`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________
`
`
`LUPIN LTD. AND LUPIN PHARMACEUTICALS INC.,
`Petitioner
`
`v.
`
`HORIZON THERAPEUTICS, LLC,
`Patent Owner
`
`__________
`
`
`Case IPR2018-00459
`Patent 9,561,197
`
`__________
`
`
`PATENT OWNER’S INITIAL MANDATORY NOTICES
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.8(a), the Patent Owner submits the following
`
`initial mandatory notices.
`
`
`
`1.
`
`Real Parties-In-Interest (37 C.F.R. § 42.8(b)(1))
`
`U.S. Patent No. 9,561,197 is owned by Horizon Therapeutics, LLC (f/k/a
`
`Hyperion Therapeutics, Inc.), a company organized and existing under the laws of
`
`the State of Delaware, having its principal place of business at 150 S. Saunders
`
`Road, Lake Forest, IL 60045. Pursuant to the requirements of 37 C.F.R.
`
`§ 42.8(b)(1), the undersigned state that the real parties-in-interest are Horizon
`
`Therapeutics, LLC as well its corporate parents (collectively, Horizon):
`
` Horizon Pharma, Inc., a corporation organized and existing under the
`
`laws of the State of Delaware, having its principal place of business at
`
`150 S. Saunders Road, Lake Forest, IL 60045, which is wholly-owned
`
`by:
`
` Horizon Pharma Finance S.á.r.l., an entity organized and existing under
`
`the laws of Luxembourg, having its principal place of business at 19 Rue
`
`de Bitbourg, Luxembourg, which is wholly owned by;
`
` Horizon Pharma Capital Limited, a corporation organized and existing
`
`under the laws of Ireland, having its principal place of business at
`
`Connaught House, 1st Floor, 1 Burlington Road, Dublin 4, Ireland, which
`
`is wholly owned by;
`
`IPR2018-00459
`
`PO Initial Mandatory Notices
`
`Page 1 of 4
`
`
`
` Horizon Pharma Holdings Limited, a corporation organized and existing
`
`under the laws of Ireland, having its principal place of business at
`
`Connaught House, 1st Floor, 1 Burlington Road, Dublin 4, Ireland, which
`
`is wholly owned by; and
`
` Horizon Pharma plc, a company organized and existing under the laws of
`
`Ireland, having its principal place of business at Connaught House, 1st
`
`Floor, 1 Burlington Road, Dublin 4, Ireland.
`
`
`
`2.
`
`Related Matters (37 C.F.R. § 42.8(b)(2))
`
`The following judicial and administrative matters may affect or be affected
`
`by a decision in this proceeding:
`
`(a) Horizon Therapeutics, LLC v. Lupin Ltd. and Lupin Pharmaceuticals
`
`Inc., Civil Action No. 1:17-cv-05900-MAH-KM (D.N.J. filed Aug.
`
`08, 2017). The Complaint asserts infringement of U.S. Patent No.
`
`9,561,197.
`
`(b) Horizon Therapeutics, LLC v. Par Pharmaceutical, Inc., Civil Action
`
`No. 1:17-cv-05901-MAH-KM (D.N.J. filed Aug. 08, 2017). The
`
`Complaint asserts infringement of U.S. Patent No. 9,561,197.
`
`(c)
`
`Pending U.S. Patent Appl. No. 15/402,780, filed January 10, 2017,
`
`which claims benefit of the patent under review.
`
`IPR2018-00459
`
`PO Initial Mandatory Notices
`
`Page 2 of 4
`
`
`
`(d)
`
`Pending U.S. Patent Appl. No. 15/687,136, filed August 25, 2017,
`
`which claims benefit of the patent under review.
`
`3.
`
`Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3))
`
`Pursuant to 37 C.F.R. §§ 42.8(b)(3) and 42.10(a), the Patent Owner provides
`
`the following designation of counsel:
`
`
`
`
`
`LEAD COUNSEL
`
`Robert Green (Reg. No. 27,555)
`Green, Griffith & Borg-Breen, LLP
`City Place, Suite 3900
`676 N. Michigan Avenue
`Chicago, Illinois 60611
`Phone: (312) 883-8000
`Fax: (312) 883-8001
`rgreen@greengriffith.com
`
`BACKUP COUNSEL
`
`Matthew Phillips (Reg. No. 43,403)
`Laurence & Phillips IP Law LLP
`7327 SW Barnes Road #521
`Portland, Oregon 97225
`Phone: (503) 964-1129
`Fax: (703) 439-1624
`mphillips@lpiplaw.com
`
`Caryn Borg-Breen (Reg. No. 52,637)
`Green, Griffith & Borg-Breen, LLP
`City Place, Suite 3900
`676 N. Michigan Avenue
`Chicago, Illinois 60611
`Phone: (312) 883-8000
`Fax: (312) 883-8001
`cborg-breen@greengriffith.com
`
`
`IPR2018-00459
`
`PO Initial Mandatory Notices
`
`Page 3 of 4
`
`
`
`Dennis Bennett (Reg. No. 34,547)
`GLOBAL PATENT GROUP, LLC
`1005 N. Warson Road, Suite 404
`St. Louis, Missouri 63132
`Phone: (314) 812-8018
`Fax: (314) 685-2300
`dennisbennett@globalpatentgroup.com
`
`
`
`Pursuant to 37 C.F.R. § 42.10(b), a power of attorney for the above-listed
`
`counsel is concurrently filed.
`
`4.
`
`Service Information (37 C.F.R. § 42.8(b)(4))
`
`Service information for the Patent Owner’s counsel of record is provided
`
`above, all of whom consent to service by e-mail. If service by means other than
`
`email is made, the Patent Owner requests that the petitioner notify each counsel
`
`above by email that service is being made by another means at the time of service.
`
`
`
`
`
`Date: 2018 Feb. 2
`
`Respectfully submitted,
`
`By: / M.C. Phillips /
`Matthew C. Phillips
`Registration No. 43,403
`Backup Counsel for Patent Owner
`
`IPR2018-00459
`
`PO Initial Mandatory Notices
`
`Page 4 of 4
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that on February 2, 2018, copies of the foregoing PATENT
`
`OWNER’S INITIAL MANDATORY NOTICES and all documents filed with it
`
`were served via electronic mail, as agreed to by counsel, upon the following
`
`counsel for the Petitioner:
`
`Elizabeth J. Holland: EHolland@goodwinlaw.com
`
`Cynthia Lambert Hardman: CHardman@goodwinlaw.com
`
`Andrew E. Riley: ARiley@goodwinlaw.com
`
`
`
`/ M.C. Phillips /
`Matthew C. Phillips
`Registration No. 43,403
`
`
`IPR2018-00459
`
`PO Initial Mandatory Notices COS
`
`
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
