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Paper No.6
`Filed: November 21, 2023
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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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`SUN PHARMACEUTICAL INDUSTRIES LTD.
`and
`SUN PHARMACEUTICAL INDUSTRIES, INC.,
`Petitioners,
`v.
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`NOVO NORDISK A/S,
`Patent Owner.
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`U.S. Patent No. 10,335,462 to Jensen
`Issue Date: July 2, 2019
`Title: Use of Long-Acting GLP-1 Peptides
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`Inter Partes Review No. IPR2024-00107
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`PETITIONER’S UPDATED MANDATORY NOTICE
`UNDER 37 C.F.R. 42.8(a)(3)
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`Pursuant to 37 C.F.R. § 42.8(a)(3), the undersigned on behalf of and acting in
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`a representative capacity for Sun Pharmaceutical Industries Ltd. and Sun
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`Pharmaceutical Industries Inc. (collectively “Petitioner”), hereby submits the
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`following mandatory change-of-information notices in connection with the petition
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`for inter partes review of U.S. Patent No. 10,335,462, Case IPR2024-00107, to
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`remove Mr. Christopher W. West as backup counsel for Petitioner.
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`A. Real Parties-In-Interest
`In accordance with 37 C.F.R. § 42.8(b)(1), the real parties-in-interest for
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`Petitioner are Sun Pharmaceutical Industries Ltd. and Sun Pharmaceutical Industries
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`Inc.
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`B. Related Matters
`In accordance with 37 C.F.R. § 42.8(b)(2), Petitioner is not aware of any
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`reexamination certificates or pending prosecution concerning the ’462 patent.
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`Petitioner is a defendant in the following consolidated litigation involving the ’462
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`patent:
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`• Novo Nordisk Inc. and Novo Nordisk A/S v. Sun Pharmaceutical
`Industries Ltd. and Sun Pharmaceutical Industries, Inc., No. 1:22-cv-
`00296 (D. Del.) (transferred to MDL on August 5, 2022);
`• In re Ozempic (Semaglutide) Patent Litigation, No. 22-md-3038-CFC
`(D. Del.); and
`• Novo Nordisk Inc. and Novo Nordisk A/S v. Rio Biopharmaceuticals,
`Inc. et al., No. 1:22-cv-00294 (D. Del.);
`In addition, the following litigations also involve the ’462 patent:
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`2
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`• Novo Nordisk Inc. v. Aurobindo Pharma USA, Inc., No. 1:22-cv-00295
`(D. Del.) (dismissed on March 28, 2022);
`• Novo Nordisk Inc. v. Rio Biopharmaceuticals, Inc., No. 1:22-cv-00294
`(D. Del.);
`• Novo Nordisk A/S v. Sun Pharm. Indus. Ltd., No. 1:22-cv-00296 (D.
`Del.);
`• Novo Nordisk Inc. v. Zydus Worldwide DMCC, No. 1:22-cv-00297 (D.
`Del.);
`• Novo Nordisk Inc. v. Mylan Pharms. Inc., No. 22-cv-01040-CFC (D.
`Del.)
`• Novo Nordisk Inc. v. Dr. Reddy’s Laby’s Ltd., No. 1:22-cv-00298 (D.
`Del.); and
`• Novo Nordisk Inc. v. Alvogen, Inc., No. 1:22-cv-00299 (D. Del.).
`Petitioner is not aware of any other pending litigation, or any pending
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`proceedings in front of the Patent Trial and Appeal Board except for Mylan
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`Pharmaceuticals Inc. v. Novo Nordisk A/S, Case No. IPR2023-00724 and Dr.
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`Reddy’s Laboratories, Inc. and Dr. Reddy’s Laboratories, Ltd. v. Novo Nordisk A/S,
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`Case No. IPR2024-00009.
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`C.
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`Identification of Counsel (37 C.F.R. § 42.8(b)(3))
`Lead Counsel
`Back-Up Counsel
`Christopher B. Ferenc
`Brian Sodikoff
`Reg No. 59,365
`Reg No. 54,697
`Katten Muchin Rosenman LLP
`Katten Muchin Rosenman LLP
`1919 Pennsylvania Ave., N.W.
`525 West Monroe Street
`Suite 800
`Chicago, IL 60661
`Washington, DC 20006
`Phone: (312) 902-5200
`Phone: (202) 625-3500
`Email: brian.sodikoff@katten.com
`Email: christopher.ferenc@katten.com
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`D.
`Service Information (37 C.F.R. § 42.8(b)(4))
`Petitioner respectfully requests all correspondence be directed to lead counsel
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`and back-up counsel at the contact information provided above.
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`Respectfully submitted,
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`Dated: November 21, 2023
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` By: /Brian Sodikoff/
`Brian Sodikoff
`Reg No. 54,697
`KATTEN MUCHIN ROSENMAN LLP
`525 West Monroe Street
`Chicago, IL 60661
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` Counsel for Petitioner
`Sun Pharmaceutical Industries Ltd. and
`Sun Pharmaceuticals Industries, Inc.
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`CERTIFICATE OF SERVICE
`The undersigned certifies that the foregoing Petitioner’s Updated Mandatory
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`Notice under 37 C.F.R. 42 were served on Patent Owner as follows:
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`J. Steven Baughman - steve.baughman@groombridgewu.com
`Megan Raymond - megan.raymond@groombridgewu.com
`Novo-Semaglutide-IPR@groombridgewu.com
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`Dated: November 21, 2023
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`By: /Brian Sodikoff/
`Brian Sodikoff
`Reg No. 54,697
`KATTEN MUCHIN ROSENMAN LLP
`525 West Monroe Street
`Chicago, IL 60661
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`Counsel for Petitioner
`Sun Pharmaceutical Industries Ltd. and
`Sun Pharmaceuticals Industries, Inc.
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`5
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