`
`Paper No. 6
`Date Filed: November 19, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`NEPTUNE GENERICS, LLC
`Petitioner,
`v.
`AVENTIS PHARMA S.A.
`Patent Owner.
`________________
`
`Case IPR2019-00136
`U.S. Patent No. 5,847,170
`________________
`
`AVENTIS PHARMA S.A.
`MANDATORY NOTICES – 37 C.F.R. § 42.8
`
`
`
`Pursuant to 37 C.F.R. § 42.8, Aventis Pharms S.A. (the “Patent Owner”), as
`
`indicated by the assignment recorded at Reel/Frame 007959 / 0343, 011641 / 0962,
`
`and 011566 / 0692 submits the following Mandatory Notices.
`
`Real Party-In-Interest (37 C.F.R. § 42.8 (b)(1)):
`
`Pursuant to the requirements of 37 C.F.R. § 42.8(a)(2), the real party-in-
`
`interest is Aventis Pharma S.A. (the “Patent Owner”). Sanofi, the ultimate parent
`
`company of Aventis Pharma S.A., and Sanofi-Aventis U.S. LLC, an affiliate of
`
`Aventis Pharma S.A., are also real parties-in interest.
`
`Related Matters (37 C.F.R. § 42.8 (b)(2)):
`
`Patent Owner, along with Sanofi-Aventis U.S. LLC and Sanofi (collectively
`
`“Sanofi”) filed complaints alleging infringement of U.S. Patent No. 5,847,170
`
`(“the ’170 patent”) by nine defendants in the United States District Court for the
`
`District of New Jersey. After an eight-day bench trial, the court entered judgment
`
`on March 5, 2018 finding the ’170 patent infringed and not invalid. Sanofi-Aventis
`
`U.S. LLC et al. v. Fresenius Kabi USA, LLC et al., C. A. No. 14-7869
`
`(MAS)(LHG), D.I. 320 (D.N.J. Mar. 5, 2018). The Defendants’ appeal of this
`
`judgment is currently pending before the United States Court of Appeals for the
`
`Federal Circuit at Case Nos. 18-1804, 18-1808, and 18-1809.
`
`The ’170 patent was also the subject of a petition for inter partes review.
`
`Mylan Labs. Ltd. v. Aventis Pharma S.A., IPR2016-00627. The Board denied
`
`- 1 -
`
`
`
`institution on obviousness grounds on August 23, 2016 (Paper 10), and denied
`
`Petitioner’s request for rehearing on January 26, 2017 (Paper 12).
`
`Also, the following patent applications claim the benefit of the priority of the
`
`filing date of the subject patent: U.S. Patent Application Nos. 09/066,929 (now
`
`U.S. Patent No. 6,331,635), 09/752,779 (now U.S. Patent No. 6,372,780), and
`
`09/985,956 (now U.S. Patent No. 6,387,946).
`
`Designation of Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3)):
`
`Lead counsel is Daniel J. Minion (Reg. No. 53,329). Dominick A. Conde is
`
`designated as back-up counsel (Reg. No. 33,856). William E. Solander, Jason A.
`
`Leonard, and Melinda R. Roberts are designated as back-up counsel requiring pro
`
`hac vice admission to appear in this proceeding.
`
`A power of attorney from Aventis Pharma S.A. is being submitted with this
`
`Notice.
`
`- 2 -
`
`
`
`Service Information (37 C.F.R. § 42.8(b)(4)):
`
`Aventis Pharma S.A. may be served by postal mailing, hand-delivery,
`
`telephone or facsimile as follows:
`
`Daniel J. Minion
`Venable LLP
`1290 Avenue of the Americas
`New York, NY
`Telephone: (212) 218-2538
`Facsimile:
`(212) 218-2200
`
`Aventis Pharma S.A. may be served electronically using the following e-
`
`mail addresses:
`
`DMinion@Venable.com
`
`DConde@Venable.com
`
`WSolander@Venable.com
`
`JALeonard@Venable.com
`
`MRRoberts@Venable.com
`
`- 3 -
`
`
`
`Any questions concerning this paper may be directed to lead counsel listed
`
`below.
`
`November 19, 2018
`
`Respectfully submitted,
`
`/Daniel J. Minion/
`
`Daniel J. Minion (Reg. No. 53,329)
`Lead Counsel for Patent Owner
`Venable LLP
`Tel: (212) 218-2538
`
`ATTORNEYS FOR PATENT OWNER,
`AVENTIS PHARMA S.A.
`
`Back-up Counsel:
`Dominick A. Conde (Reg. No. 33,856)
`William E. Solander (pro hac vice to be filed)
`Jason A. Leonard (pro hac vice to be filed)
`Melinda R. Roberts (pro hac vice to be filed)
`Venable LLP
`1290 Avenue of the Americas
`New York, NY 10104-3800
`(212) 218-2100
`
`- 4 -
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that copies of the AVENTIS PHARMA
`
`S.A. MANDATORY NOTICES – 37 C.F.R. § 42.8 were served on November 19,
`
`2018 as follows:
`
`VIA ELECTRONIC MAIL
`Alexander E. Gasser (Reg. No. 48,760)
`Sarah Spires (Reg. No. 61,501)
`Paul J. Skiermont (pro hac vice to be requested)
`Skiermont Derby LLP
`1601 Elm Street, Suite 4400
`Dallas, Texas 75201
`Phone: 214-978-6600
`Fax: 214-978-6601
`agasser@skiermontderby.com
`sspires@skiermontderby.com
`pskiermont@skiermontderby.com
`
`Mieke Malmberg (pro hac vice to be requested)
`Skiermont Derby LLP
`800 Wilshire Blvd., Suite 1450
`Los Angeles, California 90017
`Phone: 213-788-4500
`Fax: 213-788-4545
`mmalmberg@skiermontderby.com
`
`Dated: November 19, 2018
`
`By:
`
`/Daniel J. Minion/
`Daniel J. Minion (Reg. No. 53,329)
`Venable LLP
`1290 Avenue of the Americas
`New York, NY 10104
`Tel: 212-218-2538
`Fax: 212-218-2200
`DMinion@Venable.com
`
`
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