`Patent 8,791,154
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
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`APOTEX INC. and APOTEX CORP.
`Petitioners
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`v.
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`ALCON RESEARCH, LTD
`Patent Owner
`__________________
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`Patent No. 8,791,154
`Issue Date: July 29, 2014
`Title: HIGH CONCENTRATION OLOPATADINE
`OPHTHALMIC COMPOSITION
`__________________
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`Inter Partes Review No. 2016-01640
`__________________
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`PATENT OWNER’S MANDATORY NOTICES
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`37 C.F.R. § 42.8(a)(2)
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`Case IPR 2016-01640
`Patent 8,791,154
`Pursuant to 37 C.F.R. § 42.8(a)(2), Patent Owner Alcon Research, Ltd.
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`submits the following mandatory notices:
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`(1) Real parties in interest.
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`Alcon Research, Ltd. is a corporation organized and existing under the laws
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`of the State of Delaware and has a principal place of business at 6201 South
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`Freeway, Fort Worth, Texas 76134. Alcon is the assignee of U.S. Patent No.
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`8,791,154 (the “’154 patent”).
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`Alcon Research, Ltd. is a wholly-owned subsidiary of Novartis AG, a
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`corporation organized and existing under the laws of Switzerland, having an office
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`and place of business at Lichtstrasse 35, CH-4056 Basel, Switzerland.
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`(2) Related matters.
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`The following matters, in which the ’154 patent has been asserted, could
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`affect, or could be affected by, a decision in this proceeding:
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` Alcon Research, Ltd. v. Watson Laboratories, Inc., Actavis Pharma,
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`Inc., and Actavis Inc., Civil Action No. 15-1159-SLR (D. Del.)
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`(Consolidated).
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` Argentum Pharmaceuticals LLC v. Alcon Research Ltd., Case
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`No. IPR2016-00544.
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`Case IPR 2016-01640
`Patent 8,791,154
`Additionally, patent application 14/304,124, which was filed on June 13,
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`2014, claims the benefit of 13/475,607. The USPTO issued a Notice of Allowance
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`for patent application 14/304,124 on August 9, 2016.
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`(3) Lead and back-up counsel.
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`The Patent Owner designates the following lead and back-up counsel:
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`Lead Counsel:
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`Back-up Counsel:
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`David M. Krinsky
`Reg. No. 72,339
`Williams & Connolly LLP
`725 Twelfth Street, N.W.
`Washington, D.C. 20005
`202-434-5338 (Telephone)
`202-434-5029 (Facsimile)
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`Thomas S. Fletcher
`Reg. No. 72,383
`Williams & Connolly LLP
`725 Twelfth Street, N.W.
`Washington, D.C. 20005
`202-434-5338 (Telephone)
`202-434-5029 (Facsimile)
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`Powers of attorney appointing these attorneys to transact all business in this
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`proceeding are submitted together with this mandatory notice information.
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`(4) Service information.
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`Counsel for Patent Owner submits the following service information:
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`(i)
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`Electronic mail address:
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`(ii)
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`Postal mailing address:
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`(iii)
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`Hand-delivery address:
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`dkrinsky@wc.com
`tfletcher@wc.com
`pazeo-IPR@wc.com
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`David M. Krinsky
`Williams & Connolly LLP
`725 Twelfth Street, N.W.
`Washington D.C. 20005
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`David M. Krinsky
`Williams & Connolly LLP
`725 Twelfth Street, N.W.
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`Case IPR 2016-01640
`Patent 8,791,154
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`(iv)
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`Telephone number:
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`Washington D.C. 20005
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`202-434-5338
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`(v)
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`Facsimile number:
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`202-434-5029
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`Counsel for Patent Owner consent to electronic service by email at
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`dkrinsky@wc.com, tfletcher@wc.com, and pazeo-IPR@wc.com.
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`Date: September 8, 2016
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`Respectfully submitted,
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`/David M. Krinsky/
`David M. Krinsky
`Reg. No. 72,339
`Lead Counsel for
`Patent Owner
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`Williams & Connolly LLP
`725 Twelfth Street, N.W.
`Washington, D.C. 20005
`202-434-5338 (Telephone)
`202-434-5029 (Facsimile)
`dkrinsky@wc.com
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`Case IPR 2016-01640
`Patent 8,791,154
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`CERTIFICATE OF SERVICE
`(37 C.F.R. § 42.6(e))
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`The undersigned hereby certifies that the foregoing document was served on
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`September 8, 2016 by delivering a copy via electronic mail on the following
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`attorneys of record for the Petitioner:
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`/David M. Krinsky/
`David M. Krinsky
`Reg. No. 72,339
`Lead Counsel for Patent Owner
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`Teresa Stanek Rea (Reg. No. 30,427)
`TRea@Crowell.com
`Telephone No.: (202) 624-2620
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`Deborah H. Yellin (Reg. No. 45,904)
`DYellin@Crowell.com
`Telephone No.: (202) 624-2947
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`Vincent J. Galluzzo (Reg. No. 67,830)
`VGalluzzo@Crowell.com
`Telephone No.: (202) 624-2781
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`CROWELL & MORING LLP
`Intellectual Property Group
`1001 Pennsylvania Avenue, N.W.
`Washington, DC 20004-2595
`Facsimile No.: (202) 628-5116
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`Date: September 8, 2016
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`5
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