`
`Case No. IPR2018-00423
`Patent No. 8,673,921
`Attorney Docket No.: 0112408.00135
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________________________
`
`ARGENTUM PHARMACEUTICALS LLC,
`Petitioner,
`
`v.
`
`MERCK PATENTGESELLSCHAFT MIT
`BESCHRÄNKTER HAFTUNG,
`Patent Owner.
`____________________________________________
`
`Case IPR2018-00423
`U.S. Patent 8,673,921
`____________________________________________
`
`
`
`MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8
`
`
`
`ActiveUS 166188595v.1
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`
`
`Case No. IPR2018-00423
`Patent No. 8,673,921
`Pursuant to 37 C.F.R. § 42.8, Patent Owner Merck Patentgesellschaft Mit
`
`Beschränkter Haftung respectfully submits the following Mandatory Notices.
`
`I.
`
`37 C.F.R. § 42.8(b)(1) – Real Party-in-Interest
`
`The Real Parties in Interest for the Patent Owner are Merck
`
`Patentgesellschaft Mit Beschränkter Haftung; Merck KGaA; Allergan Sales,
`
`LLC (successor in interest to Forest Laboratories, LLC); and Forest Laboratories
`
`Holdings, Ltd. Allergan Sales, LLC and Forest Laboratories Holdings, Ltd. are
`
`both indirect, wholly owned subsidiaries of Allergan plc.
`
`II.
`
`37 C.F.R. § 42.8(b)(2) – Related Matters
`
`U.S. Patent No. 8,673,921 (“the ’921 patent”) was a patent-in-suit in the
`
`following litigations, which are now closed: Forest Laboratories, LLC et al. v.
`
`Accord Healthcare, Inc., Civ. Action No. 15-cv-272 (D. Del. 2015); Forest
`
`Laboratories, LLC et al. v. Alembic Pharmaceuticals Ltd. et al., Civ. Action No. 15-
`
`cv-273 (D. Del. 2015); Forest Laboratories, LLC et al. v. Apotex Inc. et al., Civ.
`
`Action No. 15-cv-274 (D. Del. 2015); Forest Laboratories, LLC et al. v. Teva
`
`Pharmaceuticals USA Inc., Civ. Action No. 15-cv-275 (D. Del. 2015); Forest
`
`Laboratories, LLC et al. v. InvaGen Pharmaceuticals Inc., Civ. Action No. 15-cv-277
`
`(D. Del. 2015); and Forest Laboratories, LLC et al. v. InvaGen Pharmaceuticals Inc.,
`
`Civ. Action No. 15-cv-1078 (D. Del. 2015), all of which were consolidated into
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`ActiveUS 166188595v.1
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`Case No. IPR2018-00423
`Patent No. 8,673,921
`Forest Laboratories, LLC et al. v. Accord Healthcare, Inc. et al., Civ. Action No.
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`15-cv-272-GMS (consolidated) (D. Del. 2015).
`
`The ’921 patent is related to U.S. Patent Nos. 7,381,726, 7,834,020,
`
`7,981,894, 8,193,195, 8,236,804, 8,318,744, 8,927,552, 8,921,375, and
`
`9,624,204, PCT Application no. PCT/EP02/06153, filed on June 5, 2002 and
`
`European Application No. EP 01113647, filed on June 19, 2001. The ’921
`
`patent is also related to U.S. Application Serial No. 15/454,642, which was filed
`
`on March 9, 2017.
`
`III. Lead and Back-Up Counsel
`
`Lead Counsel:
`
`
`Emily R. Whelan, Reg. No. 50,391
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, MA 02109
`Phone: (617) 526-6567
`Email: Emily.Whelan@wilmerhale.com;
`WHIPDocketStaff@wilmerhale.com
`Fax: (617) 526-5000
`
`
`Backup Counsel:
`
`
`
`
`Deric X. Geng, Ph.D., Reg. No. 73,434
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, MA 02109
`Phone: (617) 526-6026
`Email: Deric.Geng@Wilmerhale.com; WHIPDocketStaff@wilmerhale.com
`Fax: (617) 526-5000
`
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`Case No. IPR2018-00423
`Patent No. 8,673,921
`
`David B. Bassett, Pro hac vice to be filed
`Wilmer Cutler Pickering Hale and Dorr LLP
`7 World Trade Center
`250 Greenwich Street
`New York, NY 10007
`Phone: (212) 230-8858
`Email: David.Bassett@Wilmerhale.com
`Fax: (617) 526-5000
`
`Vinita Ferrera, Pro hac vice to be filed
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, MA 02109
`Phone: (617) 526-6208
`Email: Vinita.Ferrera@Wilmerhale.com
`Fax: (617) 526-5000
`
`A Power of attorney is being filed concurrently with these Mandatory Notices.
`
`
`IV. 37 C.F.R. § 42.8(b)(4) – Service Information
`Please address all correspondence to the counsel as shown above. Patent
`
`Owner consents to electronic service by email at the email addresses above. The
`
`addresses listed for lead and backup counsel above are the postal mail addresses
`
`and hand delivery addresses as required by 37 C.F.R. § 42.8(b)(4).
`
`Date: January 26, 2018
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`Respectfully Submitted,
`
`/Emily R. Whelan/
`Emily R. Whelan
`Reg. No. 50,391
`Deric X. Geng, Ph.D.
`Reg. No. 73,434
`Attorneys for Patent Owner
`
`
`
`
`Case No. IPR2018-00423
`Patent No. 8,673,921
`
`Certificate of Service
`
`
`
`
`
`
`
`I hereby certify that on January 26, 2018, I caused a true and correct copy
`
`of the Mandatory Notices Pursuant to 37 C.F.R. § 42.8 and Patent Owner Merck
`
`Patentgesellschaft Mit Beschränkter Haftung’s Power of Attorney to be served
`
`via email on the following attorneys for Petitioner:
`
` Teresa Stanek Rea TRea@Crowell.com
` Karla I. Arias KArias@Crowell.com
` Deborah Yellin DYellin@Crowell.com
` Tyler C. Liu tliu@agpharm.com
`
`
`
`
` /Deric X. Geng/
`
`Deric X. Geng, Ph.D.
`Registration No. 73,434
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`ActiveUS 166188595v.1
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