Paper No. 9
`Filed: Sept. 20, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GRÜNENTHAL GMBH,
`
`Petitioner
`
`v.
`
`ANTECIP BIOVENTURES II LLC,
`
`Patent Owner.
`____________
`
`Case PGR2019-00028
`U.S. Patent No. 10,052,338
`____________
`
`PETITIONER’S FIRST UPDATED
`MANDATORY NOTICES – 37 C.F.R. § 42.8(a)(3)
`
`
`Filed: Sept. 20, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GRÜNENTHAL GMBH,
`
`Petitioner
`
`v.
`
`ANTECIP BIOVENTURES II LLC,
`
`Patent Owner.
`____________
`
`Case PGR2019-00028
`U.S. Patent No. 10,052,338
`____________
`
`PETITIONER’S FIRST UPDATED
`MANDATORY NOTICES – 37 C.F.R. § 42.8(a)(3)
`
`
`
`Pursuant to 37 C.F.R. § 42.8(a)(3), Grünenthal GmbH (“Grünenthal”)
`
`submits the following update to its January 3, 2019 Mandatory Notices (Paper No.
`
`2).
`
`Real Party-in-Interest (§ 42.8(b)(1)):
`
`The real party-in-interest information has not changed.
`
`Related Matters (§ 42.8(b)(2)):
`
`Petitioner has filed petitions for post-grant review against several U.S.
`
`patents owned by the Patent Owner, as shown in the following table:
`
`Filing Date
`
`Status
`
`PGR
`Patent
`Number
`Number
`9,283,239 PGR2017-
`00008
`9,408,862 PGR2017-
`00022
`9,539,268 PGR2018-
`00001
`
`9,707,245 PGR2018-
`00062
`
`9,820,999 PGR2018-
`00092
`9,867,839 PGR2019-
`00003
`
`May 8, 2017
`
`October 10, 2017
`
`April 18, 2018
`
`December 14, 2016 Final written decision finding all
`challenged claims unpatentable
`Final written decision finding all
`challenged claims unpatentable
`Final written decision finding all
`challenged claims unpatentable;
`request for rehearing pending
`PGR instituted and currently
`pending; oral argument heard
`July 31, 2019
`PGR instituted and currently
`pending
`PGR instituted and currently
`pending
`
`August 21, 2018
`
`October 16, 2018
`
`1
`
`
`
`9,931,352 PGR2019-
`00026
`
`January 3, 2019
`
`10,039,774 PGR2019-
`00027
`
`January 3, 2019
`
`PGR petition filed concurrently
`with the instant Petition;
`instituted and currently pending
`PGR petition filed concurrently
`with the instant Petition;
`instituted and currently pending
`
`All of these matters are related to the instant PGR in that each of the above
`
`patents shares the same inventor as the ’338 patent and, like the ’338 patent,
`
`concerns the use of bisphosphonate drugs to treat pain conditions. The ’338 patent
`
`issued from a continuation of the application that issued as U.S. Patent No.
`
`9,931,352. Moreover, the ’338 patent and some of the above patents are in the
`
`same or related patent families. In particular, the ’338 patent purportedly claims
`
`priority to the patent application that issued as U.S. Patent No. 9,820,999
`
`(PGR2018-00092). And the ’338 patent, U.S. Patent Nos. 9,707,245 (PGR2018-
`
`00062), 9,283,239 (PGR2017-00008), and 9,867,839 (PGR2019-00003) each
`
`purportedly claims priority to many of the same applications, including Provisional
`
`Application No. 61/646,538 filed on May 14, 2012 and U.S. Patent Application
`
`No. 13/894,274, filed on May 14, 2013. Concurrently with the ’338 patent
`
`Petition, Petitioner filed PGRs challenging U.S. Patent Nos. 10,093,774 (Ex. 1002)
`
`and 9,931,352 (Ex. 1001), which also claim methods of treating particular signs
`
`2
`
`
`
`and symptoms of CRPS. The ’338 patent is a continuation of the application that
`
`issued as the ’352 patent.
`
`To Petitioner’s best knowledge, the instantly challenged ’338 patent is not
`
`currently involved in any other judicial or administrative matters that would affect,
`
`or be affected by, a decision in this proceeding.
`
`Designation of Lead and Back-Up Counsel (§ 42.8(b)(3)):
`
`The lead counsel information has not changed.
`
`Grünenthal hereby notifies the Board that it is adding Katherine E. Adams as
`
`additional back-up counsel. All other counsel information remains the same.
`
`Grünenthal’s lead and back-up counsel:
`
`Lead Counsel
`Daniel J. Minion
`Registration 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
`
`Back-up Counsel
`Bruce C. Haas
`Registration No. 32,734
`VENABLE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`Tel: 212-218-2290
`Fax: 212-218-2200
`bchaas@venable.com
`GrunenthalPGR@venable.com
`
`Katherine E. Adams
`Registration No. 73,758
`VENABLE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`Tel: 212-218-2106
`Fax: 212-218-2200
`keadams@venable.com
`
`3
`
`
`
`Service Information (§ 42.8(b)(4)):
`
`Please direct all correspondence to lead and back-up counsel at the above
`
`addresses and to GrunenthalPGR@Venable.com. Petitioner also consents to
`
`electronic service to GrunenthalPGR@Venable.com and to the email addresses
`
`above.
`
`Dated: Sept. 20, 2019
`
`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
`
`4
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that copies of the PETITIONER’S FIRST
`
`UPDATED MANDATORY NOTICES – 37 C.F.R. § 42.8(a)(3) were served on
`
`Sept. 20, 2019 as follows:
`
`VIA ELECTRONIC MAIL
`Brent A. Johnson (Reg. No. 51,851)
`Maschoff Brennan
`100 Spectrum Center Dr.
`Ste. 1200
`Irvine, CA 92618
`Tel: 949-202-1900
`Fax: 949-453-1104
`bjohnson@mabr.com
`
`R. Parrish Freeman (Reg. No. 42,556)
`Maschoff Brennan
`1389 Center Drive, Suite 300
`Park City, UT 84098
`Tel: 435-252-1360
`pfreeman@mabr.com
`
`Dated: Sept. 20, 2019
`
`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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