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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
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`ARGENTUM PHARMACEUTICALS LLC
`Petitioner
`v.
`ICOS CORPORATION
`Patent Owner
`______________________
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`IPR2017-01762
`Patent No. 6,943,166
`______________________
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`PATENT OWNER’S MANDATORY NOTICES
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`Pursuant to 37 C.F.R. § 42.8, Patent Owner, ICOS Corporation, hereby
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`IPR2017-01762
`Patent No. 6,943,166
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`submits the following mandatory notices in connection with the above-captioned
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`Inter Partes Review.
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`I.
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`ICOS CORPORATION’S POWER OF ATTORNEY
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`A Power of Attorney appointing lead and back-up counsel is being filed
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`concurrently with these Notices.
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`II.
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`ICOS CORPORATION’S MANDATORY NOTICES
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`A. Real Parties-in-Interest
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`In accordance with 37 C.F.R. § 42.8(b)(1), the real parties-in-interest include
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`ICOS Corporation and Eli Lilly and Company.
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`B. Related Matters
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`The following district court actions were filed by Eli Lilly and Company and
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`ICOS Corporation, in the United States District Court for the Eastern District of
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`Virginia, seeking a judgment that the claims of U.S. Patent 6,943,166 were valid
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`and infringed. The actions were consolidated for pretrial proceedings under the
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`lead case, Eli Lilly & Co. v. Actavis Laboratories UT, Inc., l:16-cv-01119-AJT-
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`MSN. The district court entered Consent Judgments against each Defendant in
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`each of these proceedings:
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`• Eli Lilly & Co. v. Accord Healthcare, Inc., No. 1:16-cv-01352;
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`2
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`IPR2017-01762
`Patent No. 6,943,166
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`• Eli Lilly & Co. v. Actavis Laboratories UT, Inc., No. 1:16-cv-01119;
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`• Eli Lilly & Co. v. Ajanta Pharma, Ltd., No. 1:17-cv-00020;
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`• Eli Lilly & Co. v. Alembic Pharmaceuticals Ltd., No. 1:16-cv-01120;
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`• Eli Lilly & Co. v. Apotex, Inc., No. 3:16-cv-00941;
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`• Eli Lilly & Co. v. Aurobindo Pharma Ltd., No. 1:16-cv-01121;
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`• Eli Lilly & Co. v. Cipla Ltd., No. 1:16-cv-01208;
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`• Eli Lilly & Co. v. Mylan Pharms. Inc., No. 1:16-cv-01122;
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`• Eli Lilly & Co. v. Sun Pharm. Indus., Ltd., No. 2:16-cv-00518;
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`• Eli Lilly & Co. v. Teva Pharms. USA Inc., No. 2:16-cv-00519; and
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`• Eli Lilly & Co. v. Zydus Pharms. (USA) Inc., No. 2:16-cv-00520.
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`Eli Lilly & Co. v. Hetero USA, Inc., No. 2:17-cv-01951, was filed on March
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`24, 2017, in the United States District Court for the District of New Jersey seeking
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`a judgment that the claims of U.S. Patent 6,943,166 are valid and infringed. A
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`Consent Judgment was entered against Hetero USA, Inc. on May 8, 2017.
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`Eli Lilly & Co. v. Dr. Reddy’s Laboratories, Inc., No. 3:17-cv-02541, was
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`filed on April 13, 2017, in the United States District Court for the District of New
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`Jersey seeking a judgment that the claims of U.S. Patent 6,943,166 are valid and
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`infringed.
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`3
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`Eli Lilly & Co. v. Macleods Pharma USA, Inc., No. 3:17-cv-05087, was filed
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`IPR2017-01762
`Patent No. 6,943,166
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`on July 12, 2017, in the United States District Court for the District of New Jersey
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`seeking a judgment that the claims of U.S. Patent 6,943,166 are valid and
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`infringed.
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`IntelGenX Corp. v. ICOS Corp., IPR2016-00678, was filed on February 2,
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`2016, before the Patent Trial and Appeal Board, seeking cancelation of Claims 1-
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`12 of U.S. Patent 6,943,166. Institution was denied on September 1, 2016. The
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`proceeding was terminated by Order November 29, 2016.
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`Mylan Pharmaceuticals Inc. v. ICOS Corp., IPR2017-00323, was filed on
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`November 22, 2016, before the Patent Trial and Appeal Board, seeking cancelation
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`of Claims 1-12 of U.S. Patent 6,943,166. Institution was granted on June 12, 2017,
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`and a joint motion to terminate the proceedings was filed by the parties on July 7,
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`2017.
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`MonoSol RX, LLC v. ICOS Corp., IPR2017-00412, was filed on December
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`6, 2016, and corrected on December 7, 2016, before the Patent Trial and Appeal
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`Board, seeking cancelation of Claims 1-12 of U.S. Patent 6,943,166. Institution
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`was denied on July 3, 2017. Monosol filed a request for rehearing on July 21,
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`2017.
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`Dr. Reddy’s Laboratories, Inc. v. ICOS Corp., IPR2017-01757, was filed on
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`July 10, 2017, before the Patent Trial and Appeal Board, seeking cancelation of
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`4
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`Claims 1-12 of U.S. Patent 6,943,166. Dr. Reddy’s filed a Motion for Joinder with
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`IPR2017-01762
`Patent No. 6,943,166
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`Mylan Pharmaceuticals Inc. v. ICOS Corp., IPR2017-00323.
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`Patent Owner is unaware of any other related matters that would affect or be
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`affected by this proceeding.
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`C. Lead and Back-up Counsel
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`In accordance with 37 C.F.R. § 42.8(b)(3), Patent Owner designates the
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`following lead and back-up counsel to transact all business in the Patent Trial &
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`Appeal Board of the United States Patent & Trademark Office in connection with
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`the above-captioned Inter Partes Review. A power of attorney from ICOS
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`Corporation to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP (Customer
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`Number 22,852) is being filed concurrently with these mandatory notices in
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`compliance with 37 C.F.R. § 42.10(b).
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`Patent Owner also consents to e-mail service at ICOS-IPRs@finnegan.com
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`and the email addresses listed below for lead and back-up counsel.
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`Mark J. Feldstein (Lead Counsel)
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`Phone: (202) 408-4092
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`Finnegan, Henderson, Farabow,
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`Fax: (202) 408-4400
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` Garrett & Dunner, LLP
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`mark.feldstein@finnegan.com
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`901 New York Avenue, NW
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`USPTO Reg. No. 46,693
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`Washington, DC 20001-4413
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`5
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`Maureen D. Queler (First Back-Up Counsel)
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`IPR2017-01762
`Patent No. 6,943,166
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`Phone: (202) 408-4294
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`Finnegan, Henderson, Farabow,
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`Fax: (202) 408-4400
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` Garrett & Dunner, LLP
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`maureen.queler@finnegan.com
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`901 New York Avenue, NW
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`USPTO Reg. No. 61,879
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`Washington, DC 20001-4413
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`Yieyie Yang (Back-Up Counsel)
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`Phone: (202) 216-5170
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`Finnegan, Henderson, Farabow,
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`Fax: (202) 408-4400
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` Garrett & Dunner, LLP
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`yieyie.yang@finnegan.com
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`901 New York Avenue, NW
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`USPTO Reg. No. 71,923
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`Washington, DC 20001-4413
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`Joshua L. Goldberg (Back-Up Counsel)
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`Phone: (202) 408-6092
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`Finnegan, Henderson, Farabow,
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`Fax: (202) 408-4400
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` Garrett & Dunner, LLP
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`joshua.goldberg@finnegan.com
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`901 New York Avenue, NW
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`USPTO Reg. No. 59,369
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`Washington, DC 20001-4413
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`Mark J. Stewart (Back-Up Counsel)
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`Phone: (317) 276-0280
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`Eli Lilly and Company
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`Lilly Corporate Center
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`Indianapolis, IN 46285
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`Fax: (317) 276-3861
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`stewart_mark@lilly.com
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`USPTO Reg. No. 43,936
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`6
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`Dan L. Wood (Back-Up Counsel)
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`Eli Lilly and Company
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`Lilly Corporate Center
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`Indianapolis, IN 46285
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`IPR2017-01762
`Patent No. 6,943,166
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`Phone: (317) 277-3366
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`Fax: (317) 276-3861
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`wood_dan_l@lilly.com
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`USPTO Reg. No. 48,613
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`Gerald P. Keleher (Back-Up Counsel)
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`Phone: (317) 276-3964
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`Eli Lilly and Company
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`Lilly Corporate Center
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`Indianapolis, IN 46285
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`Fax: (317) 276-0894
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`keleher_gerald@lilly.com
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`USPTO Reg. No. 43,707
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`The undersigned counsel welcomes a telephone call should the Office have
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`any requests or questions.
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`Respectfully submitted,
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`/Maureen D. Queler /
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`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)
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`Counsel for Patent Owner
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`7
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`Dated: __August 2, 2017____
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`CERTIFICATE OF SERVICE
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`Under 37 C.F.R. § 42.6(e), the undersigned certifies that PATENT
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`OWNER’S MANDATORY NOTICES was served by electronic mail on August
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`2, 2017, to counsel for Petitioner Argentum Pharmaceuticals LLC:
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`Kevin Laurence (Reg. 38,219) klaurence@lpiplaw.com;
`Matthew Phillips (Reg. No. 43,403) mphillips@lpiplaw.com
`Tyler C. Liu (Reg No. 72,126) tliu@agpharm.com
`LAURENCE & PHILLIPS IP LAW LLP
`1940 Duke Street, Suite 200
`Alexandria, VA 22314
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`Petitioner has consented to electronic service.
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`By: /Maureen D. Queler/
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`Date: __August 2, 2017____
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