`Docket No. 0107307.00148US1
`Filed on behalf of Patent Owner Genentech, Inc. by:
`
`David L. Cavanaugh (Reg. No. 36,476)
`Rebecca A. Whitfield (Reg. No. 73,756)
`Robert J. Gunther, Jr. (Pro Hac Vice to be filed)
`Lisa J. Pirozzolo (Pro Hac Vice to be filed)
`Kevin S. Prussia (Pro Hac Vice to be filed)
`Andrew J. Danford (Pro Hac Vice to be filed)
`WILMER CUTLER PICKERING
` HALE AND DORR LLP
`1875 Pennsylvania Ave., NW
`Washington, DC 20006
`
`Adam R. Brausa (Reg. No.
`60,287)
`Daralyn J. Durie (Pro Hac Vice to be
`filed)
`Durie Tangri LLP
`217 Leidesdorff Street
`San Francisco, CA 94111
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BOEHRINGER INGELHEIM PHARMACEUTICALS, INC.
`Petitioner,
`
`v.
`
`GENENTECH, INC.,
`Patent Owner.
`
`Case IPR2017-02031
`U.S. Patent 6,407,213
`
`PATENT OWNER’S UPDATED MANDATORY NOTICES UNDER
`37 C.F.R. §42.8
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-02031
`Patent Owner’s Updated Mandatory Notices
`
`PATENT OWNER’S UPDATED MANDATORY NOTICES
`
`Pursuant to 37 C.F.R. § 42.8, Patent Owner Genentech, Inc. respectfully
`
`submits the following Updated Mandatory Notices.
`
`I.
`
`REAL PARTY IN INTEREST
`
`No change.
`
`II. RELATED MATTERS
`Patent Owner identifies the following U.S. patent applications and issued
`
`
`
`
`
`
`
`
`
`
`
`
`
`patents that relate to U.S. Patent Application No. 08/146,206, which issued as U.S.
`
`Patent No. 6,407,213:
`
` Patent Cooperation Treaty Application No. PCT/US92/05126, which
`
`was filed on June 15, 1992, is the parent international application of
`
`U.S. Patent No. 6,407,213;
`
` U.S. Patent Application No. 07/715,272, which was filed on June 14,
`
`1991 and is now abandoned, is the parent application of international
`
`application PCT/US92/05126, which is the parent international
`
`application of U.S. Patent No. 6,407,213;
`
` U.S. Patent Application No. 08/439,004, which was filed on May 11,
`
`1995 and is now abandoned, claims the benefit of the priority date of
`
`
`
`- 2 -
`
`
`
`IPR2017-02031
`Patent Owner’s Updated Mandatory Notices
`
`U.S. Patent No. 6,407,213;
`
` U.S. Patent Application No. 09/115,800, which was filed on July 15,
`
`1998 and is now abandoned, claims the benefit of the priority date of
`
`U.S. Patent No. 6,407,213;
`
` U.S. Patent Application No. 09/705,392, which was filed on
`
`November 2, 2000 and issued as U.S. Patent No. 6,719,971, claims
`
`the benefit of the priority date of U.S. Patent No. 6,407,213;
`
` U.S. Patent Application No. 09/705,686, which was filed on
`
`November 2, 2000 and issued as U.S. Patent No. 6,639,055, claims
`
`the benefit of the priority date of U.S. Patent No. 6,407,213;
`
` U.S. Patent Application No. 09/705,398, which was filed on
`
`November 2, 2000 and issued as U.S. Patent No. 6,800,738, claims
`
`the benefit of the priority date of U.S. Patent No. 6,407,213;
`
` U.S. Patent Application No. 10/835,641, which was filed on April
`
`30, 2004 and is now abandoned, claims the benefit of the priority
`
`date of U.S. Patent No. 6,407,213;
`
` U.S. Patent Application No. 11/444,791, which was filed on June 1,
`
`2006 and is now abandoned, claims the benefit of the priority date of
`
`U.S. Patent No. 6,407,213;
`
` U.S. Patent Application No. 11/969,430, which was filed on January
`
`- 3 -
`
`
`
`
`
`
`
`IPR2017-02031
`Patent Owner’s Updated Mandatory Notices
`
`4, 2008 and issued as U.S. Patent No. 8,075,890, claims the benefit
`
`of the priority date of U.S. Patent No. 6,407,213.
`
`Additionally, Patent Owner identifies the following matters that relate or
`
`may relate to U.S. Patent Application No. 08/146,206, which issued as U.S. Patent
`
`No. 6,407,213:
`
` U.S. Patent No. 6,407,213 is the patent at issue in Celltrion, Inc. v.
`
`Genentech, Inc., IPR2017-01373, which is pending;
`
` U.S. Patent No. 6,407,213 is the patent at issue in Celltrion, Inc. v.
`
`Genentech, Inc., IPR2017-01374, which is pending;
`
` U.S. Patent No. 6,407,213 is the patent at issue in Pfizer, Inc. v.
`
`Genentech, Inc., IPR2017-01488, which is pending;
`
` U.S. Patent No. 6,407,213 is the patent at issue in Pfizer, Inc. v.
`
`Genentech, Inc., IPR2017-01489, which is pending;
`
` U.S. Patent No. 6,407,213 is the patent at issue in Boehringer
`
`Ingelheim Pharmaceuticals, Inc. v. Genentech Inc., IPR2017-02032
`
`which is pending;
`
` U.S. Patent No. 6,407,213 is the patent at issue in Samsung Bioepis
`
`Co., Ltd. v. Genentech, Inc., IPR2017-02139, which is pending,
`
`Petitioner has moved to join IPR2017-01488;
`
`- 4 -
`
`
`
`
`
`
`
`
`
`IPR2017-02031
`Patent Owner’s Updated Mandatory Notices
`
` U.S. Patent No. 6,407,213 is the patent at issue in Samsung Bioepis
`
`Co., Ltd. v. Genentech, Inc., IPR2017-02140, which is pending,
`
`Petitioner has moved to join IPR2017-01489;
`
` U.S. Patent No. 6,407,213 was the patent at issue in Mylan
`
`Pharmaceuticals Inc. v. Genentech, Inc., IPR2016-01693, which has
`
`been terminated;
`
` U.S. Patent No. 6,407,213 was the patent at issue in Mylan
`
`Pharmaceuticals Inc. v. Genentech, Inc., IPR2016-01694, which has
`
`been terminated;
`
` U.S. Patent No. 6,407,213 is a patent at issue in Genentech, Inc. et
`
`al. v. Amgen Inc. (D. Del.) 1:17-cv-01407-GMS, which is pending;
`
` U.S. Patent No. 6,407,213 is a patent at issue in Genentech, Inc. et
`
`al. v. Amgen Inc. (C.D. Cal.) 2:17-cv-07349-GW-AGR, which is
`
`pending; and
`
` U.S. Patent No. 6,407,213 is a patent at issue in Genentech, Inc. et
`
`al. v. Pfizer, Inc. (D. Del.) 1:17-cv-01672, which is pending.
`
`Patent Owner does not concede that any of the above-identified patents,
`
`applications, or proceedings, aside from U.S. Patent No. 6,407,213, would affect,
`
`or be affected by, a decision in the present IPR.
`
`
`
`- 5 -
`
`
`
`IPR2017-02031
`Patent Owner’s Updated Mandatory Notices
`
`III. COUNSEL
`Lead Counsel:
`
`David L. Cavanaugh, Reg. No. 36,476
`
`Back-up Counsel:
`
`Rebecca A. Whitfield, Reg. No. 73,756
`
`Robert J. Gunther, Jr., Pro Hac Vice motion to be submitted
`
`Adam R. Brausa, Reg. No. 60,287
`
`Daralyn J. Durie, Pro Hac Vice motion to be submitted
`
`Andrew J. Danford, Pro Hac Vice motion to be submitted
`
`Lisa J. Pirozzolo, Pro Hac Vice motion to be submitted
`
`Kevin S. Prussia, Pro Hac Vice motion to be submitted
`
`IV. SERVICE INFORMATION
`
`Electronic mail addresses:
`David.Cavanaugh@wilmerhale.com
`Rebecca.Whitfield@wilmerhale.com
`Robert.Gunther@wilmerhale.com
`abrausa@durietangri.com
`ddurie@durietangri.com
`Andrew.Danford@wilmerhale.com
`Lisa.Pirozzolo@wilmerhale.com
`
`- 6 -
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-02031
`Patent Owner’s Updated Mandatory Notices
`
`Kevin.Prussia@wilmerhale.com
`
`Electronic service on lead and back up counsel is approved and preferred.
`
`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
`
`
`Date: November 29, 2017
`
`
`
`Respectfully submitted,
`
`By: /David L. Cavanaugh/
`David L. Cavanaugh
`Reg. No. 36,476
`Wilmer Cutler Pickering Hale and Dorr
`LLP
`1875 Pennsylvania Avenue NW
`Washington, DC 20006
`
`
`
`- 7 -
`
`
`
`IPR2017-02031
`Patent Owner’s Updated Mandatory Notices
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that, on November 29, 2017, I caused a true and correct
`copy of the following materials:
`
` Patent Owner’s Updated Mandatory Notices Under 37 C.F.R. §42.8
`
`to be served via electronic mail on the following attorneys of record:
`
`Ira J. Levy
`GOODWIN PROCTER LLP
`620 Eighth Avenue, New York, NY 10018
`ILevy@goodwinlaw.com
`
`Brian A. Fairchild
`GOODWIN PROCTER LLP
`100 Northern Avenue Boston, MA 02210
`bfairchild@goodwinlaw.com
`
`DG-BI213@goodwinlaw.com
`
`
`/Rebecca Whitfield/
`Rebecca A. Whitfield
`Reg. No. 73,756
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, MA 02109
`(617) 526-5566
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`ActiveUS 165561795v.1
`
`- i -
`
`