IPR2017-01648 & IPR2017-01673
`Patent Owner’s Mandatory Notices
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`Aurobindo Pharma USA Inc.
`Petitioners,
`v.
`Andrx Labs, LLC
`Patent Owner
`____________________________________________
`Case IPR2017-01648
`U.S. Patent No. 6,866,866
`&
`Case IPR2017-01673
`U.S. Patent No. 6,790,459
`____________________________________________
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`PATENT OWNER’S MANDATORY NOTICES
`UNDER 37 C.F.R. § 42.8
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`Patent Owner’s Mandatory Notices
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`Aurobindo Pharma USA Inc.
`Petitioners,
`v.
`Andrx Labs, LLC
`Patent Owner
`____________________________________________
`Case IPR2017-01648
`U.S. Patent No. 6,866,866
`&
`Case IPR2017-01673
`U.S. Patent No. 6,790,459
`____________________________________________
`
`
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`PATENT OWNER’S MANDATORY NOTICES
`UNDER 37 C.F.R. § 42.8
`
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`IPR2017-01648 & IPR2017-01673
`Patent Owner’s Mandatory Notices
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`PATENT OWNER MANDATORY NOTICES
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`Pursuant to 37 C.F.R. § 42.8, Patent Owner Andrx Labs, LLC, respectfully
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`submits the following Mandatory Notices.
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`I.
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`REAL PARTY IN INTEREST
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`Based on the Patent Owner's current understanding, the real parties-in-
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`interest (“RPI”) are Andrx Labs, LLC, Teva Pharmaceuticals USA Inc., and
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`Shionogi Inc. The Patent Owner continues its investigation regarding entities
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`which should be named as RPIs and will update these Mandatory Notices if and as
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`needed.
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`II. RELATED MATTERS
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`Patent Owner identifies the following U.S. patent applications and issued
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`patents that relate to U.S. Patent Application No. 09/705,630, which issued as
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`U.S. Patent No. 6,866,866:
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`• U.S. Patent Application No. 09/705,630, which was filed on
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`November 3, 2000, and issued as U.S. Patent No. 6,866,866;
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`• U.S. Patent Application No. 10/796,411, which was filed on March 9,
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`2004, and is now abandoned;
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`IPR2017-01648 & IPR2017-01673
`Patent Owner’s Mandatory Notices
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`• U.S. Patent Application No. 11/117,999, which was filed on April 29,
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`2005, and is now abandoned;
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`• U.S. Patent Application No. 11/225,741, which was filed on
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`September 13, 205, and is now abandoned;
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`• U.S. Patent Application No. 11/225,742, which was filed on
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`September 13, 205, and is now abandoned;
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`• U.S. Patent Application No. 11/225,784, which was filed on
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`September 13, 205, and is now abandoned; and
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`• U.S. Patent Application No. 11/225,785, which was filed on
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`September 13, 205, and is now abandoned.
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`Patent Owner is unaware of any U.S. patent applications and issued patents
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`that relate to U.S. Patent Application No. 09/705,625, which issued as U.S. Patent
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`No. 6,790,459.
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`Additionally, Patent Owner identifies the following matters that relate or
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`IPR2017-01648 & IPR2017-01673
`Patent Owner’s Mandatory Notices
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`may relate to U.S. Patent Application No. 09/705,630, which issued as U.S. Patent
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`No. 6,866,866 and U.S. Patent Application No. 09/705,625, which issued as U.S.
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`Patent No. 6,790,459:
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`• U.S. Patent No. 6,866,866 was a patent-in-suit in Sciele Pharma Inc.
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`et al. v. Lupin Ltd., et al., 1:09-cv-00037 (D. Del. Jan. 15, 2009),
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`which is now closed;
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`• U.S. Patent No. 6,866,866 and U.S. Patent No. 6,790,459 were
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`patents-in-suit in Sciele Pharma, Inc. et al v. Lupin Ltd. et al., No. 1-
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`09-cv-00105 (D. Md. Jan. 16, 2009), which is now closed;
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`• U.S. Patent No. 6,866,866 was a patent-in-suit in Shionogi Pharma
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`Inc. et al. v. Mylan Inc., et al., 1:10-cv-00135 (D. Del. Feb. 18, 2010),
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`which is now closed;
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`• U.S. Patent No. 6,866,866 and U.S. Patent No. 6,790,459 were
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`patents-in-suit in Takeda Pharmaceutical Company Limited et al v.
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`Mylan, Inc. et al., No. 1-12-cv-00024 (S.D. N.Y. Jan. 3, 2012), which
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`is now closed;
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`• U.S. Patent No. 6,866,866 and U.S. Patent No. 6,790,459 were
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`patents-in-suit in Takeda Pharmaceutical Co., Ltd., et. al. v. Mylan,
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`IPR2017-01648 & IPR2017-01673
`Patent Owner’s Mandatory Notices
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`Inc., et. al., No. 2-12-cv-00026 (W.D. Pa. Jan. 6, 2012), which is now
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`closed;
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`• U.S. Patent No. 6,866,866 and U.S. Patent No. 6,790,459 were
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`patents-in-suit in Takeda Pharmaceutical Company Limited et al v.
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`Mylan, Inc. et al., No. 1-12-cv-02038 (S.D. N.Y. Mar. 20, 2012),
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`which is now closed;
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`• U.S. Patent No. 6,866,866 was a patent-in-suit in Sciele Pharma Inc.
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`et al. v. Lupin Ltd., et al., No. 2012-1228 (Fed. Cir. July 2, 2012),
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`which is now closed;
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`• U.S. Patent No. 6,866,866 was a patent-in-suit in Shionogi Inc. et al.
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`v. Nostrum Laboratories, Inc., et al., 1:12-cv-04402 (D. N.J. July 13,
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`2012), which is now closed; and
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`• U.S. Patent No. 6,866,866 and U.S. Patent No. 6,790,459 were
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`patents-in-suit in Shionogi Inc. and Andrx Labs. L.L.C. v. Aurobindo
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`Pharma Ltd. et al., Civ. Act. No. 1:17-cv-00072-UNA (D. Del. Jan.
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`25, 2017), which remains pending.
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`III. COUNSEL
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`Lead Counsel:
`David L. Cavanaugh, Reg. No. 36,476
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`IPR2017-01648 & IPR2017-01673
`Patent Owner’s Mandatory Notices
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`Back-up Counsel:
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`Jonathan B. Roses, Reg. No. 61,115
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`David A. Chavous, Reg. No. 66,047
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`David A. Giordano, Reg. No. 64,480
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`IV. SERVICE INFORMATION
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`Electronic mail addresses:
`David.Cavanaugh@wilmerhale.com
`Jonathan.Roses@wilmerhale.com
`dchavous@chavousiplaw.com
`davidg@giordanolawllc.com
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`Electronic service on lead and back up counsel is approved and preferred.
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`Postal Mail, Courier or Hand Delivery:
`Wilmer Cutler Pickering Hale and Dorr LLP
`1875 Pennsylvania Avenue NW
`Washington, DC 20006
`David.Cavanaugh@wilmerhale.com
`Telephone: (202) 663-6025
`Facsimile: (202) 663-6363
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`Date: July 10, 2017
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`IPR2017-01648 & IPR2017-01673
`Patent Owner’s Mandatory Notices
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`Respectfully submitted,
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`By: /David L. Cavanaugh/
`David L. Cavanaugh
`Reg. No. 36,476
`1875 Pennsylvania Avenue NW
`Washington, DC 20006
`(202) 663-6025
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`IPR2017-01648 & IPR2017-01673
`Patent Owner’s Mandatory Notices
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`CERTIFICATE OF SERVICE
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`I hereby certify that, on July 10, 2017, I caused a true and correct copy of the
`following materials:
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`• Patent Owner’s Mandatory Notices Under 37 C.F.R. §42.8
`• Andrx Labs, LLC Power of Attorney
`• Teva Pharmaceuticals USA Inc. Power of Attorney
`• Shionogi Inc. Power of Attorney
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`to be served via electronic mail on the following attorneys of record:
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`Steven J. Moore, Esq.
`Withers Bergman LLP
`Suite 400
`1700 East Putnam Avenue
`Greenwich, CT 06870
`steven.moore@withersworldwide.com
`
`John Winterle
`Withers Bergman LLP
`Suite 400
`1700 East Putnam Avenue
`Old Greenwich, CT 06870
`john.winterle@withersworldwide.com
`
`
`Hans Peter Hoffmann
`Withers Bergman
`Suite 400
`1700 East Putnam Avenue
`Old Greenwich, CT 06870
`peter.hoffmann@withersworldwide.com
`
`Alan Gardner
`Withers Bergman
`Suite 400
`1700 East Putnam Avenue
`Old Greenwich, CT 06870
`alan.gardner@withersworldwide.com
`
`IPG-AUR@withersworldwide.com
`
`/Jonathan Ben-Ur Roses/
`Jonathan B. Roses
`Reg. No. 61,115
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, MA 02109
`(617) 526-6048
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