-00283, directed at the ʼ012 Patent. The petition was filed
`
`December 4, 2015 by the present Petitioners with a motion to join
`
`IPR2015-01117.
`
`(d)
`
`IPR2016-00284, directed at the ʼ215 Patent. The petition was filed
`
`December 4, 2015 by the present Petitioners with a motion to join
`
`IPR2015-01127.
`
`(e) Hyperion Therapeutics Inc. v. Par Pharmaceutical, Inc., Civil Action
`
`No. 2:14-cv-00384-JRG-RSP (E.D. Tex. filed April 23, 2014). The
`
`Patent Owner has accused Par of infringing the ʼ215 Patent. On
`
`December 14, 2015, the district court stayed that case pending
`
`resolution of IPR2015-01117 and IPR2015-01127.
`
`(f) Horizon Therapeutics Inc. v. Lupin Ltd. and Lupin Pharmaceuticals
`
`Inc., Civil Action No. 1:15-cv-07624-RBK-JS (D. N.J. filed Oct. 19,
`
`2015). The Patent Owner’s original complaint accused the Petitioners
`
`of infringing the ʼ012 Patent, the ʼ215 Patent, and the ʼ559 Patent. An
`
`amended complaint filed April 6, 2016 accuses the Petitioners of
`
`infringing just the ʼ559 Patent.
`
`(g)
`
`Pending U.S. Patent Appl. No. 14/816,674, filed August 3, 2015,
`
`which claims benefit of the ʼ559 Patent.
`
`IPR2016-00829
`
`PO Initial Mandatory Notices
`
`Page 3 of 6
`
`
`
`(h)
`
`Pending U.S. Patent Appl. No. 14/958,259, filed December 3, 2015,
`
`which claims benefit of the ʼ559 Patent.
`
`(i)
`
`Pending U.S. Patent Appl. No. 15/074,625, filed March 18, 2016,
`
`which claims benefit of the ʼ559 Patent.
`
`(j)
`
`Pending U.S. Patent Appl. No. 15/074,666, filed March 18, 2016,
`
`which claims benefit of the ʼ559 Patent.
`
`(k)
`
`Pending U.S. Patent Appl. No. 15/074,691, filed March 18, 2016,
`
`which claims benefit of the ʼ559 Patent.
`
`(l)
`
`Pending U.S. Patent Appl. No. 15/074,716, filed March 18, 2016,
`
`which claims benefit of the ʼ559 Patent.
`
`3.
`
`Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3))
`
`Pursuant to 37 C.F.R. §§ 42.8(b)(3) and 42.10(a), the Patent Owner provides
`
`the following designation of counsel:
`
`LEAD COUNSEL
`
`Robert Green (Reg. No. 27,555)
`Green, Griffith & Borg-Breen, LLP
`NBC Tower, Suite 3100
`455 North Cityfront Plaza
`Chicago, Illinois 60611
`Phone: (312) 883-8000
`Fax: (312) 883-8001
`rgreen@greengriffith.com
`
`
`
`
`
`
`IPR2016-00829
`
`PO Initial Mandatory Notices
`
`Page 4 of 6
`
`
`
`BACKUP COUNSEL
`
`Lauren Stevens (Reg. No. 36,691)
`Horizon Pharma USA, Inc.
` 150 S. Saunders Road
`Lake Forest, Illinois 60045
`Phone: (224) 383-3265
`Fax: (224) 383-3001
`lstevens@horizonpharma.com
`
`
`Dennis Bennett (Reg. No. 34,547)
`Global Patent Group, LLC
`1005 N. Warson Road, Suite 404
`St. Louis, Missouri 63132
`Phone: (314) 812-8018
`Fax: (314) 685-2300
`dennisbennett@globalpatentgroup.com
`
`Matthew Phillips (Reg. No. 43,403)
`Renaissance IP Law Group LLP
`7327 SW Barnes Road #521
`Portland, Oregon 97223
`Phone: (503) 964-1129
`Fax: (503) 517-9919
`matthew.phillips@renaissanceiplaw.com
`
`Emer Simic (Reg. No. 61,235)
`Green, Griffith & Borg-Breen, LLP
`NBC Tower, Suite 3100
`455 North Cityfront Plaza
`Chicago, Illinois 60611
`Phone: (312) 883-8000
`Fax: (312) 883-8001
`esimic@greengriffith.com
`
`Jessica Tyrus (Reg. No. 64,742)
`Green, Griffith & Borg-Breen, LLP
`NBC Tower, Suite 3100
`455 North Cityfront Plaza
`
`IPR2016-00829
`
`PO Initial Mandatory Notices
`
`Page 5 of 6
`
`
`
`Chicago, Illinois 60611
`Phone: (312) 883-8000
`Fax: (312) 883-8001
`jtyrus@greengriffith.com
`
`
`
`
`Pursuant to 37 C.F.R. § 42.10(b), a power of attorney for lead counsel
`
`Robert Green and back-up counsel Matthew Phillips, Emer Simic, and Jessica
`
`Tyrus is concurrently filed. Backup counsel Lauren Stevens and Dennis Bennett
`
`already have power of attorney in the underlying patent.
`
`4.
`
`Service Information (37 C.F.R. § 42.8(b)(4))
`
`Service information for the Patent Owner’s counsel of record is provided
`
`above, all of whom consent to service by e-mail. If service by means other than
`
`email is made, the Patent Owner requests that the petitioner notify each counsel
`
`above by email that service is being made by another means at the time of service.
`
`
`
`
`
`Date: 2016 Apr. 21
`
`Respectfully submitted,
`
`By: / M.C. Phillips /
`Matthew C. Phillips
`Registration No. 43,403
`Backup Counsel for Patent Owner
`
`IPR2016-00829
`
`PO Initial Mandatory Notices
`
`Page 6 of 6
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that on April 21, 2016, copies of the foregoing PATENT
`
`OWNER’S INITIAL MANDATORY NOTICES and all documents filed with it
`
`were served via electronic mail, as agreed to by counsel, upon the following
`
`counsel for the Petitioner:
`
`Elizabeth J. Holland: EHolland@goodwinprocter.com
`
`Cynthia Lambert Hardman: CHardman@goodwinprocter.com
`
`
`
`/ M.C. Phillips /
`Matthew C. Phillips
`Registration No. 43,403
`
`
`IPR2016-00829
`
`PO Initial Mandatory Notices COS
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