`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Biocon Pharma Limited
`Petitioner,
`
`v .
`
`Novartis Pharmaceuticals Corporation
`Patent Owner.
`
`U.S. Patent No. 8,101,659 to Ksander et al.
`Issue Date: January 24, 2012
`Title: Methods of Treatment and Pharmaceutical Composition
`
`Inter Partes Review No.: IPR2020-01263
`
`PETITIONER’S CORRECTED EXHIBIT
`LIST AS OF AUGUST 10, 2020
`
`145444049v1
`145444049v1
`
`
`
`Exhibit #
`
`Description
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`1008
`
`1009
`
`1010
`
`U.S. Patent No. 8,101,659 (“the ’659 patent”)
`
`EP Patent Application No. 0726072A2 (“EP’072”)
`
`Trippodo et al., “REPRESSION OF ANGIOTENSIN II AND
`POTENTIATION OF BRADYKININ CONTRIBUTE TO THE
`SYNERGISTIC EFFECTS OF DUAL METALLOPROTEASE
`INHIBITION IN HEART FAILURE”, Journal of Pharmacology
`and Experimental Therapeutics, Vol. 272, No. 2, February 01, 1995,
`619-627 (“Trippodo”)
`Shetty et al., “DIFFERENTIAL INHIBITION OF THE
`PREJUNCTIONAL ACTIONS OF ANGIOTENSIN II IN RAT
`ATRIA BY VALSARTAN, IRBESARTAN, EPROSARTAN,
`AND LOSARTAN”, Journal of Pharmacology and Experimental
`Therapeutics, Vol. 294, No. 1, July 01, 2000, 179-186 (“Shetty”)
`Gomez-Monterrey et al., “NEW THIOL INHIBITORS OF
`NEUTRAL ENDOPEPTIDASE EC 3.4.24.11: SYNTHESIS AND
`ENZYME ACTIVE-SITE RECOGNITION”, Journal of Medicinal
`Chemistry, Vol. 37, Issue 12, June 01, 1994, 1865–1873. (“Gomez-
`Monterrey”)
`Ksander et al., “DICARBOXYLIC ACID DIPEPTIDE NEUTRAL
`ENDOPEPTIDASE INHIBITORS”, Journal of Medicinal
`Chemistry, Vol. 38, Issue 10, May 01, 1995, 1689–1700
`(“Ksander”)
`Reserved
`U.S. Patent No. 5,399,578 (“the ’578 patent”)
`
`U.S. Patent No. 5,217,996 (“the ’996 patent”)
`
`The prosecution history for U.S. Patent No. 8,101,659 (“the ’659
`prosecution history”)
`
`145444049v1
`145444049v1
`
`2
`
`
`
`Exhibit #
`
`1011
`
`1012
`1013
`
`1014
`1015
`
`1016
`
`1017
`
`1018
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`Description
`
`Thurmann, “VALSARTAN: A NOVEL ANGIOTENSIN TYPE 1
`RECEPTOR ANTAGONIST,” Expert Opinion on
`Pharmacotherapy, Vol. 1, Issue 2, January 2000, 337-350
`(“Thurmann”)
`Physician’s Desk Reference (2000), DIOVAN® (“PDR”)
`Roques, et al., “NEUTRAL ENDOPEPTIDASE 24.11:
`STRUCTURE, INHIBITION, AND EXPERIMENTAL AND
`CLINICAL PHARMACOLOGY,” Pharmacological Reviews, Vol.
`45, Issue 1, March 01 1993, 87-146.
`U.S. Patent No. 7,468,390 (“the ’390 patent”)
`The prosecution history for U.S. Patent No. 7,468,390 (“the ’390
`prosecution history”)
`
`Ferrario, et al., “COUNTERREGULATORY ACTIONS OF
`ANGIOTENSIN,” Hypertension, Vol. 30, Issue 3, September 1997,
`535-541 (“Ferrario”)
`Orange Book Entry for ENTRESTO® (“Orange Book listing for
`ENTRESTO”)
`Declaration and Curriculum Vitae of Prof. Y.W. Francis Lam
`Physician’s Desk Reference (2000), NORVASC® (“PDR-
`NORVASC”)
`Physician’s Desk Reference (2000), TENORMIN® (“PDR-
`TENORMIN”)
`Physician’s Desk Reference (2000), TAGAMET® (“PDR-
`TAGAMET”)
`Physician’s Desk Reference (2000), LANOXIN® (“PDR-
`LANOXIN”)
`Physician’s Desk Reference (2000), Furosemide (“PDR-
`Furosemide”)
`Physician’s Desk Reference (2000), MICRONASE® (“PDR-
`MICRONASE”)
`
`145444049v1
`145444049v1
`
`3
`
`
`
`Exhibit #
`
`1025
`
`1026
`
`Description
`
`Physician’s Desk Reference (2000), HydroDIURIL® (“PDR-
`HydroDIURIL”)
`Physician’s Desk Reference (2000), INDOCIN® (“PDR-
`INDOCIN”)
`
`145444049v1
`145444049v1
`
`4
`
`
`
`CERTIFICATION OF SERVICE ON PATENT OWNER
`Pursuant to 37 C.F.R. §§ 42.6(e), 42.8(b)(4), and 42.105, the undersigned
`
`certifies that on August 10, 2020, a complete copy of the Updated Exhibit List, and
`
`all supporting exhibits were served via Express Mail to the Patent Owner by serving
`
`the correspondence address of record for the ’659 patent:
`
`Nicholas N. Kallas
`Christina Schwarz
`Jared L. Stringham
`Christopher E. Loh
`VENABLE LLP
`1290 Avenue of the Americas
`New York, New York 10104
`(212) 218-2100
`nkallas@venable.com
`cschwarz@venable.com
`jlstringham@venable.com
`cloh@venable.com
`
`David Kurlandsky
`Joseph T. Majka
`Novartis Pharmaceuticals Corporation
`Intellectual Property Department
`One Health Plaza 433/2
`East Hanover, NJ
`07936-1080
`
`Respectfully submitted,
`Katten Muchin Rosenman LLP
`
`By: /Christopher B. Ferenc/
`Christopher B. Ferenc
`Reg. No. 59,365
`
`145444049v1
`145444049v1
`
`5
`
`
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