`
`Filed: June 28, 2016
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`MYLAN PHARMACEUTICALS, INC.
`Petitioner
`v.
`
` SENJU PHARMACEUTICAL CO., LTD.
`Patent Owner
`_________________
`Case IPR2016-01163
`U.S. Patent 8,877,168
`_________________
`
`PATENT OWNER’S MANDATORY NOTICES
` PURSUANT TO 37 C.F.R. § 42.8
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2016-01163
`U.S. Patent 8,877,168
`
`
`
`Pursuant to 37 C.F.R. § 42.8(a)(2), Patent Owner Senju Pharmaceutical Co.,
`
`Ltd. hereby submits the following mandatory notices in connection with this
`
`proceeding.
`
`I.
`
`SENJU’S POWER OF ATTORNEY
`
`A Power of Attorney appointing lead and back-up counsel is being filed
`
`concurrently with these Notices.
`
`II.
`
`SENJU’S MANDATORY NOTICES
`
`(a) 37 C.F.R. § 42.8(b)(1): Real Party-in-Interest
`
`The real party-in-interest for the Patent Owner is Senju Pharmaceutical Co.,
`
`Ltd. Other real parties-in-interest include Bausch & Lomb Incorporated and
`
`Bausch & Lomb Pharma Holdings Corp.
`
`(b) Related Matters
`
`1. Judicial
`
`The patent challenged here, U.S. Patent 8,877,168 (“the ’168 patent”), has
`
`been asserted in Bausch & Lomb Incorporated, Bausch & Lomb Pharma Holdings
`
`Corp. and Senju Pharm. Co., Ltd. v. Micro Labs USA, Inc. and Micro Labs
`
`Limited, Civil Action No. 1:15-cv-03113-NLH-JS, in the United States District
`
`Court for the District of New Jersey, filed on May 1, 2015. There is a related
`
`patent, U.S. Patent No. 8,784,789 (“the ’789 patent”), that has been asserted in
`
`
`
`2
`
`
`
`Case IPR2016-01163
`
`U.S. Patent 8,877,168
`
`Bausch & Lomb Incorporated Bausch & Lomb Pharma Holdings Corp. and Senju
`
`Pharm. Co., Ltd. v. Micro Labs USA, Inc. and Micro Labs Limited, Civil Action
`
`No. 1:14-cv—07406-NLH—JS, in the United States District Court for the District of
`
`New Jersey, filed on November 26, 2014.
`
`2. Administrative
`
`A related inter partes review petition has also been filed in relation to the
`
`’789 patent, Mylan Pharmaceuticals, Inc. v Senju Pharmaceuticals Co. Ltd.,
`
`IPR2016-00626, filed on February 25, 2016. Patent Owner additionally notes the
`
`existence of U_S_ Patent No. 8,883,825 (“the ’825 patent”), which issued on
`
`November 11, 2014, based on U.S. Patent Application No. 13/599,212, which is a
`
`division of the ’789 patent. Patent Owner also notes the existence of pending U.S.
`
`Application No. 14/511,393, which is a continuation of the ’825 patent.
`
`(b) 37 C.F.R. § 42.8(b)(3) and (4): Lead and Back—Up Counsel, and
`Service Information
`
`Senju designates the following counsel to transact all business in the United
`
`States Patent & Trademark Office associated with the above-captioned proceeding-
`
`Lead Counsel
`
`Back—Up Counsel
`
`Phone: 202 408-4175
`
`Bryan C. Diner
`(Reg. No. 32,409)
`Finnegan, Henderson, Farabow,
`Garrett & Durmer, LLP
`
`Justin J. Hasford
`(Reg. No. 62,180)
`Finnegan, Henderson, Farabow,
`Garrett & Durmer, LLP
`
`901 New York Avenue, NW
`
`901 New York Avenue, NW
`
`Washington, DC 20001-4413
`Phone: 202 408-4116
`
`Washington, DC 20001-4413
`
`
`
`Fax: (202) 408-4400
`Email: Bryan.Diner@finnegan.com
`
`
`
`
`
`
`Case IPR2016-01163
`U.S. Patent 8,877,168
`Fax: (202) 408-4400
`Email: Justin.Hasford@finnegan.com
`
`Joshua L. Goldberg
`(Reg. No. 59,369)
`Finnegan, Henderson, Farabow,
`
`Garrett & Dunner, LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Phone: (202) 408-6092
`Fax: (202) 408-4400
`Email: Joshua.Goldberg@finnegan.com
`
`Elizabeth D. Ferrill
`(Reg. No. 58,415)
`Finnegan, Henderson, Farabow,
`
`Garrett & Dunner, LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Phone: (202) 408-4445
`Fax: (202) 408-4400
`Email: Elizabeth.Ferrill@finnegan.com
`
`Please address all correspondence regarding this proceeding to lead and back-up
`
`counsel. Senju consents to electronic service by email.
`
`Respectfully submitted,
`
`
`
`By: /Bryan C. Diner/
`Bryan C. Diner, Lead Counsel
`Reg. No. 32,409
`
`
`
`4
`
`
`
`Dated: June 28, 2016
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Case IPR2016-01163
`U.S. Patent 8,877,168
`
`The undersigned hereby certifies that a copy of the foregoing Patent
`
`Owner’s Mandatory Notices was served on June 28, 2016, via email directed to
`
`counsel of record for the Petitioner at the following:
`
`
`
`Date: June 28, 2016
`
`
`
`Jitendra Malik, Ph.D.
`jitty.malik@alston.com
`
`Hidetada James Abe
`james.abe@alston.com
`
`Lance Soderstrom
`lance.soderstrom@alston.com
`
`Joseph M. Janusz
`Joe.janusz@alston.com
`
`
`/Bradley J. Moore/
`Bradley J. Moore
`Litigation Legal Assistant
`
`Finnegan, Henderson, Farabow, Garrett &
`Dunner, LLP
`
`
`
`5
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
