UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MYLAN PHARMACEUTICALS INC., TEVA PHARMACEUTICALS
`USA, INC., and AKORN INC.,
`Petitioners
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`v.
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`ALLERGAN, INC.
`Patent Owner
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`Case IPR2016-011281
`Patent 8,629,111
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`DECLARATION OF JONATHAN SINGER IN SUPPORT OF PATENT
`OWNER’S MOTION FOR PRO HAC VICE ADMISSION
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`                                                            
`1 Cases IPR2017-00578 and IPR2017-00596 have been joined with this
`proceeding.
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`1 
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`ALL 2075
`MYLAN PHARMACEUTICALS V. ALLERGAN
`IPR2016-01128 
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`Proceeding No.: IPR2016-01128
`Attorney Docket: 13351-0008IP2 
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`DECLARATION OF JONATHAN SINGER IN SUPPORT
`OF PATENT OWNER’S MOTION FOR PRO HAC VICE
`ADMISSION
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`I, JONATHAN SINGER, hereby declare the following:
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`I am a member in good standing of the state bar of California, as well
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`1.
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`as numerous United States District Courts, the United States Court of Appeals for
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`the Federal Circuit, and the United States Supreme Court.
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`2.
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`I have not been suspended or disbarred from practice before any court
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`or administrative body.
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`3.
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`I have never had an application for admission to practice before any
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`court or administrative body denied.
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`4.
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`No sanction or contempt citation has been imposed against me by any
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`court or administrative body.
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`5.
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`I have read and will comply with the Office Patent Trial Practice
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`Guide and the Board’s Rules of Practice for Trials set forth in part 42 of the Code
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`of Federal Regulations.
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`6.
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`I will be subject to the USPTO Rules of Professional Conduct set
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`forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction under 37 C.F.R. §
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`11.19(a).
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`7.
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`I am a patent litigation attorney with significant experience
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`representing clients in a more than a dozen United States District Courts. I have
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`2 
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`experience in all stages of litigation, from preliminary injunction through trial and
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`Proceeding No.: IPR2016-01128
`Attorney Docket: 13351-0008IP2 
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`appeal, and across a wide range of technologies, including pharmaceutical drugs
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`and formulations, and molecular biology. My biography is attached hereto as
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`Exhibit A.
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`8.
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`In a related matter involving the ‘111 patent, I am representing Patent
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`Owner Allergan in consolidated litigation currently pending in the Eastern District
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`of Texas. See Allergan, Inc. v. Teva Pharmaceuticals USA, Inc. et al., No. 2:15-
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`cv-01455 (Lead Case). As a result, I have reviewed the ’111 Patent and its
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`relevant file history, and the prior art (including the prior art at issue in this Inter
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`Partes Review proceeding). In addition, I have gained significant familiarity with
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`claim construction issues pertaining to the ’111 Patent.
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`9.
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`I have performed a detailed review of the ‘111 Patent, the parties’
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`submissions in the present Inter Partes Review proceeding, and the Board’s
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`Decision instituting Inter Partes Review of the ‘111 Patent. Additionally, I have
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`served an essential role in this Inter Partes Review proceeding, including working
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`with the present Lead and Backup Counsel to prepare the Patent Owner’s
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`Response. Based on the foregoing, I have a detailed understanding of the ’111
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`Patent and the substantive and technical issues involved in this proceeding.
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`10.
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`I am currently applying for leave to appear pro hac vice before the
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`PTAB in the following related IPR proceedings: (1) IPR2016-01127, (2) IPR2016-
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`01129, (3) IPR2016-01130, (4) IPR2016-01131, and (5) IPR2016-01132. In the
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`Proceeding No.: IPR2016-01128
`Attorney Docket: 13351-0008IP2 
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`past three years I have applied to appear pro hac vice in (1) IPR2016-00172, (2)
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`IPR2016-00188, and (3) IPR2016-00189.
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`11.
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`I hereby declare that all statements made herein of my own
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`knowledge are true and that all statements made on information and belief are
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`believed to be true; and further that these statements were made with the
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`knowledge that willful false statements and the like so made are punishable by fine
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`or imprisonment, or both, under Section 1001 of Title 18 of the United States
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`Code.
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`Respectfully submitted,
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`/Jonathan Singer/
`Jonathan Singer
`Fish & Richardson P.C.
`12390 El Camino Real
`San Diego, CA 92130
`Tel:
`(858) 678-5634
`Email:
`singer@fr.com
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`Date: May 2, 2017
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`EXHIBIT A 
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`EXHIBIT A
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`5
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`Jonathan Singer | Attorney - Minneapolis & San Diego | Fish
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`Page 1 of 4
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`Jonathan E. Singer
`Principal
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` San Diego, CA  858-678-5634
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`
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` singer@fr.com
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`Background
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`Mr. Singer, a renowned life sciences industry leader and acclaimed trial attorney, heads the firm’s life sciences litigation practice.
`Whether working as lead trial counsel for his clients or as part of a trial or litigation team, Mr. Singer handles all aspects of litigation,
`including leading jury and bench trials, trying cases to administrative and arbitration panels and conducting briefing and arguments
`before the Courts of Appeals. Mr. Singer is annually named one of the nation’s finest life sciences trial attorneys, and is an expert in
`proceedings under the Hatch-Waxman Act. His clients consistently praise his innovative and ground-breaking work in cases like Mayo
`Collaborative Services, et al v. Prometheus Labs, In re Cyclobenzaprine and Allergan v. Barr Labs. In addition to his courtroom work, Mr.
`Singer teaches life sciences trial and patent practice courses around the country.
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`Services
`• Litigation
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`• Hatch-Waxman
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`• Patent Litigation
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`Industries
`• Chemicals
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`• Life Sciences
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`Education
`J.D., University of Chicago Law School 1992
`with honors
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`A.B., Dartmouth College 1986
`Chemistry
`Daniel Webster Scholar
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`Admissions
`• California 1997
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`• Minnesota 1998
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`• Supreme Court of the United States
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`• U.S. Court of Appeals for the Federal Circuit
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`http://www.fr.com/jonathan-e-singer/
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`1/26/2017
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`Jonathan Singer | Attorney - Minneapolis & San Diego | Fish
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`Page 2 of 4
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`Other Distinctions
`Mr. Singer has received numerous awards for his courtroom work, including:
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`• Named in the National Law Journal’s special report “Winning: High Stakes, Significant Victories” (2016)
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`• IAM Patent 1000, Intellectual Asset Management (2013, 2016)
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`• Best Lawyer(R) in America for Patent Litigation (2016)
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`• “IP Star,” Managing Intellectual Property (2013-2016)
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`• Leader in IP litigation, Chambers USA (2007 – 2015)
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`• Life Sciences MVP, Law 360 (2013)
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`• Lawdragon 500 Leading Lawyers in America (2013)
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`• “Life Science Star”, LMG Life Sciences (2012-13)
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`• Super Lawyer, Minnesota Law & Politics, (2006, 2010-13)
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`• Appellate MVP, Law 360 (2012)
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`• “Best in Bar,” Minneapolis St. Paul Business Journal (2012)
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`• Litigator of the Week, American Lawyer (8/25/2011, 3/23/2012, 6/9/2016)
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`• Attorney of the Year, Minnesota Lawyer (2007, 2009, 2012)
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`• Intellectual Property Advisory Board, Law 360 (2011)
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`• IAM Life Sciences 250, Intellectual Asset Management (2010)
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`• Client Service All Star, BTI (2006)
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`Course faculty member, “Biotechnology: Patent Prosecution, Licensing, Litigation, and Hatch-Waxman,” Patent Resources Group, Inc.
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`Experience
`Pending and Recent Life Sciences Cases
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`Gilead Sciences, Inc. v. Merck & Co, Inc., et al, (N.D.Cal.): Representing plaintiffs in
`pending declaratory judgment action over hepatitis C treatment SOVALDI®.
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`Allergan, Inc. v. Sandoz Inc., et al (E.D.Tx.): Trial counsel for plaintiff in Hatch-Waxman
`action over ANDAs for glaucoma drug LUMIGAN® 0.01.  Injunction entered against
`generic entry in January, 2014.  Appeal pending.
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`Cephalon, Inc., et al v. Mylan Labs, et al (D. Del.): Trial counsel for plaintiffs in Hatch-
`Waxman action over ANDA for breakthrough pain drug FENTORA®.  Injunction
`entered against generic entry in July, 2013.  Appeal pending.
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`Roche Palo Alto, et al v. Lupin, Ltd., et al (D.N.J.): Trial counsel for plaintiffs in Hatch-
`Waxman action over ANDA for angina drug RANEXA®; after three-week bench trial in
`May, 2013, case settled with Lupin agreeing to forestall entry until three months before
`patent expiry.
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`Allergan, Inc., et al v. Apotex Corp., et al. (M.D.N.C.): Trial counsel for plaintiffs in Hatch-
`Waxman action over ANDAs for eyelash drug LATISSE®.  Injunction entered against
`generic entry in January, 2013.  Appeal pending.
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`Prometheus Laboratories v. Mayo Collaborative Services, et al (S.D.Cal.): Lead district
`court and appellate counsel for defendants in patent infringement action over
`metabolite assays for thiopurine drugs.  Argued and secured summary judgment of
`invalidity under 35 U.S.C. § 101.  After reversal at Federal Circuit Court of Appeals,
`Supreme Court of the United States reversed appellate court at __ U.S. __, 132 S.Ct.
`1289 (2012).  Widely recognized as most important patent case of 2012.
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`http://www.fr.com/jonathan-e-singer/
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`Jonathan Singer | Attorney - Minneapolis & San Diego | Fish
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`Page 3 of 4
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`Eurand, Inc. v. Impax Labs (In re Cyclobenzaprine) (D. Del.): District court and appellate
`counsel for plaintiffs in action for enforcement of settlement of Hatch-Waxman
`litigation.   Secured judgment in favor of plaintiffs restraining defendant from launching
`product in February, 2012.   Affirmed at 504 Fed.Appx. 900 (Fed. Circ. 2013)
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`Allergan, Inc. v. Barr Labs, Inc. (D. Del.): Trial and appellate counsel for plaintiffs in
`Hatch-Waxman action over ANDAs for glaucoma drug LUMIGAN®.  Injunction entered
`against generic entry in September, 2011.   Injunction affirmed at 501 Fed.Appx. 965 
`(Fed. Circ. 2013)
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`Allergan, Inc. v. Sandoz, Inc., et al (E.D.Tx.): Trial counsel for plaintiff in Hatch-Waxman
`actions over ANDAs for glaucoma drug COMBIGAN®.  Injunction entered against
`generic entry in August, 2011.  Injunction affirmed at 726 F.3d.1286 (Fed. Cir. 2013).
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`In re Cyclobenzaprine Hydrochloride Extended Release Litigation (D. Del.): Trial and
`appellate counsel for plaintiffs in Hatch-Waxman actions over ANDAs for skeletal
`muscle relaxant AMRIX®.   After verdict of obviousness, secured temporary restraining
`order against “launch at risk” by defendant Mylan.   Secured reversal at Federal Circuit
`Court of Appeals at 676 F.3d 1063 (Fed. Cir. 2012).
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`Allergan, Inc. v. Akorn, Inc., et al (D. Del.): Lead counsel for plaintiff in Hatch-Waxman
`action over ANDA for ocular pain drug ACUVAIL®.   Case amicably settled.
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`Allergan, Inc. v. Akorn, Inc, et al (E.D.Tx.): Lead counsel for plaintiff in patent
`infringement actions over generic versions of ocular pain drug ACULAR® LS.   Cases
`amicably settled.
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`Cephalon, Inc., et al v. Watson Pharmaceuticals, Inc., et al (D. Del.): Trial counsel for
`plaintiffs in Hatch-Waxman action over ANDAs for breathrough pain drug FENTORA®.
`Injunction entered against generic entry at 769 F.Supp.2d 761 (D. Del.) in April,
`2011. Affirmed on appeal.
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`In re Brimonidine Patent Litigation, MDL No. 1866 (D. Del.): Trial and appellate counsel
`for Allergan in multi-district litigation regarding ANDAs for glaucoma drugs,
`ALPHAGAN P .15% and ALPHAGAN® P .1%. Injunction entered against generic entry
`in October, 2009. Injunction affirmed at 643 F.3d 1366 (Fed. Cir. 2011).
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`Alzheimer’s Institute of America v. Mayo Clinic, et al (M.D. Fla.; AAA): Lead counsel for
`defendants in action for patent infringement and breach of contract over genetic
`mutations related to Alzheimer’s disease. After securing arbitration over breach of
`contract claim, tried and obtained decision for defendants. Patent infringement action
`settled thereafter.
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`Sciele Pharma, Inc., et al v. Mylan Labs., et al (D. Del.): Lead counsel for plaintiffs in
`Hatch-Waxman action over blood-pressure drug, SULAR®. Case successfully
`resolved upon patent expiration.
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`MIT & Repligen v. ImClone Corp. (D.Mass.): Counsel for plaintiffs in patent litigation over
`cell lines used to manufacture the late-stage colon cancer drug ERBITUX®. Argued
`and obtained summary judgment on key exhaustion defense. Case settled on morning
`of opening statements for $65 million.
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`Allergan, Inc., et al v. Alcon Laboratories, et al (C.D. Cal.; D.Del.):  Counsel for Allergan in
`series of cases regarding generic versions of Allergan’s glaucoma drug,
`ALPHAGAN. Case involving ALPHAGAN® resulted in landmark rulings on the
`permissible assertion of method-of use patents under the Hatch-Waxman Act. Case
`involving ALPHAGAN® P 0.15% resulted in settlement on the morning of opening
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`http://www.fr.com/jonathan-e-singer/
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`1/26/2017
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`Jonathan Singer | Attorney - Minneapolis & San Diego | Fish
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`Page 4 of 4
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`statements with defendant agreeing not to launch generic drug for several years and to
`pay royalty on release.
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`Other Notable Representations
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`Mayo Clinic, et al v. Peter Elkin (D.Minn.): Trial counsel for Mayo Clinic in trade secret
`case regarding natural language processing software. Jury verdict in favor of Mayo on
`willful trade secret misappropriation, intentional interference with contractual relations
`and other claims.  Verdict affirmed at 2013 WL 4516191 (8th Cir. 2013).
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`3M v. Avery-Dennison (D. Minn.): Trial counsel for 3M in case involving graphic films.
`Jury verdict for 3M of infringement, validity and inventorship.
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`Immtech Int’l, Inc. v. Neurochem, Inc. (AAA): Trial counsel for Immtech Int’l in arbitration
`over pharmaceutical license agreement. Breach of agreement found and award of
`attorneys’ fees granted.
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`Acacia Technologies v. New Destiny, et al (MDL – N.D. Cal.): Represented consortium of
`defendants in patent litigation over video streaming technology. Argued four-day
`Markman hearing that resulted in claims of asserted patent being found indefinite.
`Affirmed on appeal.
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`Ecolab, et al v. Solaia Technologies, Inc. (D. Minn.): Represented plaintiffs in declaratory
`judgment action for patent non-infringement, false advertising and unfair competition
`related to machine control systems. Case settled with business arrangement with
`defendants paying nothing to “patent troll” that had extracted dozens of six-figure
`settlements previously.
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`3M v. Indasa, et al – (D.Del.; ITC): Lead counsel for 3M in district court patent litigation
`over foam masking tapes. Co-counsel at ITC. Cases resulted in multiple consent
`judgments and general exclusion order barring further importation of infringing
`product.
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`Pioneer Hi-Bred Int’l v. Cargill, Inc. (S.D. Ia.): Represented Cargill in patent and trade
`secret litigation regarding inbred corn lines. Co-leader of worldwide team managing
`investigation and remediation in 30 countries. Case settled with business arrangement.
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`© 2017 - Fish & Richardson
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`http://www.fr.com/jonathan-e-singer/
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`1/26/2017
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