UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
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`ACTAVIS ELIZABETH LLC and TEVA PHARMACEUTICALS USA, INC.
`Petitioners,
`v.
`NOVARTIS A.G.,
`Patent Owner.
`_______________
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`Case No. IPR2017-01946
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`U.S. Patent No. 9,187,405
`_______________
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`PETITIONERS’ UPDATED MANDATORY NOTICES
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`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
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`ACTAVIS ELIZABETH LLC and TEVA PHARMACEUTICALS USA, INC.
`Petitioners,
`v.
`NOVARTIS A.G.,
`Patent Owner.
`_______________
`
`Case No. IPR2017-01946
`
`U.S. Patent No. 9,187,405
`_______________
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`PETITIONERS’ UPDATED MANDATORY NOTICES
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`Pursuant to 37 C.F.R. § 42.8(a)(3), Petitioners Actavis Elizabeth LLC and
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`Teva Pharmaceuticals USA, Inc. (collectively, “Petitioners”) hereby submit the
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`following Updated Mandatory Notices (“Notices”).
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`I.
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`REAL PARTIES-IN-INTEREST (37 C.F.R. § 42.8(B)(1)):
`Actavis Elizabeth LLC and Teva Pharmaceuticals USA, Inc. are real parties
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`in interest. Out of an abundance of caution, and for the purposes of this Petition
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`only, Teva additionally discloses Teva Pharmaceutical Industries Ltd., Teva
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`Pharmaceuticals Europe B.V., Orvet UK, Teva Pharmaceutical Holdings
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`Coöperatieve U.A., IVAX LLC, Actavis Holdco US, Inc., Actavis LLC, Watson
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`Laboratories, Inc., and Actavis US Holding LLC as real parties-in-interest.
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`II. RELATED MATTERS (37 C.F.R. § 42.8(B)(2)):
`In IPR2014-00784, all claims of U.S. Patent No. 8,324,283 (EX1037), were
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`found unpatentable as obvious on September 24, 2015. EX1032 (Final Written
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`Decision, Paper 112). Although not from the same patent family as the ’405 patent,
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`the ’283 patent included claims to pharmaceutical compositions of fingolimod, or a
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`pharmaceutically acceptable salt thereof, that is suitable for oral administration, as
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`well as claims directed to the treatment of multiple sclerosis using S1P receptor
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`agonists. The Federal Circuit affirmed the Final Written Decision in all respects in
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`a precedential decision on April 12, 2017. EX1041 (CAFC Opinion).1 IPR2017-
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`00854 (filed Feb. 3, 2017, and instituted July 18, 2017) is the inter partes review to
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`which this Petition seeks joinder. IPR2017-01550 (filed June 9, 2017 and instituted
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`August 9, 2017) is another inter partes review for which joinder with IPR2017-
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`00854 has been granted.
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`III. LEAD AND BACK-UP COUNSEL (37 C.F.R. § 42.8(B)(3))
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`Lead Counsel
`Amanda Hollis (Reg. No. 55,629)
`KIRKLAND & ELLIS LLP
`300 North LaSalle
`Chicago, IL 60654
`Telephone: (312) 862-2000
`Facsimile: (312) 862-2200
`amanda.hollis@kirkland.com
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`
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`Back-Up Counsel
`Eugene Goryunov (Reg. No. 61,579)
`KIRKLAND & ELLIS LLP
`300 North LaSalle Street
`Chicago, Illinois 60654
`Telephone: (312) 862-2000
`Facsimile: (312) 862-2200
`eugene.goryunov@kirkland.com
`Gregory Springsted
`(pro hac vice motion forthcoming)
`KIRKLAND & ELLIS LLP
`601 Lexington Avenue
`New York, NY 10022
`Telephone: (212) 446-4800
`Facsimile: (212) 446-4900
`greg.springsted@kirkland.com
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`1 Novartis, having been a party to that proceeding, is now precluded from
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`challenging the issues that were finally decided in that case. See B&B
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`Hardware, Inc. v. Hargis Industries, Inc., 135 S. Ct. 1293 (2015).
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`2
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`A Power of Attorney pursuant to 37 C.F.R. § 42.10(b) is filed herewith.
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`IV. SERVICE INFORMATION – 37 C.F.R. § 42.8(B)(4).
`Please direct all correspondence regarding this Petition to lead counsel at the
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`above address. Petitioners consent to service by email at:
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`amanda.hollis@kirkland.com, eugene.goryunov@kirkland.com, and
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`greg.springsted@kirkland.com.
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`Date: August 16, 2017
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`Respectfully submitted,
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`/s/ Amanda Hollis
`Amanda Hollis (Reg. No. 55,629)
`KIRKLAND & ELLIS LLP
`300 North LaSalle Street
`Chicago, IL 60654
`P: (312) 862-2000
`F: (312) 862-2200
`amanda.hollis@kirkland.com
`eugene.goryunov@kirkland.com
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`Attorneys For Petitioners
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`3
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), this is to certify that I
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`caused to be served a true and correct copy of the foregoing Petitioners’ Updated
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`Mandatory Notices by overnight courier (Federal Express), on this 16th day of
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`August, 2017, on the Patent Owner at the correspondence address of the Patent
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`Owner as follows:
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`Novartis Pharmaceutical Corporation
`Intellectual Property Department
`One Health Plaza 433/2
`East Hanover, NJ 07936-1080
`A courtesy copy of the foregoing was also served via email on the counsel of
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`record for the Petitioner and Patent Owner in the Apotex IPR, IPR2017-00854, and
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`the Argentum IPR, IPR2017-01550 as follows:
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`IPR2017-00854 Petitioner
`Steve Parmelee
`Michael Rosato
`Jad A. Mills
`Wilson Sonsini Goodrich & Rosati
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104
`sparmelee@wsgr.com
`mrosato@wsgr.com
`jmills@wsgr.com
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`IPR2017-01550 Petitioner
`Terry Rea
`Deborah H. Yellin
`Shannon Lentz
`1001 Pennsylvania Avenue, NW
`Washington, DC 20004-2595
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`Patent Owner
`Jane M. Love
`Robert W. Trenchard
`Gibson, Dunn & Crutcher LLP
`200 Park Avenue
`New York, NY 10166-0193
`jlove@gibsondunn.com
`rtrenchard@gibsondunn.com
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`trea@crowell.com
`dyellin@crowell.com
`slentz@crowell.com
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`Tyler C. Liu
`Argentum Pharmaceuticals, LLC
`tliu@agpharm.com
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`Dated: August 16, 2017
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`Respectfully submitted,
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`/s/ Amanda Hollis
`Amanda Hollis (Reg. No. 55,629)
`KIRKLAND & ELLIS LLP
`300 North LaSalle
`Chicago, IL 60654
`Telephone: (312) 862-2000
`Facsimile: (312) 862-2200
`amanda.hollis@kirkland.com
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`Attorney for Petitioners
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`5
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