`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________
`
`
`PAR PHARMACEUTICAL, INC.,
`Petitioner
`
`v.
`
`HORIZON THERAPEUTICS, LLC,
`Patent Owner
`
`__________
`
`
`Case IPR2017-01767
`Patent 9,254,278
`
`__________
`
`
`PATENT OWNER’S UPDATED MANDATORY NOTICES
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.8(a), the Patent Owner submits the following
`
`updated mandatory notices. Specifically, related matters are updated as follows:
`
`
`
`1.
`
`Related Matters (37 C.F.R. § 42.8(b)(2))
`
`The following judicial and administrative matters may affect or be affected
`
`by a decision in this proceeding:
`
`(a)
`
`IPR2015-01127, petition filed April 29, 2015, by the present
`
`Petitioner, directed at U.S. Patent 8,404,215, which is the grandparent
`
`of the patent at issue in this case. The Board instituted trial in an
`
`institution decision dated November 4, 2015, and issued a final
`
`written decision on September 29, 2016.
`
`(b)
`
`IPR2016-00284, directed at U.S. Patent 8,404,215. The petition was
`
`filed December 4, 2015, by Lupin Ltd. and Lupin Pharmaceuticals,
`
`Inc. and joined with IPR2015-01127.
`
`(c)
`
`IPR2016-00829, directed at U.S. Patent 9,095,559, which is the parent
`
`of the patent at issue in this case. The petition was filed April 1, 2016,
`
`by Lupin Ltd. and Lupin Pharmaceuticals, Inc. The Board instituted
`
`trial in an institution decision dated September 30, 2016, and issued a
`
`final written decision on September 26, 2017.
`
`(d)
`
`IPR2017-01159, directed at U.S. Patent 9,254,278, which is the patent
`
`at issue in this case. The petition was filed March 27, 2017, by Lupin
`
`IPR2017-01767
`
`PO Initial Mandatory Notices
`
`Page 1 of 5
`
`
`
`Ltd. and Lupin Pharmaceuticals, Inc. The Board instituted trial in an
`
`institution decision dated September 28, 2017, and granted the parties’
`
`Joint Motion to Terminate on July 26, 2018.
`
`(e)
`
`IPR2017-01160, directed at U.S. Patent 9,326,966, which is a child of
`
`the patent at issue in this case. The petition was filed March 27, 2017,
`
`by Lupin Ltd. and Lupin Pharmaceuticals, Inc. The Board instituted
`
`trial in an institution decision dated September 28, 2017, and granted
`
`the parties’ Joint Motion to Terminate on July 26, 2018.
`
`(f)
`
`IPR2017-01768, petition filed the same date as this petition, by the
`
`present Petitioner, directed at U.S. Patent 9,095,559, which is the
`
`parent of the patent at issue in this case. The Board instituted trial in
`
`an institution decision dated January 30, 2018.
`
`(g)
`
`IPR2017-01769, petition filed the same date as this petition, by the
`
`present Petitioner, directed at U.S. Patent 9,326,966, which is a child
`
`of the patent at issue in this case. The Board instituted trial in an
`
`institution decision dated January 30, 2018.
`
`(h) Horizon Therapeutics, LLC v. Iancu, Appeal No. 2018-1225 to the
`
`Federal Circuit from the Board’s Final Written Decision in IPR No.
`
`IPR2016-00829 concerning U.S. Patent 9,095,559, which is the parent
`
`of the patent at issue in this case.
`
`IPR2017-01767
`
`PO Updated Mandatory Notices
`
`Page 2 of 5
`
`
`
`(i) Hyperion Therapeutics Inc. v. Par Pharmaceutical, Inc., Civil Action
`
`No. 2:14-cv-00384-JRG-RSP (E.D. Tex. filed April 23, 2014). The
`
`Complaint asserts infringement of U.S. Patent No. 8,404,215, which is
`
`the grandparent of the patent at issue in this case, and unrelated U.S.
`
`Patent No. 8,642,012. On December 14, 2015, the district court
`
`stayed that case pending resolution of IPRs. On March 30, 2017, the
`
`district court continued the stay pending the resolution of Par’s
`
`Appeal No. 2017-1451. On August 9, 2018, Horizon filed a voluntary
`
`dismissal without prejudice.
`
`(j) Horizon Therapeutics Inc. v. Par Pharmaceutical Inc., Civil Action
`
`No. 1:16-cv-03910-RBK-JS (D.N.J. filed June 30, 2016). The
`
`Complaint asserts infringement of U.S. Patent Nos. 9,095,559,
`
`9,254,278, and 9,326,966. On November 15, 2016, the district court
`
`stayed that case pending resolution of IPR2016-00829. On October 5,
`
`2017, the district court continued the stay pending resolution of
`
`Horizon’s Appeal No. 2018-1225.
`
`(k) Horizon Therapeutics Inc. v. Lupin Ltd. and Lupin Pharmaceuticals,
`
`Inc., Civil Action No. 1:15-cv-07624-RBK-JS (D.N.J. filed Oct. 19,
`
`2015). The Complaint asserts infringement of U.S. Patent No.
`
`IPR2017-01767
`
`PO Updated Mandatory Notices
`
`Page 3 of 5
`
`
`
`9,095,559, which is the parent of the patent at issue in this case. On
`
`July 10, 2018, the case was dismissed pursuant to a joint stipulation.
`
`(l) Horizon Therapeutics Inc. v. Lupin Ltd. and Lupin Pharmaceuticals,
`
`Inc., Civil Action No. 1:16-cv-04438-RBK-JS (D.N.J. filed Jul. 21,
`
`2016). The Complaint asserts infringement of U.S. Patent Nos.
`
`9,254,278 and 9,326,966. On July 10, 2018, the case was dismissed
`
`pursuant to a joint stipulation.
`
`(m) U.S. Patent No. 9,999,608, issued June 19, 2018, which claims benefit
`
`of the patent under review.
`
`(n) U.S. Patent No. 9,962,358, issued May 8, 2018, which claims benefit
`
`of the patent under review.
`
`(o) U.S. Patent No. 9,962,359, issued May 8, 2018, which claims benefit
`
`of the patent under review.
`
`(p) U.S. Patent No, 10,045,958, issued on August 14, 2018, which claims
`
`benefit of the patent under review.
`
`(q) U.S. Patent No. 10,045,959, issued on August 14, 2018, which claims
`
`benefit of the patent under review.
`
`(r)
`
`Pending U.S. Patent Appl. No. 15/699,209, filed September 8, 2017,
`
`which claims benefit of the patent under review.
`
`IPR2017-01767
`
`PO Updated Mandatory Notices
`
`Page 4 of 5
`
`
`
`(s)
`
`Pending U.S. Patent Appl. No. 15/944,411, filed April 3, 2018, which
`
`claims benefit of the patent under review.
`
`(t)
`
`Pending U.S. Patent Appl. No. 15/944,422, filed April 3, 2018, which
`
`claims benefit of the patent under review.
`
`(u)
`
`Pending U.S. Patent Appl. No. 15/944,428, filed April 3, 2018, which
`
`claims benefit of the patent under review.
`
`(v)
`
`Pending U.S. Patent Appl. No. 15/944,432, filed April 3, 2018, which
`
`claims benefit of the patent under review.
`
`(w) Pending U.S. Patent Appl. No. 15/980,376, filed May 15, 2018, which
`
`claims benefit of the patent under review.
`
`Date: 2018 August 21
`
`Respectfully submitted,
`
`By: / M.C. Phillips /
`Matthew C. Phillips
`Registration No. 43,403
`Backup Counsel for Patent Owner
`
`
`
`
`
`IPR2017-01767
`
`PO Updated Mandatory Notices
`
`Page 5 of 5
`
`
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`CERTIFICATE OF SERVICE
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`
`
`I hereby certify that on August 21, 2018, copies of the foregoing PATENT
`
`OWNER’S UPDATED MANDATORY NOTICES and all documents filed with it
`
`were served via electronic mail, as agreed to by counsel, upon the following
`
`counsel for the Petitioner:
`
`David H. Silverstein: dsilverstein@axinn.com
`
`Aziz Burgy:
`
`Dan Feng Mei:
`
`
`
`
`
`
`
`
`
`
`aburgy@axinn.com
`
`dmei@axinn.com
`Ravicti@axinn.com
`
`/ M.C. Phillips /
`Matthew C. Phillips
`Registration No. 43,403
`
`
`IPR2017-01767
`
`PO Updated Mandatory Notices
`
`
`
`
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