`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`DR. REDDY’S LABORATORIES, INC.
`Petitioner
`v.
`ICOS CORPORATION
`Patent Owner
`______________________
`
`IPR2017-01757
`Patent No. 6,943,166
`______________________
`
`
`PATENT OWNER’S UPDATED MANDATORY NOTICES
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.8(a)(3), Patent Owner, ICOS Corporation, hereby
`
`IPR2017-01757
`Patent No. 6,943,166
`
`
`
`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
`
`
`
`
`
`IPR2017-01757
`Patent No. 6,943,166
`
`• Eli Lilly & Co. v. Mylan Pharms. Inc., No. 1:16-cv-01122;
`
`• 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. A Consent Judgement was entered against Dr. Reddy’s on August 15,
`
`2017.
`
`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. A Consent Judgement was entered against Macleods on August 24,
`
`2017.
`
`3
`
`
`
`IntelGenX Corp. v. ICOS Corp., IPR2016-00678, was filed on February 2,
`
`IPR2017-01757
`Patent No. 6,943,166
`
`
`
`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.
`
`Mylan Pharmaceuticals Inc. v. ICOS Corp., IPR2017-00323, was filed on
`
`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. The Board issued an order terminating the proceeding due to settlement after
`
`institution on August 16, 2017.
`
`MonoSol RX, LLC v. ICOS Corp., IPR2017-00412, was filed on December
`
`6, 2016, and corrected on December 7, 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 July 3, 2017. Monosol filed a request for rehearing on July 21,
`
`2017, ICOS Corp. filed an opposition to the request for rehearing on August 9,
`
`2017, and Monosol filed a reply to the opposition on August 16, 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 also filed a Motion for Joinder
`
`with Mylan Pharmaceuticals Inc. v. ICOS Corp., IPR2017-00323. A joint motion
`
`4
`
`
`
`
`to terminate the proceeding was filed by the parties on August 28, 2017. The
`
`IPR2017-01757
`Patent No. 6,943,166
`
`Board issued an order terminating the proceeding due to settlement before
`
`institution on October 3, 2017.
`
`Eli Lilly & Co. v. Glenmark Pharmaceuticals Ltd., No. 2:17-cv-07024, was
`
`filed on September 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.
`
`Patent Owner is unaware of any other related matters that would affect or be
`
`affected by this proceeding.
`
`
`
`The undersigned counsel welcomes a telephone call should the Office have
`
`any requests or questions.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/
`
`
`
`
`
`
`
`
`
`
`
`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
`
`Dated: October 3, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`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 October 3, 2017, to counsel for Petitioner Dr. Reddy’s Laboratories, Inc.:
`
`Louis H. Weinstein (Reg. 45,205) lweinstein@buddlarner.com;
`Alan H. Pollack (Reg. No. 39,802) apollack@buddlarner.com
`BUDD LARNER, P.C.
`150 John F. Kennedy Parkway
`Short Hills, NJ 07078
`
`Petitioner has consented to electronic service.
`
`
`
`Date: _October 3, 2017__
`
`
`
`By: / John W. Kozikowski /
`
`
`
`