`Date filed: March 19, 2018
`
`
`Filed On Behalf Of:
`
`Novartis Pharmaceuticals Corporation
`
`By:
`
`Nicholas N. Kallas
`NKallas@fchs.com
`ZortressAfinitorIPR@fchs.com
`(212) 218-2100
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`BRECKENRIDGE PHARMACEUTICAL, INC,
`Petitioner,
`
`v.
`
`NOVARTIS PHARMACEUTICALS CORPORATION,
`Patent Owner.
`
`
`
`Case IPR2017-01592
`Patent 8,410,131
`
`
`
`
`PATENT OWNER’S UPDATED MANDATORY NOTICES
`UNDER 37 C.F.R. § 42.8(a)(3)
`
`
`
`
`
`
`
`
`
`
`
`Pursuant to the requirements of 37 C.F.R. § 42.8(a)(3), Novartis
`
`Pharmaceuticals Corporation (“Novartis” or “Patent Owner”) submits the
`
`following update to its June 30, 2017 Mandatory Notices (Paper No. 3).
`
`
`
`REAL PARTY-IN-INTEREST PURSUANT TO 37 C.F.R. § 42.8(b)(1)
`
`The real party-in-interest information has not changed.
`
`RELATED MATTERS PURSUANT TO 37 C.F.R. § 42.8(b)(2)
`
`U.S. Patent No. 8,410,131 (“the ’131 Patent”) has been or is at issue in the
`
`following judicial proceedings: (1) Novartis Pharm. Corp. et al. v. West-Ward
`
`Pharm. Int’l Ltd., No. 15-474-RGA (D. Del.) (final judgement that claims 1-3 of
`
`the ’131 Patent were not proven invalid by reason of obviousness entered on
`
`December 21, 2017); (2) Novartis Pharm. Corp. et al. v. West-Ward Pharm. Int’l
`
`Ltd., No. 18-1434 (Fed. Cir.) (appeal from No. 15-474-RGA (D. Del.) by West-
`
`Ward Pharm. Int’l Ltd.); (3) Novartis Pharm. Corp. et al. v. Breckenridge Pharm.,
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`Inc., No. 16-431-RGA (D. Del.); (4) Novartis Pharm. Corp. et al. v. Breckenridge
`
`Pharm., Inc., No. 17-420-RGA (D. Del.); and (5) Novartis Pharm. Corp. et al. v.
`
`Teva Pharm. USA, Inc., No. 17-393-RGA (D. Del.) (stipulation of dismissal
`
`entered on February 26, 2018).
`
`The ’131 Patent is also the subject of the following Petition for Inter Partes
`
`Review: West-Ward Pharmaceuticals Int’l Ltd. v. Novartis Pharmaceuticals
`
`
`
`1
`
`
`
`
`
`Corporation, Inter Partes Review No. 2018-00507 (P.T.A.B.) (motion for joinder
`
`
`
`to Inter Partes Review No. 2017-01592 pending).
`
`IDENTIFICATION OF LEAD AND BACK-UP COUNSEL
`PURSUANT TO 37 C.F.R. §§ 42.8(b)(3) and 42.10
`
`The lead and back-up counsel information has not changed.
`
`SERVICE INFORMATION PURSUANT TO 37 C.F.R. § 42.8(b)(4)
`
`The service information has not changed.
`
`/ Nicholas N. Kallas /
`Nicholas N. Kallas
`Registration No. 31,530
`Lead Counsel for Patent Owner
`FITZPATRICK, CELLA, HARPER
`& SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`Tel. 212-218-2100
`
`
`
`Respectfully submitted,
`
`
`Dated: March 19, 2018
`
`
`
`
`
`2
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I certify that a copy of Patent Owner’s Updated Mandatory Notices Under
`
`37 C.F.R. § 42.8(a)(3) was served on March 19, 2018 by causing it to be sent by
`
`
`
`email to counsel for Petitioner at the following email addresses:
`
`Daniel R. Evans (devans@merchantgould.com)
`
`Jeffrey D. Blake (jblake @merchantgould.com)
`
`Melissa M. Hayworth (mhayworth@merchantgould.com)
`
`
`
`Dated: March 19, 2018
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/ Nicholas N. Kallas /
`Nicholas N. Kallas
`Registration No. 31,530
`FITZPATRICK, CELLA, HARPER
`& SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`Tel. 212-218-2100
`
`
`
`
`
`
`
`3
`
`
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