`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`MONOSOL RX, LLC
`Petitioner
`v.
`ICOS CORPORATION
`Patent Owner
`______________________
`
`IPR2017-00412
`Patent No. 6,943,166
`______________________
`
`
`PATENT OWNER’S UPDATED MANDATORY NOTICES
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-00412
`Patent No. 6,943,166
`
`Pursuant to 37 C.F.R. § 42.8(a)(3), Patent Owner, ICOS Corporation, hereby
`
`submits the following updated mandatory notices providing an update on the status
`
`of the Related Matters.
`
`I.
`
`ICOS CORPORATION’S MANDATORY NOTICES
`
`A. Related Matters
`
`The following district court actions were filed by Eli Lilly and Company and
`
`ICOS Corporation, in the United States District Court for the Eastern District of
`
`Virginia, seeking a judgment that the claims of U.S. Patent 6,943,166 were valid
`
`and infringed. The actions were consolidated for pretrial proceedings under the
`
`lead case, Eli Lilly & Co. v. Actavis Laboratories UT, Inc., l:16-cv-01119-AJT-
`
`MSN. The district court entered Consent Judgments against each Defendant in
`
`each of these proceedings:
`
`• Eli Lilly & Co. v. Accord Healthcare, Inc., No. 1:16-cv-01352;
`
`• Eli Lilly & Co. v. Actavis Laboratories UT, Inc., No. 1:16-cv-01119;
`
`• Eli Lilly & Co. v. Ajanta Pharma, Ltd., No. 1:17-cv-00020;
`
`• Eli Lilly & Co. v. Alembic Pharmaceuticals Ltd., No. 1:16-cv-01120;
`
`• Eli Lilly & Co. v. Apotex, Inc., No. 3:16-cv-00941;
`
`• Eli Lilly & Co. v. Aurobindo Pharma Ltd., No. 1:16-cv-01121;
`
`• Eli Lilly & Co. v. Cipla Ltd., No. 1:16-cv-01208;
`
`2
`
`
`
`• Eli Lilly & Co. v. Mylan Pharms. Inc., No. 1:16-cv-01122;
`
`IPR2017-00412
`Patent No. 6,943,166
`
`
`• Eli Lilly & Co. v. Sun Pharm. Indus., Ltd., No. 2:16-cv-00518;
`
`• Eli Lilly & Co. v. Teva Pharms. USA Inc., No. 2:16-cv-00519; and
`
`• Eli Lilly & Co. v. Zydus Pharms. (USA) Inc., No. 2:16-cv-00520.
`
`Eli Lilly & Co. v. Hetero USA, Inc., No. 2:17-cv-01951, was filed on March
`
`24, 2017, in the United States District Court for the District of New Jersey seeking
`
`a judgment that the claims of U.S. Patent 6,943,166 are valid and infringed. A
`
`Consent Judgment was entered against Hetero USA, Inc. on May 8, 2017.
`
`Eli Lilly & Co. v. Dr. Reddy’s Laboratories, Inc., No. 3:17-cv-02541, was
`
`filed on April 13, 2017, in the United States District Court for the District of New
`
`Jersey seeking a judgment that the claims of U.S. Patent 6,943,166 are valid and
`
`infringed.
`
`Eli Lilly & Co. v. Macleods Pharma USA, Inc., No. 3:17-cv-05087, was filed
`
`on July 12, 2017, in the United States District Court for the District of New Jersey
`
`seeking a judgment that the claims of U.S. Patent 6,943,166 are valid and
`
`infringed.
`
`IntelGenX Corp. v. ICOS Corp., IPR2016-00678, was filed on February 2,
`
`2016, before the Patent Trial and Appeal Board, seeking cancelation of Claims 1-
`
`12 of U.S. Patent 6,943,166. Institution was denied on September 1, 2016. The
`
`proceeding was terminated by Order November 29, 2016.
`
`3
`
`
`
`Mylan Pharmaceuticals Inc. v. ICOS Corp., IPR2017-00323, was filed on
`
`IPR2017-00412
`Patent No. 6,943,166
`
`
`November 22, 2016, before the Patent Trial and Appeal Board, seeking cancelation
`
`of Claims 1-12 of U.S. Patent 6,943,166. Institution was granted on June 12, 2017,
`
`and a joint motion to terminate the proceedings was filed by the parties on July 7,
`
`2017.
`
`Argentum Pharmaceuticals LLC v. ICOS Corp., IPR2017-01762, was filed
`
`on July 12, 2017, before the Patent Trial and Appeal Board, seeking cancelation of
`
`Claims 1-12 of U.S. Patent 6,943,166. Argentum filed a Motion for Joinder with
`
`this IPR.
`
`Dr. Reddy’s Laboratories, Inc. v. ICOS Corp., IPR2017-01757, was filed on
`
`July 10, 2017, before the Patent Trial and Appeal Board, seeking cancelation of
`
`Claims 1-12 of U.S. Patent 6,943,166. Dr. Reddy’s filed a Motion for Joinder with
`
`this IPR.
`
`Patent Owner is unaware of any other related matters that would affect or be
`
`affected by this proceeding.
`
`
`
`
`
`
`
`
`
`4
`
`
`
`The undersigned counsel welcomes a telephone call should the Office have
`
`IPR2017-00412
`Patent No. 6,943,166
`
`
`any requests or questions.
`
`
`
`
`
`
`
`
`
`Dated: July 31, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`/Maureen D. Queler/
`Mark J. Feldstein (Reg. No. 46,693)
`Maureen D. Queler (Reg. No. 61,879)
`Joshua L. Goldberg (Reg. No. 59,369)
`Yieyie Yang (Reg. No. 71,923)
`Mark J. Stewart (Reg. No. 43,936)
`Dan L. Wood (Reg. No. 48,613)
`Gerald P. Keleher (Reg. No. 43,707)
`
`Counsel for Patent Owner
`
`5
`
`
`
`CERTIFICATE OF SERVICE
`
`Under 37 C.F.R. § 42.6(e), the undersigned certifies that PATENT
`
`OWNER’S UPDATED MANDATORY NOTICES was served by electronic
`
`mail on July 31, 2017, to counsel for Petitioner MonoSol RX, LLC:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Harold H. Fox (hfox@steptoe.com)
`
`Gretchen P. Miller (gmiller@steptoe.com)
`
`
`
`Date: July 31, 2017
`
`
`
`
`
`By: /Maureen D. Queler/
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
