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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`
`SANDOZ INC.,
`Petitioner,
`
`v.
`
`PHARMACYCLICS LLC,
`Patent Owner.
`
`__________________
`
`Case IPR2019-00865
`U.S. Patent No. 9,795,604
`__________________
`
`PATENT OWNER’S MANDATORY NOTICES
`
`
`
`
`Case IPR2019-00865
`U.S. Patent No. 9,795,604
`
`Pursuant to 37 C.F.R. § 42.8, Patent Owner Pharmacyclics LLC provides the
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`following mandatory notices.
`
`I.
`
`Real Party-in-Interest - 37 C.F.R. § 42.8(b)(1)
`
`The real parties-in-interest are Pharmacyclics LLC, AbbVie Inc., and Janssen
`
`Biotech, Inc. Pharmacyclics LLC is the assignee of the entire right, title, and interest
`
`in U.S. Patent No. 9,795,604 (“the ’604 patent”) by assignments recorded at the U.S.
`
`Patent and Trademark Office. Pharmacyclics LLC is a wholly-owned subsidiary of
`
`AbbVie, Inc. Janssen Biotech, Inc. is the exclusive licensee of the ’604 patent.
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`II. Related Matters - 37 C.F.R. § 42.8(b)(2)
`
`The ’604 patent has been asserted in Pharmacyclics LLC and Janssen Biotech,
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`Inc. v. Zydus Worldwide DMCC et al., C.A. 18-00275 (CFC) (D. Del.), which has
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`been consolidated with other cases under Pharmacyclics LLC et al. v. Fresenius
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`Kabi, LLC, et al., C.A. No. 18-00192 (CFC) (D. Del.).
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`U.S. Patent Application No. 15/586,058, which is pending, claims the benefit
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`of the application that led to the ’604 patent.
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`III. Lead and Back-up Counsel - 37 C.F.R. § 42.8(b)(3)
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`Patent Owner designates the following lead and back-up counsel:
`
`1
`
`
`
`Lead Counsel
`William B. Raich
`Reg. No. 54,386
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Telephone: (202) 408-4210
`Facsimile:
`(202) 408-4400
`Email: william.raich@finnegan.com
`
`Case IPR2019-00865
`U.S. Patent No. 9,795,604
`
`Back-up Counsel
`Erin M. Sommers
`Reg. No. 60,974
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Telephone: (202) 408-4292
`Facsimile:
`(202) 408-4400
`Email: erin.sommers@finnegan.com
`
`Cora R. Holt
`Reg. No. 68,332
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Telephone: (202) 408-4334
`Facsimile:
`(202) 408-4400
`Email: cora.holt@finnegan.com
`
`Stefan O. Ochiana
`Reg. No. 74,850
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Telephone: (202) 408-4316
`Facsimile:
`(202) 408-4400
`Email: stefan.ochiana@finnegan.com
`
`
` A
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` power of attorney from Pharmacyclics LLC to Finnegan, Henderson,
`
`Farabow, Garrett & Dunner, LLP (Customer Number 22,852) is being filed
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`concurrently with these mandatory notices in compliance with 37 C.F.R. § 42.10(b).
`
`2
`
`
`
`Case IPR2019-00865
`U.S. Patent No. 9,795,604
`
`IV. Service Information - 37 C.F.R. § 42.8(b)(4)
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`Please send all correspondence to the lead and back-up counsel at the
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`addresses shown above. Patent Owner consents to electronic service by email at the
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`email addresses identified in the table above.
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`
`
`Date: April 11, 2019
`
`
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`Respectfully submitted,
`
`
`
`By: / William B. Raich /
`William B. Raich, Reg. No. 54,386
`Erin M. Sommers, Reg. No. 60,974
`Cora R. Holt, Reg. No. 68,332
`Stefan O. Ochiana, Reg. No. 74,850
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`
`Counsel for Patent Owner
`Pharmacyclics LLC
`
`
`
`3
`
`
`
`Case IPR2019-00865
`U.S. Patent No. 9,795,604
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the foregoing Patent Owner’s
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`Mandatory Notices was served electronically via email on April 11, 2019, in its
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`entirety on the following:
`
`Kirk T. Bradley
`Alston & Bird LLP
`101 South Tryon Street, Suite 4000
`Charlotte, NC 28280
`kirk.bradley@alston.com
`
`Siraj M. Abhyankar
`Alston & Bird LLP
`1201 W. Peachtree Street NE #4900
`Atlanta, GA 30309
`shri.abhyankar@alston.com
`
`Christopher L. McArdle
`Alston & Bird LLP
`90 Park Avenue, Suite 1200
`New York, NY 10016
`chris.mcardle@alston.com
`
`
`Petitioner has consented to service by email.
`
`
`Date: April 11, 2019
`
`
`
`By: / William Esper /
`William Esper
`Litigation Legal Assistant
`
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`
`
`
`
`
`
`
`
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