`
`David L. Cavanaugh
`Reg. No. 36,476
`Owen K. Allen
`Reg. No. 71,118
`Robert J. Gunther, Jr.
`Pro Hac Vice To Be Filed
`WilmerHale
`1875 Pennsylvania Ave., NW
`Washington, DC 20006
`
`Adam R. Brausa
`Reg. No. 60,287
`Daralyn J. Durie
`Pro Hac Vice To Be Filed
`Durie Tangri LLP
`217 Leidesdorff Street
`San Francisco, CA 94111
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________________________
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`GENENTECH, INC.,
`Patent Owner.
`____________________________________________
`
`Case IPR2016-01693
`U.S. Patent 6,407,213
`____________________________________________
`
`PATENT OWNER’S MANDATORY NOTICES
`UNDER 37 C.F.R. §42.8
`
`
`
`IPR2016-01693
`Patent Owner’s Mandatory Notices
`
`
`PATENT OWNER’S MANDATORY NOTICES
`
`Pursuant to 37 C.F.R. § 42.8, Patent Owner Genentech, Inc. respectfully
`
`submits the following Mandatory Notices.
`
`I.
`
`
`REAL PARTY IN INTEREST
`
`The real party in interest is Genentech, Inc.
`
`II. RELATED MATTERS
`
`
`Patent Owner identifies the following U.S. patent applications and issued
`
`patents that relate to U.S. Patent Application No. 08/146,206, which issued as U.S.
`
`Patent No. 6,407,213:
`
`• Patent Cooperation Treaty Application No. PCT/US92/05126, which
`
`was filed on June 15, 1992, is the parent international application of
`
`U.S. Patent No. 6,407,213;
`
`• U.S. Patent Application No. 07/715,272, which was filed on June 14,
`
`1991 and is now abandoned, is the parent application of international
`
`application PCT/US92/05126, which is the parent international
`
`application of U.S. Patent No. 6,407,213;
`
`- 2 -
`
`
`
`• U.S. Patent Application No. 08/439,004, which was filed on May 11,
`
`IPR2016-01693
`Patent Owner’s Mandatory Notices
`
`
`1995 and is now abandoned, claims the benefit of the priority date of
`
`U.S. Patent No. 6,407,213;
`
`• U.S. Patent Application No. 09/115,800, which was filed on July 15,
`
`1998 and is now abandoned, claims the benefit of the priority date of
`
`U.S. Patent No. 6,407,213;
`
`• U.S. Patent Application No. 09/705,392, which was filed on
`
`November 2, 2000 and issued as U.S. Patent No. 6,719,971, claims
`
`the benefit of the priority date of U.S. Patent No. 6,407,213;
`
`• U.S. Patent Application No. 09/705,686, which was filed on
`
`November 2, 2000 and issued as U.S. Patent No. 6,639,055, claims
`
`the benefit of the priority date of U.S. Patent No. 6,407,213;
`
`• U.S. Patent Application No. 09/705,398, which was filed on
`
`November 2, 2000 and issued as U.S. Patent No. 6,800,738, claims
`
`the benefit of the priority date of U.S. Patent No. 6,407,213;
`
`• U.S. Patent Application No. 10/835,641, which was filed on April 30,
`
`2004 and is now abandoned, claims the benefit of the priority date of
`
`U.S. Patent No. 6,407,213;
`
`- 3 -
`
`
`
`• U.S. Patent Application No. 11/444,791, which was filed on June 1,
`
`IPR2016-01693
`Patent Owner’s Mandatory Notices
`
`
`2006 and is now abandoned, claims the benefit of the priority date of
`
`U.S. Patent No. 6,407,213;
`
`• U.S. Patent Application No. 11/969,430, which was filed on January
`
`4, 2008 and issued as U.S. Patent No. 8,075,890, claims the benefit of
`
`the priority date of U.S. Patent NO. 6,407,213.
`
`Additionally, Patent Owner identifies the following matters that relate or
`
`may relate to U.S. Patent Application No. 08/146,206, which issued as U.S. Patent
`
`No. 6,407,213:
`
`• U.S. Patent No. 6,407,213 is the patent at issue in Mylan
`
`Pharmaceuticals Inc. v. Genentech, Inc., IPR2016-01694, which is
`
`pending.
`
`Patent Owner does not concede that any of the above-identified patents,
`
`applications, or proceedings, aside from U.S. Patent No. 6,407,213, would affect,
`
`or be affected by, a decision in the present IPR.
`
`III. COUNSEL
`Lead Counsel:
`
`David L. Cavanaugh, Reg. No. 36,476
`
`
`
`- 4 -
`
`
`
`IPR2016-01693
`Patent Owner’s Mandatory Notices
`
`
`Back-up Counsel:
`
`
`Robert J. Gunther, Jr., Pro Hac Vice motion to be submitted
`
`Owen K. Allen, Reg. No. 71,118
`
`Adam R. Brausa, Reg. No. 60,287
`
`Daralyn J. Durie, Pro Hac Vice motion to be submitted
`
`
`Powers of attorney are being filed concurrently with these Mandatory Notices.
`
`IV. SERVICE INFORMATION
`Electronic mail addresses:
`
`David.Cavanaugh@wilmerhale.com
`
`Owen.Allen@wilmerhale.com
`
`Robert.Gunther@wilmerhale.com
`
`abrausa@durietangri.com
`
`ddurie@durietangri.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
`1875 Pennsylvania Avenue NW
`Washington, DC 20006
`David.Cavanaugh@wilmerhale.com
`Telephone: 202-663-6025
`Facsimile: 202-663-6363
`
`
`
`- 5 -
`
`
`
`Date: September 20, 2016
`
`IPR2016-01693
`Patent Owner’s Mandatory Notices
`
`
`Respectfully submitted,
`
`By: /David L. Cavanaugh/
`David L. Cavanaugh
`Reg. No. 36,476
`Wilmer Cutler Pickering Hale and Dorr LLP
`1875 Pennsylvania Avenue NW
`Washington, DC 20006
`
`- 6 -
`
`
`
`
`
`IPR2016-01693
`Patent Owner’s Mandatory Notices
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that, on September 20, 2016, I caused a true and correct
`copy of the following materials:
`
`
`• Patent Owner’s Mandatory Notices Under 37 C.F.R. §42.8
`• Genentech, Inc.’s Power of Attorney
`
`to be served via electronic mail on the following attorneys of record:
`
`Jeffrey W. Guise
`WILSON SONSINI GOODRICH & ROSATI
`650 Page Mill Road
`Palo Alto, CA 94304
`jguise@wsgr.com
`
`Deanne M. Mazzochi
`RAKOCZY MOLINO MAZZOCHI SIWIK LLP
`6 West Hubbard Street, Suite 500
`Chicago, IL 60654
`dmazzochi@rmmslegal.com
`
`
`/Owen K. Allen/
`Owen K. Allen
`Reg. No. 71,118
`Wilmer Cutler Pickering Hale and Dorr LLP
`950 Page Mill Road
`Palo Alto, CA 94304
`(650) 600-5029
`
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