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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`__________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`__________
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`LUPIN LTD. AND LUPIN PHARMACEUTICALS INC.,
`Petitioner
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`v.
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`HORIZON THERAPEUTICS, LLC,
`Patent Owner
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`__________
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`
`
`Case IPR2017-01160
`Patent 9,326,966
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`__________
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`
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`PATENT OWNER’S INITIAL MANDATORY NOTICES
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`Pursuant to 37 C.F.R. § 42.8(a), the Patent Owner submits the following
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`initial mandatory notices.
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`1.
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`Real Parties-In-Interest (37 C.F.R. § 42.8(b)(1))
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`U.S. Patent No. 9,326,966 is owned by Horizon Therapeutics, LLC (f/k/a
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`Hyperion Therapeutics, Inc.), a company organized and existing under the laws of
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`the State of Delaware, having its principal place of business at 150 S. Saunders
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`Road, Lake Forest, IL 60045. Pursuant to the requirements of 37 C.F.R. §
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`42.8(b)(1), the undersigned state that the real parties-in-interest are Horizon
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`Therapeutics, LLC as well its corporate parents (collectively, Horizon):
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` Horizon Pharma, Inc., a corporation organized and existing under the
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`laws of the State of Delaware having its principal place of business at
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`150 S. Saunders Road, Lake Forest, IL 60045, which is wholly owned
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`by;
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` Horizon Pharma Finance S.á.r.l., an entity organized and existing under
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`the laws of Luxembourg, having its principal place of business at 19 Rue
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`de Bitbourg, Luxembourg, which is wholly owned by;
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` Horizon Pharma Capital Limited, a corporation organized and existing
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`under the laws of Ireland, having its principal place of business at
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`Connaught House, 1st Floor, 1 Burlington Road, Dublin 4, Ireland, which
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`is wholly owned by;
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`IPR2016-00829
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`PO Initial Mandatory Notices
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` Horizon Pharma Holdings Limited, a corporation organized and existing
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`under the laws of Ireland, having its principal place of business at
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`Connaught House, 1st Floor, 1 Burlington Road, Dublin 4, Ireland, which
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`is wholly owned by; and
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` Horizon Pharma plc, a corporation organized and existing under the laws
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`of Ireland, having its principal place of business at Connaught House, 1st
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`Floor, 1 Burlington Road, Dublin 4, Ireland.
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`
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`2.
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`Related Matters (37 C.F.R. § 42.8(b)(2))
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`The following judicial and administrative matters may affect or be affected
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`by a decision in this proceeding:
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`(a)
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`IPR2015-01117, petition filed April 29, 2015, by Par Pharmaceutical,
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`Inc., directed at U.S. Patent No. 8,642,012, which is also owned by
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`Horizon Therapeutics, LLC and has one common inventor with the
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`patent at issue in this case. The Board instituted trial in an institution
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`decision dated November 4, 2015 and issued a final written decision
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`on November 3, 2016.
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`(b)
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`IPR2015-01127, petition filed April 29, 2015, by Par Pharmaceutical,
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`Inc., directed at U.S. Patent 8,404,215, which is the great-grandparent
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`of the patent at issue in this case. The Board instituted trial in an
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`IPR2017-01160
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`PO Initial Mandatory Notices
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`institution decision dated November 4, 2015 and issued a final written
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`decision on September 29, 2016.
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`(c)
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`IPR2016-00283, directed at U.S. Patent No. 8,642,012. The petition
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`was filed December 4, 2015 by the present Petitioners and joined with
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`IPR2015-01117.
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`(d)
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`IPR2016-00284, directed at U.S. Patent 8,404,215. The petition was
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`filed December 4, 2015 by the present Petitioners and joined with
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`IPR2015-01127.
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`(e)
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`IPR2016-00829, petition filed April 1, 2016, by
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`the present
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`Petitioners, directed at U.S. Patent 9,095,559, which
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`is
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`the
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`grandparent of the patent at issue in this case. The Board instituted
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`trial in an institution decision dated September 30, 2016.
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`(f)
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`IPR2017-01159, petition filed on the same date as this petition, by the
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`present Petitioners, directed at U.S. Patent 9,254,278, which is the
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`parent of the patent at issue in this case.
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`(g) Par Pharmaceutical, Inc. v. Horizon Therapeutics, LLC, Appeal No.
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`2017-1451 to the Federal Circuit from the Board’s Final Written
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`Decision in IPR Nos. IPR2015-01117 and IPR2016-00283 concerning
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`U.S. Patent No. 8,642,012.
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`IPR2017-01160
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`(h) Hyperion Therapeutics Inc. v. Par Pharmaceutical, Inc., Civil Action
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`No. 2:14-cv-00384-JRG-RSP (E.D. Tex. filed April 23, 2014). The
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`Complaint asserts infringement of U.S. Patent Nos. 8,404,215 and
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`8,642,012. On December 14, 2015, the district court stayed that case
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`pending resolution of IPRs. On March 30, 2017, the district court
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`continued the stay pending the resolution of Par’s Appeal No. 2017-
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`1451.
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`(i) Horizon Therapeutics Inc. v. Par Pharmaceutical Inc., Civil Action
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`No. 1:16-cv-3910-RBK-JS (D.N.J. filed June. 30, 2016). The
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`Complaint asserts infringement of U.S. Patent Nos. 9,095,559,
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`9,254,278; and 9,326,966.
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`(j) Horizon Therapeutics Inc. v. Lupin Ltd. and Lupin Pharmaceuticals
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`Inc., Civil Action No. 1:15-cv-07624-RBK-JS (D.N.J. filed Oct. 19,
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`2015). The Complaint asserts infringement of U.S. Patent No.
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`9,095,559.
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`(k) Horizon Therapeutics Inc. v. Lupin Ltd. and Lupin Pharmaceuticals
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`Inc., Civil Action No. 1:16-cv-4438-RBK-JS (D.N.J. filed Jul. 21,
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`2016). The complaint asserts infringement of U.S. Patent Nos.
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`9,254,278 and 9,326,966.
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`IPR2017-01160
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`(l)
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`Pending U.S. Patent Appl. No. 15/074,625, filed March 18, 2016,
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`which claims benefit of the patent under review.
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`(m) Pending U.S. Patent Appl. No. 15/074,666, filed March 18, 2016,
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`which claims benefit of the patent under review.
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`(n)
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`Pending U.S. Patent Appl. No. 15/074,691, filed March 18, 2016,
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`which claims benefit of the patent under review.
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`(o)
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`Pending U.S. Patent Appl. No. 15/457,643, filed March 13, 2017,
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`which claims benefit of the patent under review.
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`3.
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`Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3))
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`Pursuant to 37 C.F.R. §§ 42.8(b)(3) and 42.10(a), the Patent Owner provides
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`the following designation of counsel:
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`LEAD COUNSEL
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`Robert Green (Reg. No. 27,555)
`Green, Griffith & Borg-Breen, LLP
`NBC Tower, Suite 3100
`455 North Cityfront Plaza
`Chicago, Illinois 60611
`Phone: (312) 883-8000
`Fax: (312) 883-8001
`rgreen@greengriffith.com
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`BACKUP COUNSEL
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`Matthew Phillips (Reg. No. 43,403)
`Laurence & Phillips IP Law LLP
`7327 SW Barnes Road #521
`Portland, Oregon 97225
`Phone: (503) 964-1129
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`IPR2017-01160
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`Fax: (703) 439-1624
`mphillips@lpiplaw.com
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`Emer Simic (Reg. No. 61,235)
`Green, Griffith & Borg-Breen, LLP
`NBC Tower, Suite 3100
`455 North Cityfront Plaza
`Chicago, Illinois 60611
`Phone: (312) 883-8000
`Fax: (312) 883-8001
`esimic@greengriffith.com
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`Dennis Bennett (Reg. No. 34,547)
`GLOBAL PATENT GROUP, LLC
`1005 N. Warson Road, Suite 404
`St. Louis, Missouri 63132
`Phone: (314) 812-8018
`Fax: (314) 685-2300
`dennisbennett@globalpatentgroup.com
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`
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`Pursuant to 37 C.F.R. § 42.10(b), a power of attorney for the above-listed
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`counsel is concurrently filed.
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`4.
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`Service Information (37 C.F.R. § 42.8(b)(4))
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`Service information for the Patent Owner’s counsel of record is provided
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`above, all of whom consent to service by e-mail. If service by means other than
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`email is made, the Patent Owner requests that the petitioner notify each counsel
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`above by email that service is being made by another means at the time of service.
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`IPR2017-01160
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`Date: 2017 Apr. 17
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`Respectfully submitted,
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`By: / M.C. Phillips /
`Matthew C. Phillips
`Registration No. 43,403
`Backup Counsel for Patent Owner
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`IPR2017-01160
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`CERTIFICATE OF SERVICE
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`
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`I hereby certify that on April 17, 2017, copies of the foregoing PATENT
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`OWNER’S INITIAL MANDATORY NOTICES and all documents filed with it
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`were served via electronic mail, as agreed to by counsel, upon the following
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`counsel for the Petitioner:
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`Elizabeth J. Holland: EHolland@goodwinlaw.com
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`Cynthia Lambert Hardman: CHardman@goodwinlawcom
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`
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`/ M.C. Phillips /
`Matthew C. Phillips
`Registration No. 43,403
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`IPR2017-01160
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`PO Initial Mandatory Notices COS
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