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`
`
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`
`
`Filed: October 17, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`
`MYLAN PHARMACEUTICALS INC., TEVA PHARMACEUTICALS USA,
`INC. and AKORN INC., 1
`Petitioners,
`
`v.
`
`ALLERGAN, INC.
`Patent Owner.
`
`_____________________________
`
`Case IPR2016-01127 (8,685,930 B2)
`Case IPR2016-01128 (8,629,111 B2)
`Case IPR2016-01129 (8,642,556 B2)
`Case IPR2016-01130 (8,633,162 B2)
`Case IPR2016-01131 (8,648,048 B2)
`Case IPR2016-01132 (9,248,191 B2)
`_____________________________
`
`PETITIONER MYLAN PHARMACEUTICALS INC.’S MANDATORY
`CHANGE-OF-INFORMATION NOTICES
`
`
`1 Cases IPR2017-00576 and IPR2017-00594, IPR2017-00578 and IPR2017-
`00596, IPR2017-00579 and IPR2017-00598, IPR2017-00583 and IPR2017-00599,
`IPR2017-00585 and IPR2017-00600, and IPR2017-00586 and IPR2017-00601,
`have respectively been joined with the captioned proceedings. The word-for-word
`identical paper is filed in each proceeding identified in the caption pursuant to the
`Board’s Scheduling Order (Paper 10).
`
`
`
`

`

`
`
`
`
`Pursuant to 37 C.F.R. § 42.8(a)(3), the undersigned on behalf of and acting
`
`in a representative capacity for Petitioner Mylan Pharmaceuticals Inc. (“Mylan”),
`
`hereby submits the following mandatory change-of-information notices in
`
`connection with the inter partes reviews identified in the caption.
`
`A. Real Party-In-Interest (37 C.F.R. § 42.8(b)(1)) – Unchanged
`
`B. Related Matters (37 C.F.R. § 42.8(b)(2)) – Revised
`
`In Allergan, Inc. & St. Regis Mohawk Tribe v. Teva Pharmaceuticals USA,
`
`Inc., et al., 15-cv-1455 (E.D. Tex.), “the 13 asserted claims of the patents in suit—
`
`claims 26 and 27 of U.S. Patent No. 8,629,111; claims 1, 11, 13, 14, and 23 of U.S.
`
`Patent No. 8,648,048; claim 35 of U.S. Patent No. 8,685,930; and claims 13, 16,
`
`22, 26, and 27 of U.S. Patent No. 9,248,191—are declared to be invalid on the
`
`ground of obviousness, under 35 U.S.C. § 103 (2006).” See Dkt. No. 524 at 1
`
`(final judgment); id., Dkt. No. 523 at 135 (findings of fact and conclusions of law).
`
`Regarding joinder of the Tribe, the Court stated:
`
`[T]he Court has serious reservations about whether the contract
`
`between Allergan and the Tribe should be recognized as valid, rather
`
`than being held void as being contrary to public policy. … [But] the
`
`Court is not required to decide whether the assignment of the patent
`
`rights from Allergan to the Tribe was valid in order to resolve the
`
`question whether to add the Tribe as a co-plaintiff. Instead, the Court
`
`will adopt the safer course of joining the Tribe as a co-plaintiff, while
`
`
`-1-
`
`

`

`leaving the question of the validity of the assignment to be decided in
`
`the IPR proceedings, where it is directly presented.”
`
`Id., Dkt. No. 522 (F.R.C.P. 25 Memorandum and Order) at 5, 9.
`
`C. Lead and Back-up Counsel (37 C.F.R. § 42.8(b)(3)) – Unchanged
`
`
`
`D. Electronic Service – Unchanged
`
`
`
`Dated: October 17, 2017
`
`
`
`
`
`
`Respectfully submitted,
`
`/ Steven W. Parmelee /
` Steven W. Parmelee
` Reg. No. 31,990
`
`
`
`
`
`-2-
`
`

`

`CERTIFICATE OF SERVICE
`
`
`
`This is to certify that I caused to be served a true and correct copy of the
`
`foregoing Petitioner Mylan Pharmaceuticals Inc.’s Mandatory Change-of-
`
`Information Notices on this 17th day of October, 2017, on the Patent Owner at the
`
`correspondence address of Allergan, Inc. and St. Regis Mohawk Tribe as follows:
`
`Dorothy P. Whelan
`Michael Kane
`Susan Morrison Colletti
`Robert M. Oakes
`Jonathan Singer
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Email: IPR13351-0008IP1@fr.com
`Email: IPR13351-0008IP2@fr.com
`Email: IPR13351-0008IP3@fr.com
`Email: IPR13351-0008IP4@fr.com
`Email: IPR13351-0008IP5@fr.com
`Email: IPR13351-0008IP6@fr.com
`Email: PTABInbound@fr.com
`
`Alfonso Chan
`Joseph DePumpo
`Michael W. Shore
`Christopher L. Evans
`Shore Chan DePumpo LLP
`901 Main Street, Suite 3300
`Dallas, TX 75201
`Email: achan@shorechan.com
`Email: jdepumpo@shorechan.com
`Email: mshore@shorechan.com
`Email: cevans@shorechan.com
`
`-3-
`
`

`

`And on the remaining petitioners as follows:
`
`
`Gary Speier
`Mark Schuman
`CARLSON, CASPERS, VANDENBURGH,
`LINDQUIST & SCHUMAN, P.A.
`225 South Sixth Street, Suite 4200
`Minneapolois, MN 55402
`Email: gspeier@carlsoncaspers.com
`Email: mschuman@carlsoncaspers.com
`Attorneys for Teva Pharmaceuticals USA, Inc.
`
`
`Michael Dzwonczyk
`Azadeh Kokabi
`Travis Ribar
`SUGHRUE MION, PLLC
`2100 Pennsylvania Ave., NW
`Washington, DC 20037
`Email: mdzwonczyk@sughrue.com
`Email: akokabi@sughrue.com
`Email: tribar@sughrue.com
`Attorneys for Akorn Inc.
`
`
`
`Dated: October 17, 2017
`
`
`
`
`
`
`Respectfully submitted,
`
`/ Steven W. Parmelee /
` Steven W. Parmelee, Lead Counsel
` Reg. No. 31,990
`
`
`
`
`
`-4-
`
`

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