`Docket No. 0107307-00148US4
`Filed on behalf of Patent Owner Genentech, Inc. by:
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`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
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`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
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG BIOEPIS CO., LTD.,
`Petitioner,
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`v.
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`GENENTECH, INC.,
`Patent Owner.
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`Case IPR2017-02140
`U.S. Patent 6,407,213
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`PATENT OWNER’S UPDATED MANDATORY NOTICES UNDER
`37 C.F.R. §42.8
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`IPR2017-02140
`Patent Owner’s Updated Mandatory Notices
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`PATENT OWNER’S UPDATED MANDATORY NOTICES
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`Pursuant to 37 C.F.R. § 42.8, Patent Owner Genentech, Inc. respectfully
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`submits the following Updated Mandatory Notices.
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`I.
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`REAL PARTY IN INTEREST
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`No change.
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`II. RELATED MATTERS
`Patent Owner identifies the following U.S. patent applications and issued
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`patents that relate to U.S. Patent Application No. 08/146,206, which issued as U.S.
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`Patent No. 6,407,213:
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` Patent Cooperation Treaty Application No. PCT/US92/05126, which
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`was filed on June 15, 1992, is the parent international application of
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`U.S. Patent No. 6,407,213;
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` U.S. Patent Application No. 07/715,272, which was filed on June 14,
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`1991 and is now abandoned, is the parent application of international
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`application PCT/US92/05126, which is the parent international
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`application of U.S. Patent No. 6,407,213;
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` U.S. Patent Application No. 08/439,004, which was filed on May 11,
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`1995 and is now abandoned, claims the benefit of the priority date of
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`U.S. Patent No. 6,407,213;
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`IPR2017-02140
`Patent Owner’s Updated Mandatory Notices
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` U.S. Patent Application No. 09/115,800, which was filed on July 15,
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`1998 and is now abandoned, claims the benefit of the priority date of
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`U.S. Patent No. 6,407,213;
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` U.S. Patent Application No. 09/705,392, which was filed on
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`November 2, 2000 and issued as U.S. Patent No. 6,719,971, claims
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`the benefit of the priority date of U.S. Patent No. 6,407,213;
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` U.S. Patent Application No. 09/705,686, which was filed on
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`November 2, 2000 and issued as U.S. Patent No. 6,639,055, claims
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`the benefit of the priority date of U.S. Patent No. 6,407,213;
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` U.S. Patent Application No. 09/705,398, which was filed on
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`November 2, 2000 and issued as U.S. Patent No. 6,800,738, claims
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`the benefit of the priority date of U.S. Patent No. 6,407,213;
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` U.S. Patent Application No. 10/835,641, which was filed on April
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`30, 2004 and is now abandoned, claims the benefit of the priority
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`date of U.S. Patent No. 6,407,213;
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` U.S. Patent Application No. 11/444,791, which was filed on June 1,
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`2006 and is now abandoned, claims the benefit of the priority date of
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`U.S. Patent No. 6,407,213;
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` U.S. Patent Application No. 11/969,430, which was filed on January
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`4, 2008 and issued as U.S. Patent No. 8,075,890, claims the benefit
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`IPR2017-02140
`Patent Owner’s Updated Mandatory Notices
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`of the priority date of U.S. Patent No. 6,407,213.
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`Additionally, Patent Owner identifies the following matters that relate or
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`may relate to U.S. Patent Application No. 08/146,206, which issued as U.S. Patent
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`No. 6,407,213:
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` U.S. Patent No. 6,407,213 is the patent at issue in Celltrion, Inc. v.
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`Genentech, Inc., IPR2017-01373, which is pending;
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` U.S. Patent No. 6,407,213 is the patent at issue in Celltrion, Inc. v.
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`Genentech, Inc., IPR2017-01374, which is pending;
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` U.S. Patent No. 6,407,213 is the patent at issue in Pfizer, Inc. v.
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`Genentech, Inc., IPR2017-01488, which is pending;
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` U.S. Patent No. 6,407,213 is the patent at issue in Pfizer, Inc. v.
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`Genentech, Inc., IPR2017-01489, which is pending;
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` U.S. Patent No. 6,407,213 is the patent at issue in Boehringer
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`Ingelheim Pharmaceuticals, Inc. v. Genentech Inc., IPR2017-02031
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`which is pending;
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` U.S. Patent No. 6,407,213 is the patent at issue in Boehringer
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`Ingelheim Pharmaceuticals, Inc. v. Genentech Inc., IPR2017-02032
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`which is pending;
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` U.S. Patent No. 6,407,213 is the patent at issue in Samsung Bioepis
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`IPR2017-02140
`Patent Owner’s Updated Mandatory Notices
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`Co., Ltd. v. Genentech, Inc., IPR2017-02139, which is pending,
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`Petitioner has moved to join IPR2017-01489;
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` U.S. Patent No. 6,407,213 was the patent at issue in Mylan
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`Pharmaceuticals Inc. v. Genentech, Inc., IPR2016-01693, which has
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`been terminated;
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` U.S. Patent No. 6,407,213 was the patent at issue in Mylan
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`Pharmaceuticals Inc. v. Genentech, Inc., IPR2016-01694, which has
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`been terminated;
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` U.S. Patent No. 6,407,213 is a patent at issue in Genentech, Inc. et
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`al. v. Amgen Inc. (D. Del.) 1:17-cv-01407-GMS, which is pending;
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` U.S. Patent No. 6,407,213 is a patent at issue in Genentech, Inc. et
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`al. v. Amgen Inc. (C.D. Cal.) 2:17-cv-07349-GW-AGR, which is
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`pending; and
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` U.S. Patent No. 6,407,213 is a patent at issue in Genentech, Inc. et
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`al. v. Pfizer, Inc. (D. Del.) 1:17-cv-01672, which is pending.
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`Patent Owner does not concede that any of the above-identified patents,
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`applications, or proceedings, aside from U.S. Patent No. 6,407,213, would affect,
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`or be affected by, a decision in the present IPR.
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`III. COUNSEL
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`IPR2017-02140
`Patent Owner’s Updated Mandatory Notices
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`Lead Counsel:
`David L. Cavanaugh, Reg. No. 36,476
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`Back-up Counsel:
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`Rebecca A. Whitfield, Reg. No. 73,756
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`Robert J. Gunther, Jr., Pro Hac Vice motion to be submitted
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`Adam R. Brausa, Reg. No. 60,287
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`Daralyn J. Durie, Pro Hac Vice motion to be submitted
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`Andrew J. Danford, Pro Hac Vice motion to be submitted
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`Lisa J. Pirozzolo, Pro Hac Vice motion to be submitted
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`Kevin S. Prussia, Pro Hac Vice motion to be submitted
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`IV. SERVICE INFORMATION
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`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
`Kevin.Prussia@wilmerhale.com
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`IPR2017-02140
`Patent Owner’s Updated Mandatory Notices
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`Electronic service on lead and back up counsel is approved and preferred.
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`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
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`Date: November 29, 2017
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`Respectfully submitted,
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`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
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`IPR2017-02140
`Patent Owner’s Updated Mandatory Notices
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`CERTIFICATE OF SERVICE
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`I hereby certify that, on November 29, 2017, I caused a true and correct
`copy of the following materials:
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` Patent Owner’s Updated Mandatory Notices Under 37 C.F.R. §42.8
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`to be served via electronic mail on the following attorneys of record:
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`Dimitrios T. Drivas
`White & Case LLP
`ddrivas@whitecase.com
`1221 Avenue of the Americas, New York, NY 10020
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`Scott T. Weingaertner
`White & Case LLP
`scott.weingaertner@whitecase.com
`1221 Avenue of the Americas, New York, NY 10020
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`/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
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`ActiveUS 165561890v.1
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