`
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`Apotex, Inc.,
`
`Petitioner,
`
`v.
`
`UCB BIOPHARMA SPRL
`
`Patent Owner.
`______________
`
`Case IPR2019-00400
`U.S. Patent No. 8,633,194
`Title: Pharmaceutical composition of piperazine derivatives
`______________
`
`
`PATENT OWNER MANDATORY NOTICE INFORMATION UNDER 37
`C.F.R. § 42.8
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`IPR2019-00400
`Patent 8,633,194 B2
`Pursuant to 37 C.F.R. § 42.8(a)(3), Patent Owner, UCB Biopharma Sprl
`
`(“UCB”), hereby files its Mandatory Notices:
`
`A. Real Party-in-Interest (§ 42.8(b)(1))
`The following real parties-in-interest are identified: UCB Biopharma Sprl,
`
`UCB, Inc., UCB Pharma S.A., UCB S.A, and UCB Manufacturing Inc.
`
`B. Related Matters (§ 42.8(b)(2))
`Patent owner is aware of the following district court litigations involving the
`
`’194 patent: UCB, Inc. et al. v. Apotex Inc., No. 0-18-cv-60846 (S.D. Fla.); and
`
`UCB, Inc. et al. v. Apotex Inc., 1:18-cv-03404 (S.D.N.Y.). Case No. 0-18-cv-
`
`60846 is currently pending. Case No. 1:18-cv-03404 has been voluntarily
`
`dismissed.
`
`C. Counsel and Service Information (§§ 42.8(b)(3) and (4))
`Patent owner identifies its lead and backup counsel as shown below:
`
`Lead Counsel
`James S. Trainor
`FENWICK & WEST LLP
`902 Broadway, Suite 14
`New York, NY 10010
`(212) 921-2001 (tel)
`(650) 938-5200 (fax)
`jtrainor@fenwick.com
`USPTO Reg. No. 52,297
`
`Backup Counsel
`Robert E. Counihan
`FENWICK & WEST LLP
`902 Broadway, Suite 14
`New York, NY 10010
`(212) 921-2001 (tel)
`(650) 938-5200 (fax)
`rcounihan@fenwick.com
`USPTO Reg. No. 61,382
`
`Erica R. Sutter
`FENWICK & WEST LLP
`801 California St.
`Mountain View, CA 94041
`
`
`
`2
`
`10253646.10
`
`
`
`IPR2019-00400
`Patent 8,633,194 B2
`
`(650) 988-8500 (tel)
`(650) 938-5200 (fax)
`esutter@fenwick.com
`USPTO Reg. No. 77,450
`Please address all correspondence to the lead and backup counsel at the
`
`above addresses and to UCBXyzal@fenwick.com. Patent Owner consents to
`
`electronic service to the e-mail addresses above for lead and back-up counsel and
`
`to UCBXyzal@fenwick.com.
`
`D.
`Patent Owner Preliminary Response
`Patent Owner reserves the right to file a preliminary response at a separate
`
`date.
`
`E.
`Patent Owner Power of Attorney
`A Power of Attorney to transact all business in the United States Patent and
`
`Trademark office in connection with above-referenced Inter Partes Review from
`
`Patent Owner UCB Biopharma Sprl to the above-designated counsel at Fenwick &
`
`West LLP is being filed concurrently with these Mandatory Notices.
`
`
`
`Dated: January 3, 2019
`
`
`
`
`
`Respectfully submitted,
`
`/s/ James S. Trainor
`James S. Trainor (Reg. No. 52,297)
`Robert E. Counihan (Reg. No. 61,382)
`FENWICK & WEST LLP
`902 Broadway, Suite 14
`New York, NY 10010
`(212) 921-2001
`
`
`
`3
`
`10253646.10
`
`
`
`IPR2019-00400
`Patent 8,633,194 B2
`
`jtrainor@fenwick.com
`rcounihan@fenwick.com
`
`Erica R. Sutter (Reg. No. 77,450)
`FENWICK & WEST LLP
`801 California Street
`Mountain View, CA 94041
`(650) 988-8500
`esutter@fenwick.com
`
`Counsel for UCB Biopharma Sprl
`
`
`
`4
`
`10253646.10
`
`
`
`IPR2019-00400
`Patent 8,633,194 B2
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6 and 42.105, I hereby certify that on this 3rd day
`
`of January, 2019, the foregoing Patent Owner Mandatory Notice Information Under
`
`37 C.F.R. § 42.8 and the associated Power of Attorney document were served on
`
`January 3, 2019, by filing this document through the Patent Trial and Appeal Board
`
`End to End System, as well as delivering a copy via electronic mail upon the
`
`following attorneys of record for the Petitioner:
`
`Jitendra Malik, Ph.D.
`Alissa M. Pacchioli
`Joseph M. Janusz
`Katten Muchin Rosenman LLP
`550 S. Tryon Street, Suite 2900
`Charlotte, NC 28202-4213
`jitty.malik@kattenlaw.com
`alissa.pacchioli@kattenlaw.com
`joe.janusz@kattenlaw.com
`
`Lance Soderstrom
`Katten Muchin Rosenman LLP
`575 Madison Avenue
`New York, NY 10022-2585
`lance.soderstrom@kattenlaw.com
`
`
`Date: January 3, 2019
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/s/ James S. Trainor (Electronically signed)
`James S. Trainor (Reg. No. 52,297)
`
`Counsel for UCB Biopharma Sprl
`
`
`
`10477012.2
`
`
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