`Date filed: July 24, 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, AND WEST-WARD
`PHARMACEUTICALS INTERNATIONAL LIMITED
`
`Petitioners,
`
`v.
`
`NOVARTIS PHARMACEUTICALS CORPORATION,
`
`Patent Owner.
`
`IPR2017-015921
`Patent No. 8,410,131
`
`PATENT OWNER’S SECOND UPDATED MANDATORY NOTICES
`UNDER 37 C.F.R. § 42.8(a)(3)
`
`1 IPR2018-00507 has been joined to this proceeding (Paper 29, Apr. 03, 2018)
`
`
`
`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 March 19, 2018 Mandatory Notices (Paper 27).
`
`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 Pharms. Corp. et al. v. West-Ward
`
`Pharms. Int’l Ltd., No. 15-474-RGA (D. Del.) (final judgment that claims 1-3 of
`
`the ’131 Patent were not proven invalid by reason of obviousness entered on
`
`December 21, 2017); (2) Novartis Pharms. Corp. et al. v. West-Ward Pharms. Int’l
`
`Ltd., No. 18-1434 (Fed. Cir.) (appeal from No. 15-474-RGA (D. Del.) by West-
`
`Ward Pharms. Int’l Ltd.); (3) Novartis Pharms. Corp. et al. v. Breckenridge
`
`Pharm., Inc., No. 16-431-RGA (D. Del.); (4) Novartis Pharms. Corp. et al. v.
`
`Breckenridge Pharm., Inc., No. 17-420-RGA (D. Del.); and (5) Novartis Pharms.
`
`Corp. et al. v. Teva Pharms. 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 Pharms. Int’l Ltd. v. Novartis Pharms. Corp., Inter Partes
`
`1
`
`
`
`Review No. 2018-00507 (P.T.A.B.) (motion for joinder to Inter Partes Review No.
`
`2017-01592 granted on April 3, 2018 (IPR2017-01592, Paper 29)).
`
`IDENTIFICATION OF LEAD AND BACK-UP COUNSEL
`PURSUANT TO 37 C.F.R. §§ 42.8(b)(3) and 42.10
`
`The lead counsel information has not changed.
`
`Patent Owner Novartis hereby notifies the Board that it is adding Christina
`
`Schwarz (admitted pro hac vice) and Jared Stringham (admitted pro hac vice) as
`
`back-up counsel. All other counsel information remains the same.
`
`Additional back-up counsel:
`
`Christina Schwarz
`FITZPATRICK, CELLA, HARPER & SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`Tel. 212-218-2100
`cschwarz@fchs.com
`
`Jared L. Stringham
`FITZPATRICK, CELLA, HARPER & SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`Tel. 212-218-2100
`jstringham@fchs.com
`
`2
`
`
`
`SERVICE INFORMATION PURSUANT TO 37 C.F.R. § 42.8(b)(4)
`
`The service information has not changed.
`
`Respectfully submitted,
`
`Dated: July 24, 2018
`
`/ 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
`
`3
`
`
`
`CERTIFICATE OF SERVICE
`
`I certify that a copy of PATENT OWNER’S SECOND UPDATED
`
`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(3) was served on July 24,
`
`2018 by causing it to be sent by email to counsel for Petitioners at the following
`
`email addresses:
`
`Daniel R. Evans (devans@merchantgould.com)
`
`Jeffrey D. Blake (jblake @merchantgould.com)
`
`Melissa M. Hayworth (mhayworth@merchantgould.com)
`
`Keith A. Zullow (kzullow@goodwinprocter.com)
`
`Marta E. Delsignore (mdelsignore@goodwinprocter.com)
`
`Dated: July 24, 2018
`
`/ 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
`
`4
`
`
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