`Date filed: February 7, 2018
`
`
`Filed On Behalf Of:
`
`Novartis Pharmaceuticals Corporation
`
`By:
`
`Nicholas N. Kallas
`NKallas@fchs.com
`ZortressAfinitorIPR@fchs.com
`(212) 218-2100
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`WEST-WARD PHARMACEUTICALS INTERNATIONAL LIMITED,
`Petitioner,
`
`v.
`
`NOVARTIS PHARMACEUTICALS CORPORATION,
`Patent Owner.
`
`
`
`Case IPR2018-00507
`Patent 8,410,131
`
`
`
`
`PATENT OWNER’S MANDATORY NOTICES
`UNDER 37 C.F.R. § 42.8(a)(2)
`
`
`
`
`
`
`
`
`
`
`
`
`
`REAL PARTY-IN-INTEREST PURSUANT TO 37 C.F.R. § 42.8(b)(1)
`
`Pursuant to the requirements of 37 C.F.R. § 42.8(a)(2), the undersigned
`
`states that Novartis Pharmaceuticals Corporation (“Novartis” or “Patent Owner”)
`
`owns U.S. Patent No. 8,410,131 (“the ’131 Patent”), and is a wholly-owned
`
`subsidiary of Novartis AG. Novartis is the real party-in-interest in IPR2018-
`
`00507.
`
`RELATED MATTERS PURSUANT TO 37 C.F.R. § 42.8(b)(2)
`
`The ’131 Patent has been or is at issue in the following judicial proceedings:
`
`(1) Novartis Pharm. Corp. et al. v. West-Ward Pharm. Int’l Ltd., No. 15-474-RGA
`
`(D. Del.) (final judgement that claims 1-3 of the ’131 Patent were not proven
`
`invalid by reason of obviousness entered on December 21, 2017); (2) Novartis
`
`Pharm. Corp. et al. v. Breckenridge Pharm., Inc., No. 16-431-RGA (D. Del.); (3)
`
`Novartis Pharm. Corp. et al. v. Breckenridge Pharm., Inc., No. 17-420-RGA (D.
`
`Del.); (4) Novartis Pharm. Corp. et al. v. Teva Pharm. USA, Inc., No. 17-393-RGA
`
`(D. Del.); and (5) Novartis Pharm. Corp. et al. v. West-Ward Pharm. Int’l Ltd., No.
`
`18-1434 (Fed. Cir.) (appeal from No. 15-474-RGA (D. Del.) by West-Ward
`
`Pharm. Int’l Ltd.).
`
`The ’131 Patent is also the subject of the following Petition for Inter Partes
`
`Review: Breckenridge Pharmaceutical, Inc. v. Novartis Pharmaceuticals
`
`
`
`1
`
`
`
`
`
`Corporation, Inter Partes Review No. 2017-01592 (P.T.A.B.) (institution granted
`
`
`
`January 3, 2018).
`
`IDENTIFICATION OF LEAD AND BACK-UP COUNSEL
`PURSUANT TO 37 C.F.R. §§ 42.8(b)(3) and 42.10
`
`Pursuant to 37 C.F.R. §§ 42.8(b)(3) and 42.10, Novartis designates Nicholas
`
`N. Kallas (Reg. No. 31,530) as lead counsel and Laura K. Fishwick (Reg. No.
`
`69,907) as back-up counsel.
`
`A power of attorney from Novartis is being submitted with this Notice.
`
`SERVICE INFORMATION PURSUANT TO 37 C.F.R. § 42.8(b)(4)
`
`Novartis may be served electronically using the following e-mail address:
`
`ZortressAfinitorIPR@fchs.com
`
`Novartis may be served by postal mailing, hand-delivery, telephone or
`
`facsimile as follows:
`
`Nicholas N. Kallas
`Fitzpatrick, Cella, Harper & Scinto
`1290 Avenue of the Americas
`New York, NY 10104
`Telephone: (212) 218-2100
`Facsimile: (212) 218-2200
`
`
`
`Respectfully submitted,
`
`
`Dated: February 7, 2018
`
`
`
`/ Nicholas N. Kallas /
`Nicholas N. Kallas
`Registration No. 31,530
`
`2
`
`
`
`
`
`
`
`
`
`
`
`Lead Counsel for Patent Owner
`FITZPATRICK, CELLA, HARPER
`& SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`Tel. 212-218-2100
`
`3
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`I certify that a copy of Patent Owner’s Mandatory Notices Under 37 C.F.R.
`
`§ 42.8(a)(2) was served on February 7, 2018 by causing it to be sent by email to
`
`counsel for Petitioner at the following email addresses:
`
`Keith A. Zullow (kzullow@goodwinprocter.com)
`
`Marta E. Delsignore (mdelsignore@goodwinprocter.com)
`
`
`
`Dated: February 7, 2018
`
`
`
`
`
`
`
`
`
`
`
`
`/ Nicholas N. Kallas /
`Nicholas N. Kallas
`Registration No. 31,530
`FITZPATRICK, CELLA, HARPER
`& SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`Tel. 212-218-2100
`
`
`
`
`
`
`
`4
`
`
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