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`IPR2017-01055
`
`Patent Owner Mandatory Notices
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`FRESENIUS KABI USA, LLC
`Petitioner,
`
`
`v.
`
`HOSPIRA, INC.,
`Patent Owner
`
`
`
`Case IPR2017-01055
`Patent 8,338,470
`
`
`
`
`
`PATENT OWNER MANDATORY NOTICES
`
`1
`
`
`
`
`
`
`

`
`

`


`IPR2017-01055
`
`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 (the ‘470 patent) is involved in
`
`litigation in the District of Delaware, Civil Action No. 15-697-RGA and Civil
`
`Action No. 16-879-RGA, and in litigation in the Northern District of Illinois, Civil
`
`Action No. 1:16-cv-00651. The ‘470 patent is also the subject of IPR2016-01578.
`
`U.S. Patent No. 8,338,470 is a continuation of U.S. Serial No. 13/343,672
`
`filed January 4, 2012 (now U.S. Patent 8,242,158—the subject of IPR2016-01577
`
`and IPR2017-01054).
`
`Related U.S. patents and applications within the patent family include U.S.
`
`Serial No. 15/444,932, filed February 28, 2017; and U.S. Serial No. 15/058,602,
`
`filed March 2, 2016, which is a continuation of 14/177,008 filed February 10, 2004
`
`(now U.S. Patent No. 9,320,712), which is a continuation of U.S. Serial No.
`
`13/867,861, filed April 22, 2013 (now U.S. Patent No. 8,648,106—the subject of
`

`
`2
`
`

`


`IPR2017-01055
`
`Patent Owner Mandatory Notices
`
`IPR2016-01580, which was not instituted), which is a continuation of U.S. Serial
`
`No. 13/678,260 filed November 15, 2012 (now U.S. Patent No. 8,436,033), which
`
`is a continuation of U.S. Serial No. 13/541,524 filed July 3, 2012 (now U.S. Patent
`
`No. 8,338,470—the subject of IPR2016-01578 and IPR2017-01055), which is a
`
`continuation of U.S. Serial. No. 13/343,672 filed January 4, 2012 (now U.S. Patent
`
`8,242,158—the subject of IPR2016-01577 and IPR2017-01054); and U.S. Serial
`
`No. 13/678,148 filed November 15, 2012 (now U.S. Patent No. 8,455,527—the
`
`subject of IPR2016-01579 and IPR2017-01056).
`
`
`
`LEAD AND BACK-UP COUNSEL
`
`
`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
`
`
`
`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
`
`In accordance with 37 C.F.R. § 42.10, a power of attorney accompanies these
`
`
`
`3
`
`mandatory notices.
`

`
`

`


`IPR2017-01055
`
`Patent Owner Mandatory Notices
`
`SERVICE INFORMATION
`
`Please address all correspondence and service to lead and back-up counsel as
`
`listed above. Patent Owner consents to service by email at the above email
`
`
`
`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
`
`addresses.
`
`
`
`Date: March 23, 2017
`
`
`
`

`
`4
`
`

`


`IPR2017-01055
`
`Patent Owner Mandatory Notices
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the foregoing Patent Owner
`
`Mandatory Notices is being served on March 23, 2017, 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:
`
`Imron T. Aly
`ialy@schiffhardin.com
`Jason Harp
`jharp@schiffhardin.com
`Schiff Hardin LLP
`233 South Wacker Drive
`Suite 6600
`Chicago, IL 60606
`Phone: (312) 258-5500
`Fax: (312) 258-5600
`
`Respectfully submitted,
`
`/Sandra S. Lee/
`Sandra S. Lee
`Registration No. 51,932
`Counsel for Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`Date: March 23, 2017
`

`
`5
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`

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