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UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AYLA PHARMA LLC,
`Petitioner,
`
`v.
`
`ALCON RESEARCH, LLC,
`Patent Owner.
`
`
`Case IPR2020-00295
`Patent 9,533,053
`
`
`
`
`
`
`
`
`
`
`MANDATORY NOTICE INFORMATION
` 37 C.F.R. § 42.8
`
`
`
`
`
`
`
`

`

`Pursuant to 37 C.F.R. § 42.8, Patent Owner Novartis AG submits the
`
`Case IPR2020-00295
`U.S. Patent 9,533,053
`
`
`
`following mandatory notice information. Patent Owner has conferred with counsel
`
`of record for Petitioner, and Petitioner does not object to Patent Owner’s filing of
`
`mandatory notice information at this time.
`
`
`
`(1) Real parties-in-interest.
`
`Novartis AG is the assignee of U.S. Patent 9,533,053 (the “’053 patent”).
`
`Novartis AG is a corporation organized and existing under the laws of Switzerland,
`
`having an office and place of business at Lichtstrasse 35, CH-4056 Basel,
`
`Switzerland.
`
`Novartis Pharmaceutical Corporation is a corporation organized and existing
`
`under the laws of the State of Delaware and has a principal place of business at
`
`1 Health Plaza, East Hanover, NH 07936. Novartis Pharmaceutical Corporation is
`
`a wholly-owned subsidiary of Novartis AG.
`
`
`
`(2) Related matters.
`
`
`
`Patent Owner is unaware of any pending judicial or administrative matter
`
`that would affect, or be affected by, a decision in this proceeding.
`
`The following matters, none of which is currently pending, have involved the
`
`’053 patent:
`

`
`2
`
`

`

`Case IPR2020-00295
`U.S. Patent 9,533,053
`
`
`
` Alcon Research, Ltd. v. Watson Laboratories, Inc., Actavis Pharma,
`Inc., and Actavis Inc., 1:15-cv-1159 (D. Del.)
` Alcon Research, Ltd. v. Lupin Limited et al., 1:16-cv-00195 (D. Del.)
` Alcon Research, Ltd. v. Lupin Limited et al., 1:17-cv-00321 (D. Del.)
` Alcon Research, Ltd. v. Watson Labs. Inc., 1:17-cv-00252 (D. Del.)
` Alcon Research, Ltd. v. Cipla Limited et al., 1:17-cv-01244 (D. Del.)
` Cipla Limited v. Alcon Research, Ltd., IPR2018-01021 (P.T.A.B.)
`
`(3) Lead and back-up counsel.
`
`
`
`Patent Owner designates the following lead and back-up counsel:
`
`Lead Counsel
`Andrew V. Trask
`Reg. No. 59,239
`Williams & Connolly LLP
`725 Twelfth Street, N.W.
`Washington, DC 20005
`202-434-5023 (Telephone)
`202-434-5029 (Fax)
`atrask@wc.com
`
`Back-Up Counsel
`Scott A. Chapple
`Reg. No. 46,287
`Novartis Pharmaceuticals Corp.
`4800 Overton Plaza, Suite 300
`Fort Worth, TX 76109
`817-551-8793 (Telephone)
`scott.chapple@novartis.com
`
`Peter J. Waibel
`Reg. No. 43,228
`Novartis Pharmaceuticals Corp.
`1 Health Plaza, Bldg. 430
`East Hanover, NJ 07936
`862-778-7838 (Telephone)
`peter.waibel@novartis.com
`
`A Power of Attorney appointing the practitioners associated with customer
`
`
`
`number 129657 (Williams & Connolly LLP) to transact all business in this
`

`
`3
`
`

`

`
`proceeding is submitted together with this mandatory notice information.
`
`Case IPR2020-00295
`U.S. Patent 9,533,053
`
`
`
`(4) Service information.
`
`Patent Owner submits the following service information:
`
`E-mail addresses:
`
`
`
`
`
`
`
`
`
`(ii) Postal mailing address:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`(iii) Hand-delivery address:
`
`(iv) Telephone number:
`
`Facsimile number:
`
`
`
`
`
`
`
`
`
`atrask@wc.com
`scott.chapple@novartis.com
`peter.waibel@novartis.com
`
`Andrew V. Trask
`Williams & Connolly LLP
`725 Twelfth Street, N.W.
`Washington, DC 20005
`
`(Same as postal mailing address)
`
`202-434-5023
`
`202-434-5029
`
`(i)
`
`(v)
`
`
`
`
`
`

`
`
`
`4
`
`

`

`Patent Owner consents to electronic service by e-mail at atrask@wc.com,
`
`Case IPR2020-00295
`U.S. Patent 9,533,053
`
`
`
`scott.chapple@novartis.com, and peter.waibel@novartis.com.
`
`
`
`Dated: January 31, 2020
`
`Respectfully submitted,
`
`/Andrew V. Trask/
`Andrew V. Trask
`Reg. No. 59,239
`Williams & Connolly LLP
`725 Twelfth Street, N.W.
`Washington, DC 20005
`202-434-5023 (Telephone)
`202-434-5029 (Facsimile)
`atrask@wc.com
`
`Lead Counsel for Patent Owner
`
`
`
`5
`
`
`
`

`
`

`

`
`
`CERTIFICATE OF SERVICE
`
`Case IPR2020-00295
`U.S. Patent 9,533,053
`
`The undersigned certifies that the foregoing document was served on
`January 31, 2020, by e-mailing a copy to counsel of record for the Petitioner:
`
`Jitendra Malik, Ph.D. (Reg. No. 55,823)
`Katten Muchin Rosenman LLP
`550 S. Tryon Street, Suite 2900
`Charlotte, NC 28202-4213
`jitty.malik@katten.com
`
`Alissa M. Pacchioli (Reg. No. 74,252)
`Katten Muchin Rosenman LLP
`550 S. Tryon Street, Suite 2900
`Charlotte, NC 28202-4213
`alissa.pacchioli@katten.com
`
`Guylaine Haché, Ph.D. (Reg. No. 76,083)
`Katten Muchin Rosenman LLP
`525 W. Monroe Street
`Chicago, IL 60661-3693
`guylaine.hache@katten.com
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`

`
`
`
`
`
`
`
`
`
`
`
`
`
`/Andrew V. Trask/
`Andrew V. Trask
`Reg. No. 59,239
`
`6
`
`

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