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IPR2016-01578
`
`Patent Owner Mandatory Notices
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`AMNEAL PHARMACEUTICALS, LLC
`Petitioner,
`
`
`v.
`
`HOSPIRA, INC.,
`Patent Owner
`
`
`
`Case IPR2016-01578
`Patent 8,338,470
`
`
`
`
`
`PATENT OWNER MANDATORY NOTICES
`
`1
`
`
`
`
`
`
`
`
`
`

`
`
`
`IPR2016-01578
`
`
`
`Patent Owner Mandatory Notices
`
`Patent Owner, Hospira, Inc. submits the following mandatory disclosures
`
`under 37 C.F.R. §42.8.
`
`
`
`REAL PARTY-IN-INTEREST
`
`The real party in interest and Patent Owner by assignment is Hospira, Inc.,
`
`which is a subsidiary of Pfizer, Inc.
`
`RELATED MATTERS
`
`Patent Owner’s U.S. Patent No. 8,338,470 is involved in litigation in the
`
`District of Delaware, Civil Action No.: 15-697-RGA.
`
`U.S. Patent No. 8,338,470 is a continuation of U.S. Ser. No. 13/343,672
`
`filed Jan. 4, 2012 (now U.S. 8,242,158 - the subject of IPR2016-01577).
`
`Related U.S. patents and applications within the patent family include U.S.
`
`Ser. No. 15/058,602, filed Mar. 2, 2016, which is a continuation of 14/177,008
`
`filed Feb. 10, 2004 (now U.S. 9,320,712), which is a continuation of U.S. Ser. No.
`
`13/867,861, filed Apr. 22, 2013 (now U.S. 8,648,106 - the subject of IPR2016-
`
`01580), which is a continuation of U.S. Ser. No. 13/678,260 filed Nov. 15, 2012
`
`(now U.S. 8,436,033), which is a continuation of U.S. Ser. No. 13/541,524 filed
`
`Jul. 3, 2012 (now U.S. 8,338,470 - the subject of IPR2016-01578), which is a
`
`continuation of U.S. Ser. No. 13/343,672 filed Jan. 4, 2012 (now U.S. 8,242,158 -
`
`the subject of IPR2016-01577); and U.S. Ser. No. 13/678,148 filed Nov. 15, 2012
`
`(now U.S. 8,455,527 - the subject of IPR2016-01579).
`
`
`
`2
`
`

`
`
`
`IPR2016-01578
`
`Patent Owner Mandatory Notices
`
`LEAD AND BACKUP COUNSEL
`
`Back-Up Counsel
`
`Eliot D. Williams
`Reg. No. 50,822
`Baker Botts L.L.P.
`1001 Page Mill Road
`Building One, Suite 200
`Palo Alto, CA 94304
`Phone: 650-739-7500
`Fax: 650-739-7611
`eliot.williams@bakerbotts.com
`
`Stephen Hash
`Reg. No. 45,490
`Baker Botts L.L.P.
`98 San Jacinto Boulevard, Suite 1500
`Austin, TX 78701
`Phone: (512) 322-2500
`Facsimile: (512) 322-2501
`stephen.hash@bakerbotts.com
`
`
`
`Lead Counsel
`
`Sandra S. Lee
`Reg. No.: 51,932
`Baker Botts L.L.P.
`30 Rockefeller Plaza
`New York , NY 10012
`Phone: 212-408-2500
`Fax: 212-408-2501
`sandra.lee@bakerbotts.com
`
`
`
`
`
`In accordance with 37 CFR §42.10, a power of attorney accompanies these
`
`mandatory notices.
`
`SERVICE INFORMATION
`
`Please address all correspondence and service to lead and backup counsel as
`
`listed above. Patent Owner consents to service by email at the above email
`
`3
`
`addresses.
`
`
`
`
`
`

`
`
`
`IPR2016-01578
`
`Date: August 30, 2016
`
`
`
`
`Patent Owner Mandatory Notices
`
`
`
`Respectfully submitted,
`
`/Sandra S. Lee/
`Sandra S. Lee
`Registration No. 51,932
`Baker Botts L.L.P.
`30 Rockefeller Plaza
`New York, NY 10012
`
`Counsel for Patent Owner
`
`
`
`4
`
`

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`
`
`IPR2016-01578
`
`Patent Owner Mandatory Notices
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the foregoing Patent Owner
`
`Mandatory Notices is being served on August 30, 2016, by filing this document
`
`through the Patent Review Processing System as well as delivering a copy via
`
`email directed to the counsel for the Petitioner at the following address of record:
`
`Paul S. Tully: tully@mbhb.com
`Kevin E. Noonan: noonan@mbhb.com
`Andrea Orth: orth@mbhb.com
`McDonnell Boehnen Hulbert & Berghoff LLP
`300 South Wacker Drive
`Chicago, Illinois 60606
`Phone: 312 913-0001
`Fax: 312 913-0002
`
`
`
`
`
`Date: August 30, 2016
`
`Respectfully Submitted,
`
`/Sandra S. Lee/
`Sandra S. Lee
`Registration No. 51,932
`Counsel for Patent Owner
`
`
`
`
`
`
`
`
`
`5

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