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UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`TARO PHARMACEUTICALS U.S.A., INC.,
`Petitioners,
`
`v.
`
`APOTEX TECHNOLOGIES INC.,
`Patent Owner.
`________________
`
`Case IPR2017-01446
`U.S. Patent No. 7,049,328
`
`Title: USE OF DEFERIPRONE
`________________
`
`
`
`PATENT OWNER MANDATORY NOTICES
`UNDER 37 C.F.R. § 42.8
`
`
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`

`

`IPR2017-01446
`U.S. Patent No. 7,049,328
`PATENT OWNER MANDATORY NOTICES
`Pursuant to 37 CFR 42.8, Patent Owner Apotex Technologies Inc.
`
`
`
`respectfully submits the following Mandatory Notices.
`
`I.
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`
`
`REAL PARTY IN INTEREST
`
`The real parties-in-interest are ApoPharma Inc., ApoPharma USA, Inc., and
`
`Apotex Technologies Inc., which are wholly-owned subsidiaries of Apotex
`
`Pharmaceuticals Holdings Inc. or Apotex Holdings Inc.
`
`II. RELATED MATTERS
`
`
`
`Patent Owner identifies the following U.S. patent applications and issued
`
`patents that relate to U.S. Patent Application No. 10/311,814, which issued as U.S.
`
`Patent No. 7,049,328:
`
`
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`U.S. Patent Application No. 10/311,814 is a National Stage
`
`Entry of PCT Appl. No. PCT/CA01/00956, which has a
`
`§ 371(c)(1), (2), (4) date of April 4, 2003, was filed on June 28,
`
`2001, and issued into U.S. Patent No. 7,049,328;
`
`
`
`U.S. Patent Application No. 10/311,814 (and PCT Appl. No.
`
`PCT/CA01/00956) claim the benefit of the filing date of
`
`Canadian Appl. No. 2313270, which was filed on June 30,
`
`2000;
`
`
`
`
`2
`
`

`

`
`
`
`
`IPR2017-01446
`U.S. Patent No. 7,049,328
`U.S. Patent No. 7,049,328, which issued May 23, 2006, remains
`
`active; and
`
`U.S. Application No. 11/331,101, which was filed on June 28,
`
`2001, and is now abandoned, was a Divisional of U.S.
`
`Application No. 10/311,814.
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`
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`Additionally, Patent Owner identifies the following matters that relate or
`
`may relate to U.S. Application No. 10/311,814, which issued as U.S. Patent No.
`
`7,049,328:
`
`
`
`U.S. Patent No. 7,049,328 is a patent-in-suit in ApoPharma Inc.
`
`v. Taro Pharmaceutical Industries, Ltd., Case No. 2:16-cv-
`
`00528 (E.D. Tex.), which complaint was filed on May 18,
`
`2016, and served pursuant to F.R.C.P. Rule 4(d) on June 2,
`
`2016.
`
`III. COUNSEL
`
`Lead Counsel:
`
`
`
`W. Blake Coblentz, Reg. No. 57,104
`
`Back-up Counsel:
`
`
`
`Aaron S. Lukas, Reg. No. 59,443
`
`Powers of Attorney are being filed concurrently with the Mandatory Notices.
`
`
`
`
`3
`
`

`

`IPR2017-01446
`U.S. Patent No. 7,049,328
`
`IV. SERVICE INFORMATION
`
`Electronic mail address:
`
`
`
`
`
`WCoblentz@cozen.com
`
`ALukas@cozen.com
`
`Electronic service on lead and back up counsel is approved and preferred.
`
`Postal Mail, Courier or Hand Delivery:
`
`Cozen O’Connor
`1200 19th Street, N.W.
`Washington, DC 20036
`WCoblentz@cozen.com
`Telephone: (202) 912-4800
`Facsimile: (202) 861-1905
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`Respectfully submitted,
`
`By: /s/ W. Blake Coblentz
`W. Blake Coblentz
`Reg. No. 57,104
`Cozen O’Connor
`1200 19th Street, N.W.
`Washington, DC 20036
`Tel: (202) 912-4800
`
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`Dated: June 7, 2017
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`4
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`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on June 7, 2017, I served a copy of this PATENT
`
`OWNER MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 via electronic mail
`
`on the following counsel of record:
`
`Huiya Wu
`Sarah Fink
`GOODWIN PROCTER LLP
`The New York Times Building
`620 Eighth Avenue
`New York, NY 10018-1405
`HWu@goodwin.law.com
`SFink@goodwinlaw.com
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`/s/ W. Blake Coblentz
`W. Blake Coblentz
`Reg. No. 57,104
`COZEN O’CONNOR
`1200 19th Street, N.W.
`Washington, DC 20036
`
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`

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