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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
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`APOTEX INC. and APOTEX CORP.,
`Petitioners,
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`v.
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`AUSPEX PHARMACEUTICALS, INC.,
`Patent Owner.
`_________________________________________________
`
`
`Case IPR2021-01507
`Patent 8,524,733
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`_________________________________________________
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`PATENT OWNER’S MANDATORY NOTICES
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`Pursuant to 37 C.F.R. § 42.8, Patent Owner Auspex Pharmaceuticals, Inc.
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`respectfully submits the following Mandatory Notices.
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`I.
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`REAL PARTIES IN INTEREST
`Auspex Pharmaceuticals, Inc. is the real party-in-interest. Out of an
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`abundance of caution, the Patent Owner further identifies Teva Branded
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`Pharmaceutical Products R&D, Inc. as a real party-in-interest for the purposes of
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`providing notice in this IPR proceeding.
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`II. RELATED MATTERS
`The Patent Owner identifies the following U.S. Patent applications and
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`judicial matter that relate to U.S. Patent Application No. 12/562,261, which issued
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`as U.S. Patent No. 8,524,733:
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`• U.S. Patent Application No. 61/097,896, filed September 18, 2008, and
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`now expired, is a provisional application from which U.S. Patent
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`Application No. 12/562,261, which issued as U.S. Patent No.
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`8,524,733, claims the benefit of priority.
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`• U.S. Patent Application No. 13/934,960, filed July 3, 2013, and now
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`abandoned, is a patent application that claims the benefit of priority
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`1
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`from U.S. Patent Application No. 12/562,261, which issued as U.S.
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`Patent No. 8,524,733.
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`• U.S. Patent No. 8,524,733 is the subject of a patent infringement
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`lawsuit filed in the District of New Jersey in Civil Action No. 3:21-cv-
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`13240, Teva Branded Pharmaceutical Products R&D, Inc. et al. v.
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`Aurobindo Pharma Ltd. et al.
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`The Patent Owner does not concede that any of the above-identified
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`applications and judicial matter, aside from U.S. Patent No. 8,524,733, would affect,
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`or be affected by, a decision in the present proceeding.
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`III. COUNSEL
`The Patent Owner provides the following designation of counsel:
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`Lead Counsel
`David I. Berl
`Williams & Connolly LLP
`725 12th St NW
`Washington, DC 20005
`Phone: 202-434-5491
`Fax: 202-434-5029
`dberl@wc.com
`USPTO Registration No: 72,751
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`Backup Counsel
`Thomas S. Fletcher
`Williams & Connolly LLP
`725 12th St NW
`Washington, DC 20005
`Phone: 202-434-5497
`Fax: 202-434-5029
`tfletcher@wc.com
`USPTO Registration No: 72,383
`Backup Counsel
`Shaun P. Mahaffy
`Williams & Connolly LLP
`725 12th St NW
`Washington, DC 20005
`Phone: 202-434-5554
`Fax: 202-434-5029
`smahaffy@wc.com
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`2
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`USPTO Registration No. 75,534
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`A Power of Attorney for the Patent Owner is being filed concurrently with
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`these Mandatory Notices.
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`IV. SERVICE INFORMATION
`The Patent Owner requests that all postal correspondence be addressed to lead
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`counsel at the address shown above. The Patent Owner also consents to electronic
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`service by email to TevaAustedo@wc.com.
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`September 29, 2021
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`/s/ David I. Berl
`David I. Berl (Reg. No. 72,525)
`Thomas S. Fletcher (Reg. No. 72,383)
`Shaun P. Mahaffy (Reg. No. 75,534)
`Williams & Connolly LLP
`725 Twelfth Street NW
`Washington, DC 20005
`202-434-5000 (Telephone)
`202-434-5029 (Facsimile)
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies that a true
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`and correct copy of the foregoing was served on September 29, 2021, by delivering
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`a copy via electronic mail on the following counsel of record for the Petitioner:
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`Vishal Gupta
`STEPTOE & JOHNSON LLP
`1114 Avenue of the Americas
`New York, NY 10036
`212-506-3900 (Telephone)
`212-506-3950 (Facsimile)
`SJDeutetrabenazineIPR@steptoe.com
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`September 29, 2021
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`/s/ David I. Berl
`David I. Berl (Reg. No. 72,525)
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`4
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