`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`BOEHRINGER INGELHEIM PHARMACEUTICALS, INC.
`Petitioner,
`v.
`
`GENENTECH, INC.
`Patent Owner.
`
`U.S. Patent No. 6,407,213
`
`
`
`Inter Partes Review No. IPR2017-02031
`
`
`
`
`PETITIONER’S UPDATED MANDATORY NOTICES
`
`
`
`.
`
`
`
`
`
`
`
`Petitioner hereby updates its Mandatory Notices pursuant to 37 C.F.R. §
`
`42.8(a)(3) to add related matters.
`
`(a) Real Parties-In-Interest (37 C.F.R. § 42.8(b)(1)) ) (No Change)
`
`The real parties-in-interest for Petitioner are: Boehringer Ingelheim GmbH,
`
`Boehringer Ingelheim Corporate Center GmbH; Boehringer Ingelheim Pharma
`
`GmbH & Co. KG; Boehringer Ingelheim International GmbH; Boehringer
`
`Ingelheim USA Corporation; and Boehringer Ingelheim Pharmaceuticals, Inc.
`
`(b) Related Matters (37 C.F.R. § 42.8(b)(2)) (Updated)
`
`Petitioner concurrently files two IPR petitions for claims of the ’213 patent.
`
`Petitioner is aware of two earlier IPR proceedings for the ’213 patent, both filed by
`
`third-party Mylan Pharmaceuticals Inc.: IPR2016–01693 and IPR2016–01694.
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`These proceedings were terminated by the Board on March 10, 2017 after the
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`parties filed a Joint Motion to Terminate. Paper No. 24, IPR2016–01693; Paper
`
`No. 23, IPR2016–01694 (March 10, 2017). Petitioner is also aware of two current
`
`IPR proceedings for the ’213 patent, both filed by third-party Celltrion, Inc.:
`
`IPR2017-01373 and IPR2017-01374. Petitioner is also aware of two current IPR
`
`proceedings for the ’213 patent, both filed by third-party Pfizer, Inc.: IPR2017-
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`01488 and IPR2017-01489. Petitioner is also aware of two current IPR
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`proceedings for the ’213 patent, both filed by third-party Samsung Bioepis Co.,
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`Ltd., IPR2017-02139 and IPR2017-02140, and has moved to join these
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`
`
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`2
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`
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`proceedings with IPR2017-01488 and IPR2017-01489, respectively. The present
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`IPR petitions offer different arguments from the previously-filed IPR petitions.
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`The ’213 patent is also at issue in the following district court litigations:
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`• Genentech, Inc. et al. v. Amgen Inc. (D. Del.) 1:17-cv-01407-GMS,
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`which is pending;
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`• Amgen, Inc. v. Genentech, Inc. et al. (C.D. Cal.) 2:17-cv-07349-GW-
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`AGR, which is pending;
`
`• Genentech, Inc. et al. v. Amgen Inc. (D. Del.) 1:17-cv-01471-GMS,
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`which is pending; and
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`• Genentech, Inc. et al. v. Pfizer, Inc. (D. Del.) 1:17-cv-01672, which is
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`pending.
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`Petitioner is not aware of any other judicial or administrative matters that
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`would affect, or be affected by, a decision in this proceeding.
`
`(c)
`
`Identification of Counsel (37 C.F.R. § 42.8(b)(3)) and Service
`Information (37 C.F.R. § 42.8(b)(4)) (No Change)
`
`Lead Counsel
`
`Ira J. Levy
`(Reg. No. 35,587)
`Goodwin Procter LLP
`620 Eighth Avenue
`New York, NY 10018
`T: (212) 813-8800
`Fax: (212) 355-3333
`ILevy@goodwinlaw.com
`
`
`
`
`
`
`Back Up Counsel
`Brian A. Fairchild
`(Reg. No. 48,645)
`Goodwin Procter LLP
`100 Northern Avenue
`Boston, MA 02210
`T: (617) 570-1000
`Fax: (617) 523-1231
`bfairchild@goodwinlaw.com
`
`3
`
`
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`Please direct all correspondence to lead counsel and back-up counsel at the
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`information above. Petitioner consents to electronic mail service: DG-
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`BI213@goodwinlaw.com.
`
`
`
`Dated: December 4, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`/Ira J. Levy/
`Ira J. Levy
`Reg. No. 35,587
`Goodwin Procter LLP
`620 Eighth Avenue
`New York, NY 10018
`T: (212) 813-8800
`Fax: (212) 355-3333
`ILevy@goodwinlaw.com
`
`Brian A. Fairchild
`(Reg. No. 48,645)
`Goodwin Procter LLP
`100 Northern Avenue
`Boston, MA 02210
`T: (617) 570-1000
`Fax: (617) 523-1231
`bfairchild@goodwinlaw.com
`
`Counsel for Petitioner
`
`
`
`4
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`
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`
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies that on this
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`4th day of December, 2017, a copy of this PETITIONER’S UPDATED
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`MANDATORY NOTICES was served by email on the lead and back up counsel
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`for Patent Owners at:
`
`David Cavanaugh (David.Cavanaugh@wilmerhale.com)
`
`Rebecca Whitfield (Rebecca.Whitfield@wilmerhale.com)
`
`Robert Gunther (Robert.Gunther@wilmerhale.com)
`
`Adam Brausa (abrausa@durietangri.com)
`
`Daralyn Durie (ddurie@durietangri.com)
`
`Andrew Danford (Andrew.Danford@wilmerhale.com)
`
`Lisa Pirozzolo (Lisa.Pirozzolo@wilmerhale.com)
`
`Kevin Prussia (Kevin.Prussia@wilmerhale.com)
`
`
`Dated: December 4, 2017
`
`/Ira J. Levy
`Ira J. Levy
`Reg. No. 35,587
`Goodwin Procter LLP
`620 Eighth Avenue
`New York, NY 10018
`T: (212) 813-8800
`Fax: (212) 355-3333
`
`Counsel for Petitioner
`
`5
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