`Date filed: June 16, 2016
`
`
`Filed On Behalf Of:
`
`
`Novartis AG
`
`By:
`
`Nicholas N. Kallas
`NKallas@fchs.com
`(212) 218-2100
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`ROXANE LABORATORIES, INC.,
`Petitioner,
`
`v.
`
`NOVARTIS AG,
`Patent Owner.
`
`
`
`Case IPR2016-01102
`Patent 5,665,772
`
`
`
`PATENT OWNER’S MANDATORY NOTICES
`UNDER 37 C.F.R. § 42.8(a)(2)
`
`
`
`
`
`
`
`
`REAL PARTY-IN-INTEREST PURSUANT TO 37 C.F.R. § 42.8(b)(1)
`
`Pursuant to the requirements of 37 C.F.R. § 42.8(a)(2), the undersigned
`
`states that Novartis AG (“Novartis” or “Patent Owner”) owns U.S. Patent No.
`
`5,665,772 (“the ’772 Patent”). Novartis is the real party-in-interest in IPR2016-
`
`
`
`01102.
`
`RELATED MATTERS PURSUANT TO 37 C.F.R. § 42.8(b)(2)
`
`The ’772 Patent is being asserted in the following patent infringement
`
`lawsuits: (1) Novartis Pharm. Corp. et al. v. Breckenridge Pharm., Inc., No. 14-
`
`1043-RGA (D. Del.); (2) Novartis Pharm. Corp. et al. v. Roxane Labs., Inc., No.
`
`14-1196-RGA (D. Del.); (3) Novartis Pharm. Corp. et al. v. Par Pharm., Inc., No.
`
`14-1289-RGA (D. Del.); (4) Novartis Pharm. Corp. et al. v. Par Pharm., Inc., No.
`
`14-1494-RGA (D. Del.); (5) Novartis Pharm. Corp. et al. v. Roxane Labs., Inc.,
`
`No. 14-1508-RGA (D. Del.); (6) Novartis Pharm. Corp. et al. v. Par Pharm., Inc.,
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`No. 15-78-RGA (D. Del.); and (7) Novartis Pharm. Corp. et al. v. Roxane Labs.,
`
`Inc., No. 15-128-RGA (D. Del.).
`
`The ’772 Patent is also involved in the following Inter Partes Review
`
`proceedings: (1) Novartis AG v. Par Pharm., Inc., Inter Partes Review No. 2016-
`
`00084 (P.T.A.B.); (2) Novartis AG v. Par Pharm., Inc., Inter Partes Review No.
`
`2016-01059 (P.T.A.B.); (3) Novartis AG v. Breckenridge Pharm., Inc., Inter
`
`
`
`1
`
`
`
`
`
`
`
`Partes Review No. 2016-01023 (P.T.A.B.); and (4) Novartis AG v. Breckenridge
`
`Pharm., Inc., Inter Partes Review No. 2016-01103 (P.T.A.B.).
`
`Other proceedings involving different patents that cover the same products
`
`as the proceedings above include: (1) Novartis Pharm. Corp. et al. v. Roxane Labs.,
`
`Inc., No. 15-474 (D. Del.); and (2) Novartis Pharm. Corp. et al. v. Par Pharm., Inc.,
`
`No. 15-1050 (D. Del.).
`
`IDENTIFICATION OF LEAD AND BACK-UP COUNSEL
`PURSUANT TO 37 C.F.R. §§ 42.8(b)(3) and 42.10
`
`Pursuant to 37 C.F.R. §§ 42.8(b)(3) and 42.10, Novartis designates Nicholas
`
`N. Kallas (Reg. No. 31,530) as lead counsel and Raymond R. Mandra (Reg. No.
`
`34,382) as back-up counsel.
`
`A power of attorney from Novartis is being submitted with this Notice.
`
`SERVICE INFORMATION PURSUANT TO 37 C.F.R. § 42.8(b)(4)
`
`Novartis may be served electronically using the following e-mail address:
`
`ZortressAfinitorIPR@fchs.com
`
`Novartis may be served by postal mailing, hand-delivery, telephone or
`
`facsimile as follows:
`
`Nicholas N. Kallas
`Fitzpatrick, Cella, Harper & Scinto
`1290 Avenue of the Americas
`New York, NY 10104
`Telephone: (212) 218-2100
`Facsimile: (212) 218-2200
`
`2
`
`
`
`
`
`
`
`
`
`/ Nicholas N. Kallas /
`Nicholas N. Kallas
`Registration No. 31,530
`Lead Counsel for Patent Owner
`FITZPATRICK, CELLA, HARPER
`& SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`Tel. 212-218-2100
`
`
`
`
`
`Respectfully submitted,
`
`
`
`Dated: June 16, 2016
`
`
`
`
`
`3
`
`
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`
`
`CERTIFICATE OF SERVICE
`
`I certify that a copy of the Patent Owner’s Mandatory Notices Under 37
`
`C.F.R. § 42.8(a)(2) was served on June 16, 2016 by causing it to be sent by email
`
`
`
`to counsel for Petitioner at the following email address:
`
`kzullow@goodwinprocter.com
`
`/ Nicholas N. Kallas /
`Nicholas N. Kallas
`Registration No. 31,530
`FITZPATRICK, CELLA, HARPER
`& SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`Tel. 212-218-2100
`
`
`
`
`
`Dated: June 16, 2016
`
`
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`
`4
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