UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`EYENOVIA, INC.,
`Petitioner,
`
`v.
`
`SYDNEXIS, INC.,
`Patent Owner.
`
`Case IPR2022-00415
`U.S. Patent No. 10,888,557
`
`PETITIONER’S UPDATED MANDATORY NOTICES
`PURSUANT TO 37 C.F.R. § 42.8(A)(3)
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`
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`Case No. IPR2022-00415
`Patent No. 10,888,557
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`In accordance with 37 C.F.R. § 42.8(a)(3), Petitioner Eyenovia, Inc. provides
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`the following updates to its mandatory notices:
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`I.
`
`II.
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`Real Party-In-Interest
`No change.
`
`Related Matters
`Sydnexis U.S. Patent No. 10,888,557 (the “’557 patent”) issued from U.S.
`
`application No. 16/785,413 which is a continuation of U.S. application No.
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`16/677,538 (the “’538 application”). The ’538 application, filed Nov. 7, 2019, is
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`currently pending and is a continuation of application number 15/568,381 (the “’381
`
`application”) which is a United States National Phase Application of International
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`Application No. PCT/US2016/029222, filed Apr. 25, 2016, which is a continuation-
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`in-part of PCT/US2015/37249, filed June 23, 2015, which is a continuation-in-part
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`of U.S. Application No. 14/726,139 (the “’139 application”), filed May 29, 2015,
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`and issued as U.S. Patent No. 9,421,199 (the “’199 patent”).
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`Sydnexis is also the owner of the following U.S. patents related to the ’557
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`patent. Sydnexis U.S. Patent No. 10,842,787 (the “’787 patent”) issued from the ’381
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`application. Sydnexis U.S. Patent No. 10,940,145 (the “’145 patent”) issued from
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`U.S. application No. 16/785,418, filed February 7, 2020, which is a continuation of
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`the ’538 application. U.S. Patent No. 9,770,447 (the “’447 patent”) issued from U.S.
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`Application No. 15/208,537 (the “’537 application”), filed July 12, 2016, which is a
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`Case No. IPR2022-00415
`Patent No. 10,888,557
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`continuation of the ’139 application. U.S. Application No. 15/661,816 (the “’816
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`application”), filed July 27, 2017, is a continuation of the ’537 application and issued
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`as U.S. Patent No. 10,076,515 (the “’515 patent”). U.S. Application No. 15/895,933
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`(the “’933 application”), filed February 13, 2018, is a continuation of the ’816
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`application and issued as U.S. Patent No. 10,201,534 (the “’534 patent”).
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`Further, Sydnexis is the owner of the following pending U.S. applications
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`related to the ’557 patent. U.S. Application No. 17/097,930 is pending and claims
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`benefit of priority to U.S. Application No. 16/224,286, filed December 18, 2018, and
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`issued as U.S. Patent No. 10,864,208, which is a continuation of the ’933 application.
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`Additionally, U.S. Application Nos. 16/785,411 filed on February 7, 2020,
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`16/908,426 filed on June 22, 2022, 17/681,560 filed on February 25, 2022,
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`17/721,838 filed on April 15, 2022, and 17/721,831 filed on April 15, 2022 are all
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`pending and claim priority to the ’139 application.
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`Nevakar, Inc. filed IPR2021-00439 challenging claims of the ’199 patent on
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`February 3, 2021, IPR2021-00440 challenging claims of the ’447 patent on February
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`17, 2021, IPR2021-00441 challenging claims of the ’515 patent on March 3, 2021,
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`and IPR2021-00442 challenging claims of the ’534 patent on March 18, 2021. All
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`of those proceedings were terminated prior to any institution decisions or patent
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`owner preliminary responses.
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`Case No. IPR2022-00415
`Patent No. 10,888,557
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`Petitioner filed IPR2022-00384 on December 29, 2021 challenging claims of
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`the ’787 patent. Petitioner also filed IPR2022-00414 on January 7, 2022, challenging
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`claims of the ’145 patent. In addition, Petitioner filed IPR2022-00963, IPR2022-
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`00964, IPR2022-00965, and IPR2022-00966 on May 3, 2022 challenging claims of
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`the ’199 patent, ’447 patent, ’515 patent, and ’534 patent respectively. All of those
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`proceedings are currently pending.
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`Petitioner is not aware of any other administrative or judicial proceedings that
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`may affect or be affected by a decision in this proceeding.
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`III. Lead and Back-Up Counsel
`No change.
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`IV.
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`Service Information
`No change.
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`Case No. IPR2022-00415
`Patent No. 10,888,557
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`Dated: July 19, 2022
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`Respectfully submitted,
`
`/Peter J. Cuomo/
`Peter J. Cuomo (Reg. No. 58,481)
`Thomas H. Wintner (pro hac vice to be
`filed)
`Williams S. Dixon (Reg. No. 78,346)
`MINTZ, LEVIN, COHN, FERRIS,
`GLOVSKY AND POPEO, P.C.
`One Financial Center
`Boston, MA 02111
`Telephone: 617-348-1854
`Facsimile: 617-542-2241
`Email: PJCuomo@mintz.com
`TWintner@mintz.com
`WSDixon@mintz.com
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`Case No. IPR2022-00415
`Patent No. 10,888,557
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`CERTIFICATE OF SERVICE
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`I certify that a copy of Petitioner’s Updated Mandatory Notices was served by
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`electronic mail on the following counsel of record:
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`Lead Counsel
`Michael T. Rosato (Reg. No. 52,182)
`WILSON SONSINI GOODRICH &
`ROSATI
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104-7036
`Telephone: (206) 883-2529
`Facsimile: (206) 883-2699
`Email: mrosato@wsgr.com
`
`Backup Counsel
`Lora M. Green (Reg. No. 43,541)
`WILSON SONSINI GOODRICH &
`ROSATI
`1700 K Street, NW, Fifth Floor
`Washington, D.C. 20006-3817
`Telephone: (202) 791-8012
`Facsimile: (202) 973-8899
`Email: lgreen@wsgr.com
`
`Backup Counsel
`Michael J. Hostetler (Reg. No. 47,664)
`WILSON SONSINI GOODRICH &
`ROSATI
`139 Townsend Street, Suite 150
`San Francisco, CA 94107-1946
`Telephone: (858) 350-2306
`Facsimile: (866) 974-7329
`Email: mhostetler@wsgr.com
`
`Backup Counsel
`Jad A. Mills (Reg. No. 63,344)
`WILSON SONSINI GOODRICH &
`ROSATI
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104-7036
`Telephone: (206) 883-2554
`Facsimile: (206) 883-2699
`Email: jmills@wsgr.com
`
`Dated: July 19, 2022
`
`/Peter J. Cuomo/
`Peter J. Cuomo (Reg. No. 58,481)
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