`A0120 ’ ev. 08/10
`
`TO:
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P.0. Box 1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`
`TRADEMARK
`
`Alexandria, VA 22313-1450
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`
`for the District of Delaware
`
`filed in the U.8. District Court
`
`on the following
`
`[I Trademarks or
`
`IZPatents.
`
`( [I the patent action involves 35 U.S.C. § 292.):
`
`DOCKET NO.
`
`PLAINTIFF
`
`DATE FILED
`1/25/2017
`
`U.S. DISTRICT COURT
`for the District of Delaware
`
`DEFENDANT
`
`SHIONOGI INC. and ANDRX LABS, L.L.C.
`
`AUROBINDO PHARMA LTD. and AUROBINDO
`PHARMA USA, INC.
`
`PATENT OR
`
`DATE OF PATENT
`
`1 6, 790,459
`
`2 6,866,866
`
`9/14/2004
`
`Andrx Labs L. L. C.
`
`3/15/2005
`
`Andrx Labs, L. L. C.
`
`
`HOLDER OF PATENT OR TRADEMARK
`
`DATE INCLUDED
`
`In the above—entitled case, the following patent(s)/ trademark(s) have been included:
`INCLUDED BY
`
`PATENT OR
`TRADEMARK NO.
`
`El Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`[I Answer
`
`[I Cross Bill
`
`I:IOther Pleading
`
`In the above—entitled case, the following decision has been rendered or judgement issued:
`DECISION/JUDGEMENT
`
`
`
`CLERK
`
`(BY) DEPUTY CLERK
`
`DATE
`
`Copy 1—Upon initiation of action, mail this copy to Director Copy 3—Upon termination of action, mail this copy to Director
`Copy 2—Upon filing document adding patent(s), mail this copy to Director Copy 4—Case file copy
`
`AUROBINDO EX. 1006, 1
`
`AUROBINDO EX. 1006, 1
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`AddIESS. COMMISSIONER FOR PATENTS
`PO Box 1450
`Alexandria, ViJgLnia 22313-1450
`wwwusptogov
`
`
`
`
`F ING OR 371 (C) DATE
`
`
`
`[IF
`
`APPLICATION NUMBER
`
`FIRST NAMED APPLICANT
`
`ATTY. DOCKET NO./TITLE
`
`09/705,625
`
`11/03/2000
`
`Xiu Xiu Cheng
`
`141-603
`CONFIRMATION NO. 6705
`
`96056
`Florek & Endres PLLC
`1156 Avenue of the Americas
`Suite 600
`New York, NY 10036
`
`POA ACCEPTANCE LETTER
`
`lllllllllllllllllllllllllllllllllllllllllllllllllIllIlllllllllllllllllllllllllllllllllll
`00000004 2 6696
`
`Date Mailed: 10/29/2010
`
`NOTICE OF ACCEPTANCE OF POWER OF ATTORNEY
`
`This is in response to the Power of Attorney filed 10/22/2010.
`
`The Power of Attorney in this application is accepted. Correspondence in this application will be mailed to the
`above address as provided by 37 CFR 1.33.
`
`/Vvan/
`
`
`
`Office of Data Management, Application Assistance Unit (571) 272-4000, or (571) 272-4200, or 1-888-786-0101
`
`page 1 of 1
`
`AUROBINDO EX. 1006, 2
`
`AUROBINDO EX. 1006, 2
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Addl'fiss. COMMISSIONER FOR PATENTS
`PO Box 1450
`Alexandria, ViJgLnia 22313-1450
`wwwuspto.gov
`
`
`
`
`F ING OR 371 (C) DATE
`
`
`
`APPLICATION NUMBER
`
`FIRST NAMED APPLICANT
`
`ATTY. DOCKET NO./TITLE
`
`09/705,625
`
`11/03/2000
`
`Xiu Xiu Cheng
`
`141-603
`CONFIRMATION NO. 6705
`
`47888
`
`HEDMAN & COSTIGAN, P.C.
`1230 AVENUE OF THE AMERICAS
`7th floor
`NEW YORK, NY 10020
`
`POWER OF ATTORNEY NOTICE
`
`lllllllllllllllllllllllllllIlllllllllllllllllllllllllljllllllullllllllllllllllllllllllllll
`00000004 2 66 0
`
`Date Mailed: 10/29/2010
`
`NOTICE REGARDING CHANGE OF POWER OF ATTORNEY
`
`This is in response to the Power of Attorney filed 10/22/2010.
`
`. The Power of Attorney to you in this application has been revoked by the assignee who has intervened as
`provided by 37 CFR 3.71. Future correspondence will be mailed to the new address of record(37 CFR 1.33).
`
`/Vvan/
`
`
`
`Office of Data Management, Application Assistance Unit (571) 272-4000, or (571) 272-4200, or 1-888-786-0101
`
`page 1 of 1
`
`AUROBINDO EX. 1006, 3
`
`AUROBINDO EX. 1006, 3
`
`
`
`PTO/SB/80 (11—08)
`Approved for use through 11/30/2011. OMB 0651-0035
`US. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`
`POWER OF ATTORNEY TO PROSECUTE APPLICATIONS BEFORE THE USPTO
`
`I hereby revoke all previous powers of attorney given in the application identified in the attached statement under
`37 CFR 3.73 b .
`
`I hereby appoint:
`
`
`
`
`
`
`
`Practitioners associated with the Customer Number:
`OR
`|:| Practitioner(s) named below (if more than ten patent practitioners are to be named, then a customer number must be used):
`
`96056
`
`(USPTO) in connection with
`any and all patent applications assigned only to the undersigned according to the USPTO assignment records or assignment documents
`
`attached to this form in accordance with 37 CFR 3.73(b).
`
`
`
`
`Please change the correspondence address for the application identified in the attached statement under 37 CFR 3.73(b) to:
`
`
`
`
`The address associated with Customer Number:
`
`96056
`
`OR
`
`Firm or
`Individual Name
`
`
`Address
`
`
`
`
`
`City
`
`
`Country
`
` Telephone
`
`
`Assignee Name and Address:
`
`
`Andrx Labs, LLC
`
`
`4955 Orange Drive
`
`Davie, Florida 33314
`
`A copy of this form, together with a statement under 37 CFR 3.73(b) (Form PTO/SBI96 or equivalent) is required to be
`
`
`filed in each application in which this form is used. The statement under 37 CFR 3.73(b) may be completed by one of
`
`the practitioners appointed in this form if the appointed practitioner is authorized to act on behalf of the assignee,
`and must identif the a - . lication in which this Power of Attorne is to be filed.
`
`
`SIGNATURE of Assignee of Record
`
`The individual whose signature and title is supp ied below is authorized to act on behalf of the assignee
`
`
`
`
`
`This collection of information is required by 37 CFR 1.31, 1.32 and 1.33, The information is required to obtain or retain a benefit by the public which is to file (and
`by the USPTO to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 3 minutes
`to complete, including gathering, preparing, and submitting the completed application form to the USPTO. Time wili vary depending upon the individual case. Any
`comments on the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief information Officer,
`US. Patent and Trademark Office, US. Department of Commerce, PO. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED
`FORMS TO THIS ADDRESS. SEND TO: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
`
`
`
`
`
`
`
`
`Senior VP/ General Counsel
`
`
`
`If you need assistance in completing the form, call 1-800-PTO-9199 and select option 2.
`
`AUROBINDO EX. 1006, 4
`
`AUROBINDO EX. 1006, 4
`
`
`
`Electronic Acknowledgement Receipt
`
`TItle of Inventlon:
`
`METHODS FOR TREATING DIABETES VIA ADMINISTRATRION OF CONTROLLED
`RELEASE METFORMIN
`
`International Application Number: —
`
`
`
`First Named Inventor/Applicant Name:
`
`Payment information:
`
`AUROBINDO EX. 1006 5
`
`File Listing:
`
`Document
`
`Information:
`
`.
`
`.
`
`File Size(Bytes)/
`
`Multi
`
`Pages
`
`Assignee showing of ownership per 37
`CFR 3.73(b).
`
`6790459statement.pdf
`
`4f7cf085fe48c5433l fb95ebf3da307c8c460
`ef6
`
`AUROBINDO EX. 1006, 5
`
`
`
`Power of Attorney
`
`AndrxLabsPOA.pdf
`
`171203
`
`a2c5c2c827e09c383c1e79893ffb0cc5247a‘
`0d9
`
`the application.
`
`New International Application Filed with the USPTO as a Receiving Office
`lfa new international application is being filed and the international application includes the necessary components for
`an international filing date (see PCT Article 11 and MPEP 1810), a Notification of the International Application Number
`and ofthe International Filing Date (Form PCT/RO/105) will be issued in due course, subject to prescriptions concerning
`national security, and the date shown on this Acknowledgement Receipt will establish the international filing date of
`
`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO ofthe indicated documents,
`characterized by the applicant, and including page counts, where applicable. It serves as evidence of receipt similar to a
`Post Card, as described in MPEP 503.
`
`New Applications Under 35 U.S.C. 111
`lfa new application is being filed and the application includes the necessary components for a filing date (see 37 CFR
`1.53(b)-(d) and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shown on this
`Acknowledgement Receipt will establish the filing date of the application.
`
`National Stage of an International Application under 35 U.S.C. 371
`lfa timely submission to enter the national stage of an international application is compliant with the conditions of 35
`U.S.C. 371 and other applicable requirements a Form PCT/DO/EO/903 indicating acceptance of the application as a
`national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
`
`AUROBINDO EX. 1006, 6
`
`AUROBINDO EX. 1006, 6
`
`
`
`PTOISBIQB (07-09)
`Approved for use through 0773172012. OMB 065141031
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information uniess it displays a valid OMB control number.
`
`Applicant/Patent Owner: Xiu Xiu Cheng, Chih-Ming Chen, Steve Jan, Joseph Chou
`
`STATEMENT UNDER 37 CFR 3.73(b)
`
`TH d:
`I 9
`
`METHODS FOR TREATING DiABETES VlA ADMINISTRATEON OF CONTROLLED RELEASE METFORMEN
`
`Filedllssue Date: September 14- 2004
`
`Andrx Labs, LLC
`(Name of Assignee)
`
`states that it is:
`
`, a
`
`corporation
`(Type of Assignee, e.g.. corporation, partnership, university. government agency, etc.
`
` Application NoJPatent No.: 5,790,459
`
`1.
`
`the assignee of the entire right, title, and interest in;
`
`2. D an assignee of less than the entire right, title, and interest in
`(The extent (by percentage) of its ownership interest is
`
`%); or
`
`3. D the assignee of an undivided interest in the entirety of (a complete assignment from one of the joint inventors was made)
`
`the patent applicationi’patent identified above, by virtue of either:
`
`A. E]
`
`OR
`
`B.
`
`An assignment from the inventor(s) of the patent application/patent identified above. The assignment was recorded in
`the United States Patent and Trademark Office at Reel
`, Frame
`, or for which a
`copy therefore is attached.
`
`A chain of titte from the inventor(s), of the patent applicationlpatent identified above, to the current assignee as fotlows:
`
`1_ From: X. Cheng, C.Chen, S. Jan, J.Ch0u
`
`To: ANDRX CORPORATEON
`
`The document was recorded in the United States Patent and Trademark Office at
`
`Reel 011587
`
`,
`
`Frame 0590
`
`,
`
`or for which a copy thereof is attached.
`
`2. From:
`
`Andrx Corporation, A Florida Corpoa'ation
`
`To: Andrx Corporation, A Delaware Corporation
`
`The document was recorded in the United States Patent and Trademark Office at
`
`Reel 013792
`
`,
`
`Frame 0227
`
`,
`
`or for which a copy thereof is attached.
`
`3, From:
`
`ANDRX CORPORATION
`
`To: ANDRX LABS, LLC
`
`The document was recorded in the United States Patent and Trademark Office at
`
`Reel 013783
`
`,
`
`Frame 0187
`
`,
`
`or for which a copy thereof is attached.
`
`E Additional documents in the chain of title are listed on a supplementat sheet(s).
`
`As required by 37 CFR 3.73(b)(1)(i), the documentary evidence of the chain of title from the original owner to the assignee was,
`or concurrently is being, submitted for recordation pursuant to 37 CFR 3.11.
`
`[NOTE A separate copy (i.e., a true copy of the origins! assignment document(s)) must be submitted to Assignment Division in
`accordance with 37 CFR Part 3, to record the assignment in the records of the USPTO. E MPEP 302.08]
`
`The undersigned (who:etitleis%quhmtetgw)isauthorizedtoacton behalfofthe assignee.
`
`Signature
`
`Date
`
`David A. Buchen
`
`
`Senior VP! Generat Counsel
`
`Title
`Printed or Typed Name
`This collection of information is required by 37 CFR 3.73(b). The information is required to obtain or retain a benefit by the public which is to file (and by the USPTO to
`pzocess) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 12 minutes to complete, including
`gathering, preparing, and submitting the compteted application form to the USPTO. Time will vary depending upon the individual case. Any comments on the amount of time
`you require to complete this torm andi'or suggestions for reducing this burden, should be sent to the Chief information Officer, US. Patent and Trademark Office, US.
`Department of Commerce. PO. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES 0R COMPLETED FORMS TO THIS ADDRESS. SEND TO: Commissioner
`for Patents. P.0. Box 1450, Alexandria, VA 22313-1450.
`
`Ifyou need assistance In completing the form, call 1—800-PTO—9199 and select option 2. AU R0 B I N DO EX'1 006, 7
`
`AUROBINDO EX. 1006, 7
`
`
`
`Page 1 of 1
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Addrcn: COMNIISSIONER FOR PATENTS
`R0, Box I450
`Alexandria,me 22313-1450
`www.mpmyw
`
`APPLICATION NUMBER
`
`FILING OR 371 (0) DATE
`
`FIRST NAMED APPLICANT
`
`A'I'TY. DOCKET NOfI'ITLE
`
`09/705,625
`
`11/03/2000
`
`Xiu Xiu Cheng
`
`-
`
`141-603
`
`47888
`HEDMAN & COSTIGAN PC.
`1185 AVENUE OF THE AMERICAS
`NEW YORK, NY 10036
`
`I
`
`-
`
`I
`
`'
`
`CONFIRMATION NO. 6705
`llllllllllllllllllIlllllllllllIlllllllIlllllllllllllllllllllllllllllllll||||||Il
`.
`.
`°C°°°°°°°252°8359
`
`Date Mailed: 08/06/2007
`
`NOTICE OF ACCEPTANCE OF POWER OF ATTORNEY
`
`This is in response to the Power of Attorney filed 07/23/2007.
`
`A
`
`The Power of Attorney in this application is accepted. Correspondence in this application will be mailed to the
`above address as provided by 37 CFR 1.33.
`
`
`
`%/
`Office of Initial Patent Examination (571) 272-4000, or 1-800-PTO-9199
`OFFICE COPY
`
`AUROBINDO EX. 1006, 8
`
`AUROBINDO EX. 1006, 8
`
`
`
`Page 1 of 1
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`UNITED STATES DEPARTMENT OF COMNIERCE
`United Status Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`R0. Box 1450
`Aluxandxin,Vuginia 22313-1450
`www.mptognv
`
`APPLICATION NUMBER
`
`FILING OR 37| (c) DATE
`
`FIRST NAMED APPLICANT
`
`ATTY. DOCKET NO.fTITLE
`
`09/705,625
`
`11/03/2000
`
`Xiu Xiu Cheng
`
`300.1012
`
`23280
`
`DAWSON DAWSON & KAPPEL, LLC
`485 SEVENTH AVENUE, 14TH FLOOR
`NEW YORK, NY 10018
`
`'
`
`’
`
`CONFIRMATION NO. 6705
`
`lllllllllllllllllllllllllllllllllllllIllllllllllllllllllllllllllllllllllllll
`°c°°°°°°°252°8332
`
`Date Mailed: 08/06/2007
`
`NOTICE REGARDING CHANGE OF POWER OF ATTORNEY
`
`'This isin response to the Power of Attorney filed 07/23/2007.
`
`0 The Power of Attorney to you in this application has been revoked by the assignee who has intervened as
`provided by 37 CFR 3.71. Future correspondence will be mailed to the new address of record(37 CFR 1.33).
`
`_
`
`
`
`_______________+&’
`Office oflnitial Patent Examination (571) 272-4000, or 1-800-PTO-9I99
`OFFICE COPY
`
`AUROBINDO EX. 1006, 9
`
`AUROBINDO EX. 1006, 9
`
`
`
`i
`
`.
`
`D:
`
`i
`
`(r
`
`
`
`
`
`
`Application Number
`Filing Date
`
`First Named Inventor
`mun"
`
`PTO/SB/21 (09—06)
`Approved for use through 03/31/2007. OMB 0651-0031
`U.S.Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`09/705.625
`November 3, 2000
`
`Cheng et 3|,
`
`
`
`
`
`
`
`'
`
`’*
`(to be used for all correspondence after initial filing)
`
`Examiner Name
`
`T Ware
`
`Total Number of PagesIn This Submission
`
`Attorney Docket Number
`
`141-603
`
`El
`
`
`
`Fee Transmittal Form
`
`D Fee Attached
`
`D Amendment/Reply
`D After Final
`|:i Affidavits/declaration(s)
`
`After Allowance Communication to TC
`
`ENCLOSURES
`
`DEEMEDDD CD, Number of CD(s)
`
`Request for Refund
`
`|:| Landscape Table on CD
`
`EDDIEDD
`
`
`(Check all that apply)
`
`Drawing(s)
`
`
`Appeal Communication to Board
`
`
`Licensing-related Papers
`
`
`
`of Appeals and Interferences
`
`Appeal Communication to TC
`Petition
`(Appeal Notice, Brief, Reply Brief)
`
`
`
`Petition to Convert to a
`
`
`Proprietary Information
`
`Provisional Application
`
`
`
`Power of Attorney, Revocation
`
`
`Status Letter
`
`Change of Correspondence Address
`
`
`
`Other Enclosure(s) (please Identify
`
`Terminal Disclaimer
`below):
`
`
`Statement Under 37 CFR 3.73 (b)
`Return Receipt Postcard
`
`
`
`Extension of Time Request
`
`Express Abandonment Request
`
`Information Disclosure Statement
`
`
`
`
`
`DDDIED
`
`Certified Copy of Priority
`
`
`Document(s)
`
`Reply to Missing Parts/
`
`
`Incomplete Application
`
`
`Reply to Missing Parts
`under 37 CFR 1.52 or 1.53
`
`
`
`
`
`
`
`-W1
`
`
`
`
`
`SIGNATURE OF APPLICANT, ATTORNEY, OR AGENT
`
`HEDMAN & COSTIGAN, P.C.
`
`Firm Name
`
`P'
`
`t d
`
`CERTIFICATE OF TRANSMISSION/MAILING
`
`E JU'Y 19 2007
`
`I hereby certify that this correspondence is being facsimile transmitted to the USPTO or deposited with the United States Postal Service with
`sufficient postage as first class mail in an envelope addressed to: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450 on
`the date shown below.
`
`_m/L
`Typed or printed name
`Matthew J- SO'OW
`
`This collection of information is required by 37 CFR 1.5. The information is required to obtain or retain a benefit by the public which is to file (and by the USPTO to
`process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and1.14. This collection is estimated to 2 hours to complete. including
`gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments on the
`amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, US. Patent and
`Trademark Office, US. Department of Commerce, PO. Box 1450, Alexandria. VA 22313-1450. 00 NOT SEND FEES OR COMPLETED FORMS TO THIS
`ADDRESS. SEND TO: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
`
`If you need assistance in completing the form, call 1-800-PTO-9199 and select option 2.
`
`AUROBINDO EX. 1006, 10
`
`AUROBINDO EX. 1006, 10
`
`
`
`V)
`
`
`
`
`
`
`POWER OF ATTORNEY
`
`
`and
`
`
`
`CORRESPONDENCE ADDRESS
`
`
`
`INDICATION FORM
`
`
`
`
`Attorney Docket Number
`141—603
`
`PTO/SB/81 (01-06)
`Approved for use through 12/31/2008. OMB 0651-0035
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`uired to res-0nd to a collection of informationunless it dis-Ia s a valid OMB control number.
`
`App ication Number
`Filing Date
`
`09/705325
`November 3, 2000
`
`mm— 1615
`
`Methods for Treatin- Diabetes Via....
`
`I hereby revoke all previous powers of attorney given in the above-identified application.
`
`I hereby appoint:
`
`'2] Practitioners associated with the Customer Number:
`OR
`
`[:1 Practitioner(s) named below:
`
`
`
`as mylour attorney(s) or agent(s) to prosecute the application identified above, and to transact all business in the United States Patent and
`Trademark Office connected therewith.
`
`Please recognize or change the correspondence address for the above-identified application to:
`121
`The address associated with the above-mentioned Customer Number:
`OR
`
`B The address associated with Customer Number:
`OR
`
`i
`Firm or
`Individual Name
`_—
`
`—U—-—
`Country _
`_—-—
`lathe:Applicant/Inventor.
`Assignee of record of the entire interest. See 37 CFR 3.71.
`Statement under 37 CFR 3. 73(b) is enclosed. (Form PTO/SB/96)
`
`I
`
`SIGNATURE of Applicant or Assignee of Record
`I
`mm21MMin—MW
`m Roberta Loomar
`Telephone 954—762-6211
`Title and Company
`Vice President, Chief Compliance Officer and Assistant General Counsel; Andrx Corporation
`
`NOTE: Signatures of all the inventors or assignees of record of the entire interest or their representative(s) are required. Submit multiple forms if more than one
`signature is required, see below“.
`
`forms are submitted.
`“Total of 1
`This collection of information is required by 37 CFR 1.31, 1.32 and 1.33. The information is required to obtain or retain a benefit by the public which is to file (and by
`the USPTO to process) an application. Confidentiality is governed by 35 use. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 3 minutes
`to complete, including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any
`comments on the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer,
`U.S. Patent and Trademark Office, U.S. Department of Commerce, PO. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED
`FORMS TO THIS ADDRESS. SEND To: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
`
`If you need assistance in completing the form, call 1-800—PTO-9199 and select option 2.
`
`AUROBINDO EX. 1006, 11
`
`AUROBINDO EX. 1006, 11
`
`
`
`Ii‘
`
`.
`
`PTO/SBI96 (04-07)
`
`Approved for use through 09/30/2007. OMB 0651-0031
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`.
`
`e Paerwork Reduction Act of 1995, no oersons are re-uired to res-0nd to a collection of information unless it dis-la s a valid OMB control number.
`
`
`
`
`
` Applicant/Patent Owner:
`
`
`
`Application No./PatentNo.:
`6790459
`Filed/Issue Date: September14,2004
`
`
`Entitled: METHODS FOR TREATING DIABETES VIA ADMINISTRATION OF CONTROLLED RELEASE METFORMIN
`
`STATEMENT UNDER 37 CFR 3.73Ibl
`
`Xiu Xiu Cheng et al.
`
`2. D an assignee of less than the entire right, title and interest
`
`OR
`
`
`
`
`Limited Liabilig Company
`I g
`Andrx I abs |
`, a
`(Name of Assignee)
`(Type of Assignee, e.g.. corporation, partnership, university, government agency. etc.)
`
`
`\
`
`states that it is:
`
`1.
`the assignee of the entire right, title, and interest; or
`
`
`
`(The extent (by percentage) of its ownership interest is— %)
`
`in the patent application/patent identified above by virtue of either:
`
`
`
`ADAn assignment from the inventor(s) of the patent application/patent identified above. The assignment was recorded
`in the United States Patent and Trademark Office at Reel
`, Frame
`, or for which a copy
`
`
`thereof is attached.
`
`
`
`
`8.. A chain .of title from the inventor(s), of the patent application/patent identified above, to the current assignee as follows:
`
`
`
`1. From:_)flu_Ximget_al.______ To: Andrx Corporation
`The document was recorded in the United States Patent and Trademark Office at
`
`Reel 911551
`, Frame 0690
`, or for which a copy thereof is attached.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`[:I As required by 37 CFR 3.7,3(b)(1)(i), the documentary evidence of the chain of title from the original owner to the
`assignee was, or concurrently is being, submitted for recordation pursuant to 37 CFR 3.11.
` [NOTE: A separate copy (i.e., a true copy of the original assignment document(s)) must be submitted to Assignment
`
`
`Division in accordance with 37 CFR Part 3, to record the assignment in the records of the USPTO. S_ee MPEP
`302.08]
`
`To: Andrx Corporation, A Delaware Corporation
`2. From: Andrx Corporation, A Florida Corporation
`The document was recorded in the United States Patent and Trademark Office at
`Reel 013ng
`, Frame 0227
`, or for which a copy thereof is attached.
`
`To: Andrx Labs, LLC
`3. From:‘ Andrx Corporation
`The document was recorded in the United States Patent and Trademark Office at
`Reel
`013788
`, Frame
`0187
`, or for which a copy thereof is attached.
`
`El Additional documents in the chain of title are listed on a supplemental sheet.
`
`
`
`The undersigne whose title is sup lied below) is authorized to act on behalf of the assignee.
`
`Signature
`
`. VRobertaLoomar
`
`Tug ia. 300?
`.
`Date
`
`
`
`
`954-762-6211
`
`Printed or Typed Name
`Telephone Number
`
`Vice President, Chief Compliance Officer and Assistant General Counsel
`
`
`Title
`
`
`This collection of information is required by 37 CFR 3.73(b). The information is required to obtain or retain a benefit by the public which is to file (and by the
`USPTO to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 12 minutes to
`complete, including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any
`comments on the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer,
`U.S. Patent and Trademark Office, U.S. Department of Commerce, PO. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED
`FORMS To THIS ADDRESS. SEND To: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
`
`
`
`If you need assistance in completing the form, call 1-800-PTO—9199 and select option 2.
`
`AUROBINDO EX. 1006, 12
`
`AUROBINDO EX. 1006, 12
`
`
`
`$ ,0“ 9“.
`y
`0“
`0%?-
`37/32,
`7W
`
`300.1012
`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`
`Applicants:
`
`Serial No.:
`
`Filed:
`
`For:
`
`Xiu Xiu CHENG, et a1.
`
`09/705,625
`
`November 3, 2000
`
`METHODS FOR TREATING DIABETES VIA
`
`ADMINISTRATION OF CONTROLLED
`
`RELEASE METFORMIN
`
`Art Unit:
`
`1615
`
`RESPONSE TO NOTICE REGARDING DRAWINGS
`
`Commissioner for Patents
`PO. Box 1450
`
`Alexandria, VA 22313-1450
`
`Sir:
`
`August 2, 2004
`
`In response to the Notice Regarding Drawings, dated June 21, 2004, Applicants submit
`
`replacement drawings, Figures 1—8.
`
`If any additional fees are deemed to be due at this time, the Commissioner is authorized
`
`to charge payment of the same to Deposit Account No. 50-0552.
`
`Respectfully submitted,
`
`
`
`Davidson, Davidson & Kappel, LLC
`485 Seventh Avenue, 14‘h Floor
`
`New York, NY 10018
`
`(212)736-1940
`
`AUROBINDO EX. 1006, 13
`
`AUROBINDO EX. 1006, 13
`
`
`
`-;q
`; AUG 0 4 200
`FORM PTO-1083
`"‘
`I
`COMMISSIONER FOR P rYéENTS
`<(
`P0 BOX 1450
`famsww
`Alexandria, VA 22313-1450
`\»——-
`
`
`
`In re application of: Xiu Xiu CHENG, et al.
`Serial No.: 09/705,625
`Filed: November 3, 2000
`For:
`METHODS FOR TREATING DIABETES VIA ADMINISTRATION
`OF CONTROLLED RELEASE METFORMIN
`
`S i r:
`
`DocketNo __3___oo.1012
`
`
`Date: August2, 2004
`
`[5/9”
`-615"
`
`Transmitted herewith is a Response to Notice Regarding Drawings in the above-identified application.
`
`[] Small entity status of this application under 37 C.F.R. 1.9 and 1.27 has been
`established by a verified statement previously submitted.
`[I A verified statement to establish small entity status under 37 C.F.R. 1.9 and
`1.27 is enclosed.
`
`‘1 [X] No fee for additional claims is required.
`[] A filing fee for additional claims calculated as shown below, is required:
`
`17‘ C01.C01.
`REMAINING HIGHEST
`AFTER
`PREVIOUSLY PRESENT
`AMENDMENT
`PAID FOR
`EXTRA
`*
`Minus 20**
`=
`TOTAL CLAIMS
`0
`*
`Minus 3***
`=
`INDEP. CLAIMS
`FIRST PRESENTATION OF MULTIPLE DEP. CLAIM
`
`SMALL ENTI TY
`RATE
`FEE
`
`_CB_
`
`LARGE ENTITY
`RATE
`FEE
`
`9 5
`X g
`x § 42 §
`+ §l40 §
`
`[
`
`x S 18 §
`x § 84 §
`+ $280 §
`
`TOTAL :
`
`s
`
`g:
`
`TOTAL :
`
`s
`
`:
`
`*
`**
`***
`
`[X]
`
`[ ]
`
`[X]
`
`1 is less than the entry in C01. 2, write “0" in C01. 3.
`If the entry in Co.
`If the "Highest: Number Previously Paid For" IN THIS SPACE is less than _20, write "20" in this space.
`If the "Highest Number Previously Paid For" IN THIS SPACE is less than 3, write "3" in this space.
`
`Also transmitted herewith are:
`[] Petition for one—month extension under 37 C.F.R. 1.136 (in duplicate)
`[X] Other: Eight sheets of drawings
`
`Check(s) in the amounts of $.00 is/are attached to cover:
`[]. Filing fee for additional claims under 37 C.F.R. 1.16
`[] Petition fee for one month extension under 37 C.F.R. 1.136
`[X] Other:
`
`The Assistant Commissioner is hereby authorized to charge payment of the following fees associated with this
`communication or credit any overpayment to Deposit Account No. 50-0552. A duplicate copy of this sheet is
`enclosed.
`
`[X]
`
`[X]
`[X]
`
`Any filing fee under 37 C.F.R. 1.16 for the presentation of additional claims which are not paid by
`check submitted herewith.
`
`Any patent application processing fees under 37 C. F. R. 1. 17.
`Any petition fees for extension under 37 C. F. R. 1. 136 which are not paid by check submitted herewith,
`and it is hereby requested that this be a petition for an aut
`tic
`tensio
`ime under 37 CFR
`
`1.136.
`
`DAVIDSON, AVIDSON & KAPPEL, LLC
`485 Seventh Avenue, 14"1 Floor
`New York, New York 10018
`(212) 736-1940
`
`I hereby certify that this correspondence and/or documents referred to
`as attached therein and/or fee are being deposited with the United
`States Postal Service as “first class mail" in an envelope addressed to
`Commissioner for Patents, PO. Box 1450, Alexandria, VA 22313-1450"
`on
`August 2, 2004
`.
`
`DAVIDSON, DAVIDSON & KAPPEL, LLC
`
`BY: 3‘W 8M
`
`Guendoline Decosta
`
`AUROBINDO EX. 1006, 14
`
`AUROBINDO EX. 1006, 14
`
`
`
`
`
`
`
` $225EE.3Ax252852-¢IFGE.AU.__$o<Eooao.....«.....Av5%EEESXz__>_mo&w_>_l.l2m2:
`
`J,
`
`i I
`
`METHODS FOR TREATING DIABETES
`VIA ADMINISTRATION OF CONTROLLE
`RELEASE METFORMIN
`Inventor:
`Xiu Xiu Cheng, et al.
`o.NmreSn.wta.wm.
`o.A
`09/705,625
`
`1 /8
`
`
`
`50z<”mt/A283%zm>mdz_2355:Lo830$MAE-29252628<22:2%:
`
`Ao_Aas$8mwsaooaomoAAUa9:8mxa:A252952to2955232
`
`
`
`vmFmw?mFNF9mmo
`
`ooom
`
`comm
`
`ooom
`
`com?
`
`ooow
`
`com
`
`(Tm/5U) 'ONOO VWSV‘Id
`
`AUROBINDO EX. 1006, 15
`
`AUROBINDO EX. 1006, 15
`
`
`
`
`\I
`METHODS FOR TREATING DIABETES
`VIA ADMINISTRATION OF CONTROLLED
`RELEASE METFORMIN
`Inventor:
`Xiu Xiu Cheng, et al.
`09/705,625
`Application Serial No.2
`
`I I
`
`2/53
`
`mGIEE:
`
`.39moémooao.............Emmm$5.3Ex2:585ng
`
`E225EE.3Exzsmommg.-¢-
`
` 3.39:OSxamo<E830mo:39:8mxsExz__>_moE_>_nozo:<m5_z_s_o<
`
`vmomorNFwv0
`
`ooom
`
`comm
`
`ooom
`
`oomv
`
`coo?
`
`com
`
`(“IN/5“) 'ONOO vwsv1d
`
`AUROBINDO EX. 1006, 16
`
`
`
`
`
`36E$523838E32:2_25385:nomflzoEmzpzoEEzmozoo<22:25:
`
`AUROBINDO EX. 1006, 16
`
`
`
`
`.
`
`:29229SE:552:3:53
`
`
`
`:39:OSX3bx25285.2no8mg50Egg:mm;8883
`
`
`
`
`
`ESE:5%z_zsmotmg”a34:95m_s_:-zo:<Ezmozoo329:;252
`
`MWfimM
`
`WEmm082082802
`
`
`
`mmggmowmmm
`
`Tm?
`
`Two?3www«Tmmmh1hFBMVNAS(
`mmmmmm82m,89m82%
`
`
`1-1)H.dwsmVWvEu8S8mmm02m02m02mWWam.mOIIIIIIIOIOIIIIOmwGawNNNWW90.nd0.nd
`
`222
`
`m.wt
`
`_EE:2E:EE:_g8mmaemoooooaON3amvo[IILI|[IILI|_
`FILIIILIILILIIrIILFFF
`
`
`
`AUROBINDO EX. 1006, 17
`
`AUROBINDO EX. 1006, 17
`
`
`
`
`B
`
`smELmm
`
`EmMv
`mmowWA
`NFnoANEmTTRmmw
`we
`RELEASE METFORMIN
`Inventor:
`Xiu Xiu Cheng, et al.
`Application Serial No.:
`
`09/705,625
`
`4/8
`
`J,
`J
`
`wGI
`
`
`
`vmom3NVwvoF|_ll|.lLlll||rll[lL|_
`
`comm
`
`ooom
`
`oomw
`
`('IUJ/BU) 'ONOO VWSV'ld
`
`
`
`
`
`m©<Ia0030Ib.I._.xz__>_mo“:.m=>_lolEE:
`
`AUROBINDO EX. 1006, 18
`
`
`
`
`
`
`
`
`
`moEmzzEI.:>>dc9c89xE._.xz__>_mou_._.m_>_u_ommmoo._<m_om._n=._..5_>_mmE<‘
`
`9%;vm83.39:82x:mgiooae88
`
`
`
`
`
`
`
`Ammusmkzm_._.<n_$5922_z__2mou_._.m_2n_omm.__.._omn_m§_.¢zo_._.<m._.2m_ozoo<_>_w<._n_m._.<._.w->o<m:.mz<m=>_
`
`
`
`
`
`
`
`AUROBINDO EX. 1006, 18
`
`
`
`
`MVRMA
`
`wmxmm
`
`TNm.
`mmmmmmmTamm
`
`flMMMmoo
`
`momm
`
`mm5
`
`HEIIIJ0:
`mmmmwa:
`mm9w2:
`3%:m.®\n\EgoEmaSawaONaewvo_|l._rll.|_|.l|h|x|_lll|_|_
` fins
`
`
`mgiooaoI¢-finsEx252852Iol
`
`
`
`
`
`It;5%szto9%;vEE8E8;EFZEEEEZS$830<22:25:
`
`3.:me82x:mo<_._n_83@mo£225£3382xuExzsmofiz
`
`8m
`
`8N
`
`8N
`
`as
`
`(1p/Bw) 'ONOO asoomo VWSV‘Id
`
`AUROBINDO EX. 1006, 19
`
`AUROBINDO EX. 1006, 19
`
`
`
`
`
`
`mmjiomazOEjOme_o_._z_§mon_._.m__>_
`
`
`
`
`
`'09
`
`amxmm.w
`
`
`
`.Ndom22mcan.0
`mommomV60myWNF,00
`”NW?8nEDMho.8NRTRCN/I.TOulHmemm6aOTEue00_II
`SWEmVwwmmwSmAmmmom3EMEDVVW
`
`.GMVRMA\m
`
`
`02.32_£92._.<m._oo<n_
`
`o9
`
`020
`
`95%till.
`
`mGE
`
`959.5%:
`
`AUROBINDO EX. 1006, 20
`
`AUROBINDO EX. 1006, 20
`
`
`
`
`METHODS FOR TREATING DIABETES
`VIA ADMINISTRATION OF CONTROLLED
`RELEASE METFORMIN
`Inventor:
`Xiu Xiu Cheng, et aI.
`Application Serial No.:
`09/705,625
`
`
`
`mfimoEzo_§owwaa:zsmotms.
`
`7H
`m0vW.
` 2%z_.5922SEE
`
`be
`
`02we
`
`8Ew8xG
`
`28:52:
`
`822mo
`
`AUROBINDO EX. 1006, 21
`
`o
`
`amm
`
`AUROBINDO EX. 1006, 21
`
`
`
`
`”I
`
`om
`
`285m2:2em
`
`9:82+
`
`m.wE
`
`METHODS FOR TREATING DIABETES
`VIA ADMINISTRATION OF CONTROLLE
`RELEASE METFORMIN
`Inventor:
`Xiu Xiu Cheng, et al.
`Application Serial No.:
`09/705,625
`
`8/8
`
`
`
`mflmoE2838236:23285:
`
`2%2_SEE585
`
`
`
`CO
`VN
`
`om
`
`(%) Gasvsnaa iNnOWV
`
`AUROBINDO EX. 1006, 22
`
`AUROBINDO EX. 1006, 22
`
`
`
`
`
`1.
`.
`*RETURN TO FMF - LOCATION 7540
`
`TL}; C &?‘
`PC';
`
`‘
`
`QUERY CONTROL FORM
`
`
`
`
`Application No. 0? - Q5 26/
`Examiner-GAU
`l l: 2 Q __
`[é (i
`
`
`Prepared by
`Date
`No. of queries
`
`' 11
`[bflflf
`It i
`m—
`
`
`a. Serial No.
`f. Foreign Priority
`k. Print Claim(s)
`p. PTO-1449
`b. Applicant(s)
`9. Disclaimer
`l. Print Fig.
`q. PTOL-85b
`
`c. Continuing Data
`h. Microfiche Appendix
`m. Searched Column
`r. Abstract
`
`d. PCT
`i. Title
`n. PTO-270/328
`@sheets/Figs
`
`e. Domestic Priority
`j. Claims Allowed
`0. PTO-892
`t. Other
`
`
`
`
`
`
`
`
`
`#999 Duplicate Text
`
`
`
`SPECIFICATION
`
`
`a. Page Missing
` b. Text Continuity
` Holes through Data
`
`Other Missing Text
`
`lllegible Text
`
`Brief Description
`
`sq:. Sequence Listing
`
`Appendix
`
`
`'. Amendments
`
` _. Other
`
`
`. Claim(s) Missing
`
`Improper Dependency
`9.0.0
` Duplicate Numbers
`Incorrect Numbering
` .0
`Index Disagrees
`. Punctuation
`
`
`
`. Amendments
`
`. Bracketing
` Missing Text
` j. Duplicate Text
`
`. Other
`
`
`
`CLAIMS
`
`E5 (Rev. 10/15/02)
`
`
`*LOCATION 7540
`
`AUROBINDO EX. 1006, 23
`
`AUROBINDO EX. 1006, 23
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND
`DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`APPLICATION NUMBER
`
`F