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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`Paper No. ___
`Date Filed: December 19, 2019
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`WOCKHARDT BIO AG,
` Petitioner,
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`v.
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`JANSSEN ONCOLOGY, INC.
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`Patent Owner.
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`Case IPR2016-01582
`Patent 8,822,438 B2
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`PATENT OWNER’S NOTICE OF APPEAL
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`IPR2016-01582
`U.S. Patent 8,822,438
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`Notice is hereby given, pursuant to 37 C.F.R. § 90.2(a) and 90.3, and 35
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`U.S.C. § 141 and 142, that Patent Owner Janssen Oncology, Inc., (“Janssen”)
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`appeals to the United States Court of Appeals for the Federal Circuit from the Final
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`Written Decision of the Patent Trial and Appeal Board (“Board”) in Case
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`IPR2016-01582 entered on January 17, 2018 (Paper No. 72) (“Final Written
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`Decision”), from the decision denying Patent Owner’s Request for Rehearing
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`entered on December 3, 2018 (Paper No. 76), and from all underlying orders,
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`decisions, rulings and opinions.
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Janssen indicates that the
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`issues on appeal include, but are not limited to: the Board’s determination of
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`unpatentability of claims 1-20 of U.S. Patent No. 8,822,438 (the “’438 patent”)
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`under 35 U.S.C. § 103, and any finding or determination supporting or related to
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`this issue, as well as all other issues decided adversely to Janssen in any orders,
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`decisions, rulings and opinions.
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`Janssen is filing one copy of this Notice of Appeal with the Director of the
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`United States Patent and Trademark Office, and a copy of this Notice of Appeal is
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`being filed electronically with the Board. In addition, a copy of this Notice of
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`Appeal is being filed with the Clerk’s Office for the United States Court of
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`Appeals for the Federal Circuit, along with the required docketing fee.
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`1
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`IPR2016-01582
`U.S. Patent 8,822,438
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`December 19, 2018
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`Respectfully submitted,
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`By: /Dianne B. Elderkin/
`Dianne B. Elderkin (Reg. No. 28,598)
`delderkin@akingump.com
`Barbara L. Mullin (Reg. No. 38,250)
`bmullin@akingump.com
`Ruben H. Munoz (Reg. No. 66,998)
`rmunoz@akingump.com
`AKIN GUMP STRAUSS HAUER &
`FELD LLP
`Two Commerce Square
`2001 Market Street, Suite 4100
`Philadelphia, PA 19103
`Tel: (215) 965-1200
`Fax: (215) 965-1210
`JANS-ZYTIGA@akingump.com
`
`David T. Pritikin (pro hac vice)
`dpritikin@sidley.com
`Paul Zegger (Reg. No. 33,821)
`pzegger@sidley.com
`Alyssa B. Monsen (pro hac vice)
`amonsen@sidley.com
`SIDLEY AUSTIN LLP
`787 Seventh Avenue
`New York, NY 10019
`Tel.: (212) 839-5300
`Fax: (212) 839-5599
`ZytigaIPRTeam@sidley.com
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`Counsel for Patent Owner
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`2
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`IPR2016-01582
`U.S. Patent 8,822,438
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`CERTIFICATE OF FILING
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`I certify that the foregoing was filed electronically with the Board through
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`the PTAB E2E System, and a paper copy was served by Priority Mail Express on
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`December 19, 2018 with the Director of the United States Patent and Trademark
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`Office, at the following address:
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`Director of the U.S. Patent and Trademark Office
`c/o Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
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`I further certify that a true and correct copy of the foregoing Notice of
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`Appeal, along with the required filing fee, was filed electronically with the Court
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`of Appeals for the Federal Circuit via CM/ECF on December 19, 2018. Per Fed.
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`Cir. Rule 15(a)(1), one copy of this Notice of Appeal is being filed by Priority Mail
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`Express with the Clerk’s office of the United States Court of Appeals for the
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`Federal Circuit on December 19, 2018, at the following address:
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`Clerk of Court
`United States Court of Appeals for the Federal Circuit
`717 Madison Place NW
`Washington, DC 20439
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), and the parties’ agreement to accept
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`electronic service, I certify that a true and correct copy of the foregoing was served
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`3
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`IPR2016-01582
`U.S. Patent 8,822,438
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`on December 19, 2018 by causing it to be sent by e-mail to counsel for Petitioner
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`and Patent Co-Owner at the following e-mail addresses:
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`Dennies Varughese – dvarughe-PTAB@skgf.com
`Deborah A. Sterling – dsterlin-PTAB@skgf.com
`Lestin L. Kenton Jr. – lkenton-PTAB@skgf.com
`Ralph W. Powers III – tpowers-PTAB@skgf.com
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`Anthony C. Tridico – anthony.tridico@finnegan.com
`Jennifer H. Roscetti – jennifer.roscetti@finnegan.com
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`December 19, 2018
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`Respectfully submitted,
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`By: /Dianne B. Elderkin/
`Dianne B. Elderkin
`(Reg. No. 28,598)
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`Counsel for Patent Owner
`Janssen Oncology, Inc.
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`4
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