`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`KVK-TECH, Inc.,
`Petitioner
`
`v.
`
`SHIRE LLC,
`Patent Owner
`____________
`
`Case IPR2018-00293
`Patent 9,173,857
`____________
`
`PATENT OWNER UPDATED MANDATORY NOTICES
`UNDER 37 C.F.R. § 42.8(a)(3)
`
`
`
`Case No. IPR2018-00293
`Patent No. 9,173,857
`
`PATENT OWNER UPDATED MANDATORY NOTICES
`
`Pursuant to 37 C.F.R. § 42.8, Patent Owner Shire, LLC (“Patent Owner”)
`
`submits the following Updated Mandatory Notices in this Inter Partes Review.
`
`Specifically, Patent Owner Shire LLC was acquired by Takeda Pharmaceutical
`
`Company Ltd. on January 7, 2019.
`
`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, Shire Plc, and Takeda Pharmaceutical Company Ltd.
`
`II.
`
`Related Matters – 37 C.F.R. § 42.8(b)(2)
`
`The involved patent is being asserted in the following cases:
`
` Shire Development LLC et al v. Teva Pharmaceuticals USA, Inc. et al,
`
`1:17-cv-01696-RGA (D. Del);
`
` Shire Development LLC et al v. SpecGx LLC, 1:18-cv-00800-RGA
`
`(D. Del); and
`
` Shire Development LLC et al v. Impax Laboratories LLC, 1:18-cv-
`
`0549-RGA (D. Del).
`
`These cases have been consolidated under Civil Action No. 17-1696 (RGA).
`
`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
`
`
`
`Case No. IPR2018-00293
`Patent No. 9,173,857
`
`III. Lead and Back-Up Counsel – 37 C.F.R. § 42.8(b)(3)
`
`Patent Owner provides the following designation of counsel:
`Lead Counsel:
`Back-Up Counsel:
`Joseph R. Robinson
`Robert Schaffer
`PTO Reg. 33,448
`PTO Reg. 31,194
`Troutman Sanders LLP
`Troutman Sanders LLP
`875 Third Avenue
`875 Third Avenue
`New York, NY 10022
`New York, NY 10022
`Phone: 212.704.6246
`Phone: 212.704.6136
`Facsimile: 212.704.6288
`Facsimile: 212.704.6288
`joseph.robinson@troutmansanders.com
`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 involved 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 a further power of attorney is
`
`necessary.
`
`2
`
`
`
`Case No. IPR2018-00293
`Patent No. 9,173,857
`
`IV.
`
`Service Information – 37 C.F.R. § 42.8(b)(4)
`
`Patent 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
`
`Patent Owner consents to electronic service of all papers concerning this
`
`matter at the email addresses provided above.
`
`Dated: January 22, , 2019
`
`Respectfully submitted,
`
`/Joseph R. Robinson/
`Joseph R. Robinson
`PTO Reg. No. 33,448
`
`3
`
`
`
`Case No. IPR2018-00293
`Patent No. 9,173,857
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Patent Owner
`
`Updated Mandatory Notices Under 37 C.F.R. § 42.8(a)(3) were served via
`
`electronic mail on January 22, 2019 on attorneys for Petitioner1:
`
`Steven Roth
`sroth@lmiplaw.com
`
`Thomas Vetter
`tvetter@lmiplaw.com
`
`Dated: January 22, 2019
`
`Respectfully submitted,
`
`/Dustin B. Weeks/
`Dustin B. Weeks
`PTO Reg. No. 67,466
`
`1 On January 15, 2019, the Board granted Petitioner’s Motion to Withdraw and
`Substitute Counsel, which withdrew prior counsel for Petitioner and recognized
`Steven Roth as lead counsel for Petitioner and Thomas Vetter as back-up counsel
`for Petitioner. The Board also indicated that within seven days of that order,
`Petitioner shall file an updated mandatory notice, which would indicate the change
`in counsel and include updated service information. Patent Owner has not received
`the updated service information. Accordingly, Patent Owner hereby serves Patent
`Owner’s Updated Mandatory Notice on the known email addresses of Petitioner’s
`recently substituted counsel.
`
`4
`
`
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