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UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`KVK-TECH, Inc.,
`Petitioner
`
`v.
`
`SHIRE LLC,
`Patent Owner
`____________
`
`Case IPR2018-00290
`Patent 8,846,100
`____________
`
`PATENT OWNER MANDATORY NOTICES
`UNDER 37 C.F.R. § 42.8(a)(2)
`
`

`

`Case No. IPR2018-00290
`Patent No. 8,846,100
`
`Pursuant to 37 C.F.R. § 42.8, Patent Owner Shire, LLC (“Patent Owner”)
`
`submits the following Mandatory Notices in response to the Petition for Inter
`
`Partes Review of U.S. Patent No. 8,846,100 (“the ’100 patent”).1
`
`I.
`
`Real Party-In-Interest – 37 C.F.R. § 42.8(b)(1)
`
`The real parties-in-interest are Shire, LLC, Shire US, Inc., Shire
`
`Development, LLC and Shire Plc.
`
`II.
`
`Related Matters – 37 C.F.R. § 42.8(b)(2)
`
`The ’100 patent was previously the subject of IPR2017-00665, which
`
`terminated prior to the filing of a preliminary response.
`
`The ‘100 patent is being asserted in Shire Development LLC et al v. Teva
`
`Pharmaceuticals USA, Inc. et al, 1:17-cv-01696-RGA (D. Del).
`
`The Patent Owner is not aware of any other judicial or administrative
`
`matters that would affect, or be affected by, a decision in this proceeding.
`
`1 The Petition names Shire Plc, however, the Patent Owner is Shire LLC.
`
`See USPTO Assignment Records at Reel 018428, Frame 0510.
`
`1
`
`

`

`Case No. IPR2018-00290
`Patent No. 8,846,100
`
`III. Lead and Back-Up Counsel – 37 C.F.R. § 42.8(b)(3)
`
`Patent Owner provides the following designation of counsel:
`
`Lead Counsel:
`Joseph R. Robinson
`PTO Reg. 33,448
`Troutman Sanders LLP
`875 Third Avenue
`New York, NY 10022
`Phone: 212.704.6246
`Facsimile: 212.704.6288
`joseph.robinson@troutmansanders.com
`
`Back-Up Counsel:
`Robert Schaffer
`PTO Reg. 31,194
`Troutman Sanders LLP
`875 Third Avenue
`New York, NY 10022
`Phone: 212.704.6136
`Facsimile: 212.704.6288
`robert.schaffer@troutmansanders.com
`
`Dustin B. Weeks
`PTO Reg. 67,466
`Troutman Sanders LLP
`Bank of America Plaza
`600 Peachtree Street NE, Suite 5200
`Atlanta, GA 30308-2231
`Phone: 404.885.3446
`Facsimile: 404.962.6848
`dustin.weeks@troutmansanders.com
`
`Each of the attorneys listed above is associated with customer number
`
`06980. A power of attorney was filed in the ’100 Patent on December 20, 2017,
`
`which appointed practitioners associated with customer number 06980 to represent
`
`Patent Owner in matters before the USPTO. Accordingly, pursuant to 37 C.F.R. §
`
`42.10(b), Patent Owner does not believe any further power of attorney is
`
`necessary.
`
`2
`
`

`

`Case No. IPR2018-00290
`Patent No. 8,846,100
`
`IV.
`
`Service Information – 37 C.F.R. § 42.8(b)(4)
`
`Owner provides the following service information:
`
`Electronic Mail Addresses:
`
`joseph.robinson@troutmansanders.com
`robert.schaffer@troutmansanders.com
`dustin.weeks@troutmansanders.com
`
`Postal Mailing Address:
`
`Joseph R. Robinson
`Troutman Sanders LLP
`875 Third Avenue
`New York, NY 10022
`
`Telephone Number:
`
`Facsimile Number:
`
`212.704.6246
`
`212.704.6288
`
`Owner consents to electronic service of all papers concerning this matter at
`
`the email addresses provided above.
`
`Dated: December 29, 2017
`
`Respectfully submitted,
`
`/Joseph R. Robinson/
`Joseph R. Robinson
`PTO Reg. No. 33,448
`
`3
`
`

`

`Case No. IPR2018-00290
`Patent No. 8,846,100
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Patent Owner
`
`Mandatory Notices Under 37 C.F.R. § 42.8(a)(2) and the associated power of
`
`attorney were served via electronic mail on December 29, 2017 on attorneys for
`
`Petitioner:
`
`Jonathan Harris
`jharris@axinn.com
`
`James Evans
`jevans@axinn.com
`
`Dated: December 29, 2017
`
`Respectfully submitted,
`
`/Dustin B. Weeks/
`Dustin B. Weeks
`PTO Reg. No. 67,466
`
`4
`
`

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