UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________________________
`
`MERCK SHARP & DOHME CORP.,
`Petitioner,
`
`v.
`
`GENENTECH, INC. AND CITY OF HOPE,
`Patent Owners.
`____________________________________________
`
`Case IPR2017-00047
`U.S. Patent 6,331,415 B1
`____________________________________________
`
`PATENT OWNERS’ MANDATORY NOTICES
`UNDER 37 C.F.R. §42.8
`
`
`
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________________________
`
`MERCK SHARP & DOHME CORP.,
`Petitioner,
`
`v.
`
`GENENTECH, INC. AND CITY OF HOPE,
`Patent Owners.
`____________________________________________
`
`Case IPR2017-00047
`U.S. Patent 6,331,415 B1
`____________________________________________
`
`PATENT OWNERS’ MANDATORY NOTICES
`UNDER 37 C.F.R. §42.8
`
`
`
`IPR2017-00047
`Patent Owners’ Mandatory Notices
`
`
`PATENT OWNERS’ MANDATORY NOTICES
`
`Pursuant to 37 C.F.R. § 42.8, Patent Owners Genentech, Inc. and City of
`
`Hope respectfully submit the following Mandatory Notices.
`
`I.
`
`
`REAL PARTY IN INTEREST
`
`The real parties in interest are Genentech, Inc. and City of Hope.
`
`II. RELATED MATTERS
`
`
`Patent Owners identify the following U.S. patent applications and issued
`
`patents that relate to U.S. Patent Application No. 07/205,419, which issued as U.S.
`
`Patent No. 6,331,415:
`
` U.S. Patent Application No. 06/483,457, which was filed on April 8,
`
`1983 and issued as U.S. Patent No. 4,816,567, is the parent
`
`application of U.S. Patent Application No. 07/205,419;
`
` U.S. Patent Application No. 08/422,187, which was filed on April 13,
`
`1995 and issued as U.S. Patent No. 7,923,221, claims the benefit of
`
`the priority date of U.S. Patent No. 6,331,415;
`
` U.S. Patent Application No. 08/931,121, which was filed on
`
`September 16, 1997 and is now abandoned, claims the benefit of the
`
`priority date of U.S. Patent No. 6,331,415; and
`
`- 2 -
`
`
`
` U.S. Patent Application No. 08/909,611, which was filed on August
`
`IPR2017-00047
`Patent Owners’ Mandatory Notices
`
`
`12, 1997 and is now abandoned, claims the benefit of the priority date
`
`of U.S. Patent No. 6,331,415.
`
`Additionally, Patent Owners identify the following matters that relate or may
`
`relate to U.S. Patent Application No. 07/205,419, which issued as U.S. Patent No.
`
`6,331,415:
`
` U.S. Patent Application No. 07/205,419 was at issue in Patent
`
`Interference No. 102,572, which has concluded;
`
` U.S. Patent Application No. 07/205,419 was at issue in Genentech,
`
`Inc. v. Celltech Ltd., 3:1998-cv-03926 (N.D. Cal. Oct. 9, 1998), which
`
`is now closed;
`
` U.S. Patent Application No. 08/422,187, which claims the benefit of
`
`the priority date of U.S. Patent No. 6,331,415, was at issue in Patent
`
`Interference No. 105,531, which has concluded;
`
` U.S. Patent No. 6,331,415 was the subject of Reexamination Control
`
`No. 90/007,542 (July 7, 2005), which has concluded;
`
` U.S. Patent No. 6,331,415 was the subject of Reexamination Control
`
`No. 90/007,859 (January 23, 2006), which has concluded;
`
`- 3 -
`
`
`
` U.S. Patent No. 6,331,415 was a patent-in-suit in MedImmune, Inc. v.
`
`IPR2017-00047
`Patent Owners’ Mandatory Notices
`
`
`Genentech, Inc., Case No. 2:03-cv-2567 MRP (C.D. Cal. Apr. 11,
`
`2003); which is now closed;
`
` U.S. Patent No. 6,331,415 was a patent-in-suit in Centocor, Inc. v.
`
`Genentech, Inc., Case No. 2:08-cv-03573 MRP (C.D. Cal. May 30,
`
`2008), which is now closed:
`
` U.S. Patent No. 6,331,415 was a patent-in-suit in Glaxo Group
`
`Limited v. Genentech, Inc., Case No. 2:10-cv-02764 MRP (C.D. Cal.
`
`Feb. 17, 2010), which is now closed;
`
` U.S. Patent No. 6,331,415 and U.S. Patent No. 7,923,221, which
`
`claims the benefit of the priority date of U.S. Patent No. 6,331,415,
`
`were both patents-in-suit in Human Genome Sciences, Inc. v.
`
`Genentech, Inc., Case No. 2:11-cv-06519 MRP (C.D. Cal. Apr. 12,
`
`2011), which is now closed;
`
` U.S. Patent No. 6,331,415 and U.S. Patent No. 7,923,221, which
`
`claims the benefit of the priority date of U.S. Patent No. 6,331,415,
`
`were both patents-in-suit in Genentech, Inc. v. Glaxo Group Limited,
`
`Case No. 2:11-cv-03065 MRP (C.D. Cal. Apr. 12, 2011), which is
`
`now closed;
`
`- 4 -
`
`
`
` U.S. Patent No. 6,331,415 and U.S. Patent No. 7,923,221, which
`
`IPR2017-00047
`Patent Owners’ Mandatory Notices
`
`
`claims the benefit of the priority date of U.S. Patent No. 6,331,415,
`
`were both patents-in-suit in Eli Lilly & Co. v. Genentech, Inc., Case
`
`No. 2:13-cv-07248 MRP (C.D. Cal. Feb. 28, 2013), which is now
`
`closed;
`
` U.S. Patent No. 6,331,415 and U.S. Patent No. 7,923,221, which
`
`claims the benefit of the priority date of U.S. Patent No. 6,331,415,
`
`were both patents-in-suit in Bristol-Myers Squibb Co. v. Genentech,
`
`Inc., Case No. 2:13-cv-05400 MRP (C.D. Cal. May 3, 2013), which is
`
`now closed;
`
` U.S. Patent No. 7,923,221, which claims the benefit of the priority
`
`date of U.S. Patent No. 6,331,415, was the patent-in-suit in Sanofi-
`
`Aventis U.S. LLC v. Genentech, Inc., Case No. 2:15-cv-05685 GW
`
`(C.D. Cal. July 27, 2015), which is now closed;
`
` U.S. Patent No. 7,923,221, which claims the benefit of the priority
`
`date of U.S. Patent No. 6,331,415, was the patent-in-suit in Genzyme
`
`Corporation v. Genentech, Inc. and City of Hope, Case No. 2:15-cv-
`
`09991 (C.D. Cal. December 30, 2015), which is now closed;
`
`- 5 -
`
`
`
` U.S. Patent No. 7,923,221, which claims the benefit of the priority
`
`IPR2017-00047
`Patent Owners’ Mandatory Notices
`
`
`date of U.S. Patent No. 6,331,415, is the patent-in-suit in Merck Sharp
`
`& Dohme Corp. v. Genentech, Inc. and City of Hope, Case No. 2:16-
`
`CV-4992 (C.D. Cal. July 7, 2016), which is pending;
`
` U.S. Patent No. 6,331,415 was the patent at issue in Sanofi-Aventis
`
`U.S. LLC, Regeneron Pharmaceuticals, Inc., and Genzyme
`
`Corporation v. Genentech, Inc. and City of Hope, IPR2015-01624, to
`
`which IPR2016-00460 was joined, and which is now terminated;
`
` U.S. Patent No. 6,331,415 was the patent at issue in Genzyme
`
`Corporation v. Genentech, Inc. and City of Hope, IPR2016-00383,
`
`which was not instituted;
`
` U.S. Patent No. 6,331,415 was the patent at issue in Genzyme
`
`Corporation v. Genentech, Inc. and City of Hope, IPR2016-00460,
`
`which was joined to IPR2015-01624, and which is now terminated;
`
` U.S. Patent No. 6,331,415 is the patent at issue in Mylan
`
`Pharmaceuticals Inc. v. Genentech, Inc. and City of Hope, IPR2016-
`
`00710, which has been instituted and is pending; and
`
`- 6 -
`
`
`
` U.S. Patent No. 6,331,415 is the patent at issue in Merck Sharp &
`
`IPR2017-00047
`Patent Owners’ Mandatory Notices
`
`
`Dohme Corp. v. Genentech, Inc. and City of Hope, IPR2016-01373,
`
`which is pending.
`
`Patent Owners do not concede that any of the above-identified applications
`
`or patents other than the ʼ415 patent, or proceedings involving patents other than
`
`the ʼ415 patent, would affect, or be affected by, a decision in the present IPR.
`
`III. COUNSEL
`Lead Counsel:
`
`David L. Cavanaugh, Reg. No. 36,476
`
`
`Back-up Counsel:
`
`
`Robert J. Gunther, Jr., Pro Hac Vice motion to be submitted
`
`Heather M. Petruzzi, Reg. No. 71,270
`
`Owen K. Allen, Reg. No. 71,118
`
`Adam R. Brausa, Reg. No. 60,287
`
`Daralyn J. Durie, Pro Hac Vice motion to be submitted
`
`Joseph M. Lipner, Pro Hac Vice motion to be submitted
`
`David I. Gindler, Pro Hac Vice motion to be submitted
`
`Michael R. Fleming, Reg. No. 67,933
`
`
`Powers of attorney are being filed concurrently with these Mandatory Notices.
`
`- 7 -
`
`
`
`IPR2017-00047
`Patent Owners’ Mandatory Notices
`
`
`IV. SERVICE INFORMATION
`Electronic mail addresses:
`
`David.Cavanaugh@wilmerhale.com
`
`Heather.Petruzzi@wilmerhale.com
`
`Owen.Allen@wilmerhale.com
`
`Robert.Gunther@wilmerhale.com
`
`abrausa@durietangri.com
`
`ddurie@durietangri.com
`
`jlipner@irell.com
`
`dgindler@irell.com
`
`mfleming@irell.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
`
`Date: November 1, 2016
`
`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
`
`- 8 -
`
`
`
`IPR2017-00047
`Patent Owners’ Mandatory Notices
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that, on November 1, 2016, I caused a true and correct copy
`of the following materials:
`
`
` Patent Owners’ Mandatory Notices Under 37 C.F.R. §42.8
` Genentech, Inc.’s Power of Attorney
` City of Hope’s Power of Attorney
`
`to be served via electronic mail on the following attorneys of record:
`
`Raymond N. Nimrod
`Matthew A. Traupman
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`51 Madison Ave., 22nd Floor
`New York, NY 10010
`raynimrod@quinnemanuel.com
`matthewtraupman@quinnemanuel.com
`
`Katherine A. Helm
`SIMPSON THACHER & BARTLETT LLP
`425 Lexington Avenue
`New York, NY 10017
`khelm@stblaw.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
`
`- 1 -
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