`
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________________________
`
`APOTEX INC., APOTEX CORP., APOTEX PHARMACEUTICALS
`HOLDINGS INC., AND APOTEX HOLDINGS, INC.,
`Petitioners,
`
`v.
`
`OSI PHARMACEUTICALS, INC.,
`Patent Owner.
`____________________________________________
`
`Case IPR2016-01284
`U.S. Patent No. 6,900,221
`____________________________________________
`
`PATENT OWNER MANDATORY NOTICES
`INFORMATION UNDER 37 C.F.R. §42.8
`
`
`
`IPR2016-01284
`U.S. Patent No. 6,900,221
`
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`PATENT OWNER MANDATORY NOTICES
`
`Pursuant to 37 C.F.R. § 42.8, Patent Owner OSI Pharmaceuticals, LLC, the
`
`successor in interest to OSI Pharmaceuticals, Inc., respectfully submits the
`
`following Mandatory Notices.
`
`I.
`
`
`REAL PARTY IN INTEREST
`
`The real parties in interest are OSI Pharmaceuticals, LLC (“OSI”); Astellas
`
`US LLC; Astellas US Holding, Inc.; Astellas Pharma Inc.; and Genentech, Inc.
`
`II. RELATED MATTERS
`
`
`Patent Owner identifies the following U.S. patent applications and issued
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`patents that relate to U.S. Patent Application No. 09/711,272, which issued as
`
`U.S. Patent No. 6,900,221:
`
` U.S. Provisional Application No. 60/164,907, which was filed on
`
`November 11, 1999, and is expired;
`
` U.S. Provisional Application No. 60/193,191, which was filed
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`March 30, 2000, and is expired;
`
` U.S. Provisional Application No. 60/206,420, which was filed on
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`May 23, 2000, and is expired;
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`
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` U.S. Application No. 09/711,272, which was filed on November 9,
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`IPR2016-01284
`U.S. Patent No. 6,900,221
`
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`2000, and issued into U.S. Patent No. 6,900,211;
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` U.S. Patent No. 6,900,221, which issued May 31, 2005, remains
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`active;
`
` U.S. Application No. 10/992,266, which was filed November 18,
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`2004, and issued into U.S. Patent No. 7,087,613; and
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` U.S. Patent No. 7,087,613, which issued August 8, 2006, remains
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`active.
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`Additionally, Patent Owner identifies the following matters that relate or
`
`may relate to U.S. Patent Application No. 09/711,272, which issued as U.S. Patent
`
`No. 6,900,221:
`
` U.S. Patent No. 6,900,221 was a patent-in-suit in OSI Pharms. Inc.
`
`et al. v. Teva Pharms. USA, Inc., Case No. 1:09-cv-00185-SLR
`
`(D. Del. Mar. 19, 2009) and OSI Pharms. Inc. et al. v. Mylan Pharms.,
`
`Inc., Case No. 1:09-cv-00186 (D. Del. Mar. 19, 2009), which were
`
`consolidated in Case No. 1:09-cv-00185-SLR, which is now closed;
`
` U.S. Patent No. 6,900,221 was a patent-in-suit in OSI Pharms. LLC.
`
`et al. v. Roxane Labs., Inc., Case No. 1:12-cv-00465-SLR
`
`(D. Del. Apr. 13, 2012), which is now closed;
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`- 3 -
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`
`
` U.S. Patent No. 6,900,221 was a patent-in-suit in OSI Pharms. LLC.
`
`IPR2016-01284
`U.S. Patent No. 6,900,221
`
`
`et al. v. Roxane Labs., Inc., Case No. 2:12-cv-02384-DMC
`
`(D.N.J. Apr. 20, 2012), which was transferred to the District of
`
`Delaware and opened as OSI Pharms. LLC. et al. v. Roxane Labs.,
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`Inc., Case No. 1:12-cv-00644-SLR (D. Del. May 23, 2012), which is
`
`now closed;
`
` U.S. Patent No. 6,900,221 was a patent-in-suit in OSI Pharms. LLC.
`
`et al. v. Roxane Labs., Inc., Case No. 1:12-cv-01669-SLR
`
`(D. Del. Dec. 7, 2012), which is now closed;
`
` U.S. Patent No. 6,900,221 is a patent-in-suit in OSI Pharms. LLC.
`
`et al. v. Apotex Inc. et al., Case No. 1:15-cv-00772-SLR
`
`(D. Del. Sept. 2, 2015) and OSI Pharms. LLC. et al. v. Breckenridge
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`Pharms. Inc. et al., Case No. 1:15-cv-01063-SLR (D. Del. Nov. 17,
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`2015), which are consolidated in lead Case No. 1:15-00772-SLR, and
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`remain pending.
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`III. COUNSEL
`
`
`Lead Counsel:
`
`Emily R. Whelan, Reg. No. 50,391
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`
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`
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`IPR2016-01284
`U.S. Patent No. 6,900,221
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`Back-up Counsel:
`
`
`Jonathan B. Roses, Reg. No. 61,115
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`Kevin M. Yurkerwich, Reg. No. 71,195
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`Powers of attorney are being filed concurrently with these Mandatory Notices.
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`IV. SERVICE INFORMATION
`
`Electronic mail address:
`
`Emily.Whelan@wilmerhale.com
`
`Jonathan.Roses@wilmerhale.com
`
`Kevin.Yurkerwich@wilmerhale.com
`
`
`Electronic service on lead and back up counsel is approved and preferred.
`
`Postal Mail, Courier or Hand Delivery:
`
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State St.
`Boston, MA 02109
`Emily.Whelan@wilmerhale.com
`Telephone: 617-526-6567
`Facsimile: 617-526-5000
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`
`
`Date: July 19, 2016
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`IPR2016-01284
`U.S. Patent No. 6,900,221
`
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`Respectfully submitted,
`
`By: /Emily R. Whelan/
`Emily R. Whelan
`Reg. No. 50,391
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State St.
`Boston, MA 02109
`617-526-6567
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`- 6 -
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`IPR2016-01284
`U.S. Patent No. 6,900,221
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`CERTIFICATE OF SERVICE
`
`I hereby certify that, on July 19, 2016, I caused a true and correct copy of the
`
`foregoing materials:
`
` Patent Owner Mandatory Notice Information Under
`37 C.F.R. § 42.8
`
` OSI Pharmaceuticals, LLC’s Power of Attorney
`
`to be served via electronic mail on the following attorneys of record:
`
`Aaron S. Lukas
`W. Blake Coblentz
`Cozen O’Connor
`1200 19th Street, N.W.
`Washington, D.C. 20036
`Telephone No.: 202-912-4800
`wcoblentz@cozen.com
`alukas@cozen.com
`
`
` /Jonathan Ben-Ur Roses/
`Jonathan B. Roses
`Reg. No. 61,115
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, MA 02109
`617-526-6456