IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DR. REDDY’S LABORATORIES, LTD.
`
`AND DR. REDDY’S LABORATORIES, INC.,
`
`Petitioners,
`
`INDIVIOR UK LIMITED
`
`(F/K/A RB PHARMACEUTICALS LIMITED),
`Patent Owner.
`
`Case No. IPR2016—01 113
`
`Patent No. 8,475,832
`
`PATENT OWNER INDIVIOR UK LIMITED’S
`
`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DR. REDDY’S LABORATORIES, LTD.
`
`AND DR. REDDY’S LABORATORIES, INC.,
`
`Petitioners,
`
`INDIVIOR UK LIMITED
`
`(F/K/A RB PHARMACEUTICALS LIMITED),
`Patent Owner.
`
`Case No. IPR2016—01 113
`
`Patent No. 8,475,832
`
`PATENT OWNER INDIVIOR UK LIMITED’S
`
`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`
`
`
`IPR2016-O1113
`
`Pursuant to 37 C.F.R. § 42.8, Patent Owner Indivior UK Limited submits
`
`the following Mandatory Notices.
`
`In accordance with 37 C.F.R. 42.8(a)(2), these
`
`Mandatory Notices are being timely filed within 21 days of service of the petition.
`
`A.
`
`Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`
`The real parties-in-interest are Indivior UK Limited, Indivior PLC, Indivior
`
`Inc. and MonoSol Rx, LLC.
`
`B.
`
`Related Matters Under 37 C.F.R. § 42.8(b)(2)
`
`The Patent Trial and Appeal Board denied two earlier—filed Petitions for
`
`Inter Partes Review of U.S. Patent No. 8,475,832 (“the ‘832 Patent”): IPR2014-
`
`00998 on December 19, 2014; and IPR2016~O028O on June 10, 2016. Inter Partes
`
`Review No. IPR2014-00325 is currently on appeal to the Court of Appeals for the
`
`Federal Circuit, Docket No. 16-1044.
`
`Patent Owner
`
`further
`
`identifies the
`
`following related judicial proceedings involving the ‘832 Patent:
`
`Case Caption
`Indivior Inc. et al. v. Teva Pharmaceuticals USA,
`
`Disposition
`stayed (adminstratively
`
`Inc., 1—16—cv—00178 (D. Del.)
`
`closed)
`
`Indivior Inc. et al. v. Sandoz Inc., 1—15—cv-01051
`
`pending
`
`(D. Del.)
`
`Indivior Inc. et al. v. Mylan Technologies Inc. et
`
`pending (stayed)
`
`al., 1-l5—Cv-00209 (N.D.W.V.)
`
`
`
`Case Caption
`Indivior Inc. et al. v. Mylan Technologies Inc. et
`
`
`Dis osition
`
`pending
`
`IPR2016—01113
`
`al., 1-15~cV—01016 (D. Del.)
`
`Reckitt Benckiser Pharmaceuticals Inc. et al. v.
`
`pending
`
`Alvogen Pine Brook Inc., 1-15-cv—00477 (D. Del.)
`
`iReckitt Benckiser Pharmaceuticals Inc. et al. v.
`
`pending
`
`Teva Pharmaceuticals USA Inc., 1—14—cV—01451 (D.
`
`Del.)
`
`BioDelivery Sciences International, Inc. v. Reckitt
`
`pending (stayed)
`
`Benckiser Pharmaceuticals Inc. et al. , 5—14-cV-
`
`00529 (E.D.N.C.)
`
`Reckitt Benckiser Pharmaceuticals Inc. et al. V. Par i Consolidated with 1—13—CV-
`
`Pharmaceutical, Inc. et al., 1-14—CV~0O422 (D.
`
`01674 (D.De1.)
`
`Del.)
`
`Reckitt Benckiser Pharmaceuticals Inc. et al. 12.
`
`Closed
`
`Alvogen Pine Brook Inc., 1-13-CV—O2003 (D. Del.)
`
`Reckitt Benckiser Pharmaceuticals Inc. et al. v.
`
`Closed
`
`BioDelivery Sciences International, Inc., 5—13—CV~
`
`00760 (E.D.N.C.)
`
`
`
`Case Caption
`Reckitt Benckiser Pharmaceuticals Inc. et al. v.
`
`I Disposition
`pending
`
`(trial
`
`opinion
`
`I
`
`Watson Laboratories Inc. et al., 1—13—cv—01674 (D.
`
`rendered June 3, 2016)
`
`IPR2016—01113
`
`Del.)
`
`Reckitt Benckiser Pharmaceuticals Inc. et al. v. Par
`
`closed
`
`Pharmaceutical, Inc. et al., 1-13-cv-1461 (D. Del.)
`
`C.
`
`Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`
`Lead Counsel
`
`Back-Up Counsel
`
`Enrique D. Longton (Reg. No. 47,304)
`Andrea G. Reister (Reg. No. 36,253)
`rlongton@cov.com
`areister@cov.com
`Postal and Hand—Delivery Address:
`Postal and Hand—Delivery Address:
`Covington & Burling LLP
`Covington & Burling LLP
`One CityCenter, 850 Tenth Street, NW One CityCenter, 850 Tenth Street, NW
`Washington, DC 20001
`Washington, DC 20001
`Telephone: (202) 662-5141
`Telephone: (202) 662-5108
`Facsimile: £202) 778-5141
`Facsimile: (202) 778-5108
`
`D.
`
`Service Information Under 37 C.F.R. § 42.8(b)(4)
`
`Service information for lead and back-up counsel
`
`is provided in the
`
`designation of lead and back-up counsel, above. Service of any documents via
`
`hand-delivery may be made at the postal mailing address of the respective lead and
`
`back-up counsel designated above. Patent Owner Indivior UK Limited consents to
`
`electronic service by email at the above listed email addresses of lead and back—up
`
`counsel.
`
`
`
`IPR2016~01113
`
`E.
`
`Power of Attorney
`
`A Power of Attorney to transact all business in the United States Patent &
`
`Trademark Office (“USPTO”)
`
`in connection with the above-referenced Inter
`
`Partes Review from Patent Owner Indivior UK Limited to the above-designated
`
`counsel at Covington & Burling LLP is being filed concurrently with these
`
`Mandatory Notices. The Power of Attorney is accompanied by a Statement Under
`
`37 C.F.R. § 3.73(b), executed by the Patent Owner.
`
`
`Date: June 20 2016
`
`Respectfully submitted,
`
`
`
`Andrea G. Reisterf
`Registration No. 36,253
`Enrique D. Longton
`Registration No. 47,304
`COVINGTON & BURLIN G LLP
`
`One CityCenter, 850 Tenth Street, NW
`Washington, DC 20001
`(202) 662-6000
`Attorneys for Patent Owner
`
`
`
`CERTIFICATE OF SERVICE
`
`IPR2016—01113
`
`Pursuant to 37 C.F.R. § 42.6, I hereby certify that on this 20th day of June 2016,
`
`the foregoing Patent Owner lndivior UK Limited’s Mandatory Notices Under 37
`
`C.F.R. § 42.8 was served by FedEx, a means at least as fast and reliable as Priority
`
`Mail Express®, on the following counsel of record for petitioner.
`
`Jeffrey B. Arnold
`Peter R. Hagerty
`Cantor Colburn LLP
`
`1180 Peachtree Street, Suite 2050
`
`Atlanta, GA 30309
`
`Leslie-Pain Maxwell, Ph.D.
`
`Andrew C. Ryan
`Cantor Colburn LLP
`
`20 Church Street, 22nd Floor
`
`Hartford, CT 06103
`
`Date: June 20, 2016
`
`lfC.:mN:\:
`
`/\\
`4 5
`it “if
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`‘
`we
`
`Andrea G. Reisfeg Esq.
`Registration No.: 36,253
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