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