`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________
`
`
`PAR PHARMACEUTICALS, INC.,
`Petitioner
`
`v.
`
`HORIZON THERAPEUTICS, LLC,
`Patent Owner
`
`__________
`
`
`Case IPR2018-01550
`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;
`
`IPR2018-01550
`
`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. 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.
`
`(b) 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) (dismissed July 10, 2018, due to settlement). The
`
`Complaint asserted infringement of U.S. Patent No. 9,561,197.
`
`(c)
`
`Lupin Ltd. and Lupin Pharmaceuticals Inc. v. Horizon Therapeutics,
`
`LLC, IPR2018-00459 (terminated July 25, 2018, due to settlement).
`
`IPR2018-01550
`
`PO Initial Mandatory Notices
`
`Page 2 of 4
`
`
`
`(d)
`
`Pending U.S. Patent Appl. No. 15/402,780, filed January 10, 2017,
`
`which claims benefit of the patent under review.
`
`(e)
`
`Pending U.S. Patent Appl. No. 15/687,136, filed August 25, 2017,
`
`which claims benefit of the patent under review.
`
`(f)
`
`Pending U.S. Patent Appl. No. 15/980,431, filed May 15, 2018, 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
`
`BACK-UP 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
`
`
`
`
`
`IPR2018-01550
`
`PO Initial Mandatory Notices
`
`Page 3 of 4
`
`
`
`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
`
`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: Sept. 4, 2018
`
`
`Respectfully submitted,
`
`By: / M.C. Phillips /
`Matthew C. Phillips
`Registration No. 43,403
`Backup Counsel for Patent Owner
`
`IPR2018-01550
`
`PO Initial Mandatory Notices
`
`Page 4 of 4
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that on September 4, 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:
`
`David H. Silverstein: dsilverstein@axinn.com
`
`Aziz Burgy: aburgy@axinn.com
`
`Christopher M. Gallo: cgallo@axinn.com
`
`Ravicti197-Axinn@axinn.com
`
`
`/ M.C. Phillips /
`Matthew C. Phillips
`Registration No. 43,403
`
`
`IPR2018-01550
`
`PO Initial Mandatory Notices COS
`
`
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