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UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`
`MICRO LABS LIMITED AND MICRO LABS USA INC.
`Petitioners,
`
`v.
`
`SANTEN PHARMACEUTICAL CO., LTD. AND ASAHI GLASS CO., LTD.
`Patent Owners.
`
`____________
`
`
`
`Case IPR2017-01434
`U.S. Patent No. 5,886,035
`
`____________
`
`
`
`PATENT OWNERS’ MANDATORY NOTICES
`
`
`
`
`
`
`
`
`

`

`
`
`
`
`Pursuant to 37 C.F.R. § 42.8, Patent Owners Santen Pharmaceutical Co.,
`
`Ltd. (“Santen”) and Asahi Glass Co., Ltd. (“AGC”) (together “Patent Owners”)
`
`herby submit the following Mandatory Notices.
`
`1.
`
`Real Party-in-Interest (37 C.F.R. § 42.8(b)(1))
`
`Patent Owners Santen and AGC, the assignees of record for U.S. Patent No.
`
`5,886,035 (“the ’035 Patent”), are the real parties-in-interest.
`
`2.
`
`Related Matters (37 C.F.R. § 42.8 (b)(2))
`
`The following judicial and/or administrative matters could affect, or be
`
`affected by, a decision in this proceeding:
`
` Santen Pharmaceutical Co., Ltd., Asahi Glass Co., Ltd. and Oak
`
`Pharmaceuticals, Inc. v. Micro Labs Limited and Micro Labs USA
`
`Inc., Case No. 16-cv-00353 (D. Del. 2016); and
`
` Santen Pharmaceutical Co., Ltd., Asahi Glass Co., Ltd. and Oak
`
`Pharmaceuticals, Inc. v. Sandoz Inc., Case No. 16-cv-00354 (D. Del.
`
`2016).
`
`U.S. Patent No. 5,985,920 claims priority to the ’035 Patent. Patent Owners
`
`are unaware of any other judicial or administrative matter that would affect, or be
`
`affected by, a decision in this proceeding.
`
`1
`
`

`

`
`
`3.
`
`Lead and Back-Up Counsel and
`Service Information (37 C.F.R. § 42.8(b)(3)-(4))
`
`Lead counsel is Arlene L. Chow (Reg. No. 47,489), Hogan Lovells US LLP,
`
`875 Third Avenue, New York, NY 10022, Phone: 212-918-3000, Fax: 212-918-
`
`3100, and Email: arlene.chow@hoganlovells.com. Back-up counsel is: Ernest
`
`Yakob, Ph.D. (Reg. No. 45,893), Hogan Lovells US LLP, 875 Third Avenue, New
`
`York, NY 10022, Phone: 212-918-3000, Fax: 212-918-3100, and Email:
`
`ernest.yakob@hoganlovells.com.
`
`Patent Owners consent to electronic service.
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`/ Arlene L. Chow /
`Arlene L. Chow
`Registration No. 47,489
`Ernest Yakob
`Registration No. 45,893
`Hogan Lovells US LLP
`875 Third Avenue
`New York, New York 10022
`Telephone: (212) 918-3000
`Fax: (212) 918-3100
`
`Counsel for Patent Owners
`Santen Pharmaceutical Co., Ltd.
`and Asahi Glass Co., Ltd.
`
`Dated: June 1, 2017
`
`
`
`
`
`
`
`2
`
`

`

`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Patent
`
`Owners’ Mandatory Notices was served on June 1, 2017, by filing this document
`
`through the Patent Trial and Appeal Board End to End System as well as
`
`delivering a copy via electronic mail upon the following attorneys of record for the
`
`Petitioner:
`
`
`
`Cedric C.Y. Tan, Reg. No. 56,082
`PILLSBURY WINTHROP
`SHAW PITTMAN LLP
`1200 Seventeenth Street, NW
`Washington, DC 20036
`Tel.: (202) 663-8000
`Fax.: (202) 663-8007
`Email: cedric.tan@pillsburylaw.com
`
`Sean M. Weinman, Reg. No. 69,515
`PILLSBURY WINTHROP
`SHAW PITTMAN LLP
`1650 Tysons Boulevard, 14th Floor
`McLean, VA 22102
`Tel.: (703) 770-7511
`Fax.: (703) 770-4856
`Email: sean.weinman@pillsburylaw.com
`
`MicroLabsIPR@pillsburylaw.com
`
`
`
`
`
`
`
`
`
`
`
`
`3
`
`

`

`
`
`
`
`/ Arlene L. Chow /
`Arlene L. Chow
`Registration No. 47,489
`Hogan Lovells US LLP
`875 Third Avenue
`New York, New York 10022
`Telephone: (212) 918-3000
`Fax: (212) 918-3100
`
`Counsel for Patent Owners
`Santen Pharmaceutical Co., Ltd.
`and Asahi Glass Co., Ltd.
`
`
`4
`
`
`
`Dated: June 1, 2017
`
`
`
`
`
`

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