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UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ETON PHARMACEUTICALS, INC.,
`Petitioner,
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`v.
`
`EXELA PHARMA SCIENCES, LLC,
`Patent Owner.
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`Case PGR2020-00068
`Patent 10,583,155
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`PATENT OWNER EXELA PHARMA SCIENCES, LLC’S
`MANDATORY NOTICES
`
`

`

`Case PGR2020-00068
`Attorney Docket No: 48751-0007PS1
`
`
`
`
`
`PATENT OWNER’S MANDATORY NOTICES
`UNDER 37 C.F.R. § 42.8
`
`Pursuant to 37 C.F.R. § 42.8, Patent Owner, Exela Pharma Sciences, LLC
`
`(“Patent Owner”), hereby submits the following Mandatory Notices in response to
`
`the Petition for Post Grant Review of U.S. Patent No. 10,583,155 (the ’155
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`patent).
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`1.
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`Real Party-In-Interest under 37 CFR § 42.8(b)(1)
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`Exela Pharma Sciences, LLC is the Patent Owner and the Real Party-In-
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`Interest in this proceeding.
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`2.
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`Related Matters under 37 CFR § 42.8(b)(2)
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`A. The following judicial or administrative matters may affect or be
`affected by a decision in this proceeding:
`Exela Pharma Sciences, LLC v. Eton Pharms., Inc., Case No. 1:20-cv-
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`00365-MN (D. Del., filed March 16, 2020) (“District Court Action”);
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`Exela Pharma Sciences LLC v. Sandoz Inc., Case No. 1:20-cv-00645-MN
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`(D. Del., filed May 14, 2020); and
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`Exela Pharma Sciences LLC v. Sandoz Inc., Case No. 1:20-cv-01393 (D.
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`Colo., filed May 15, 2020).
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`2
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`

`

`B.
`
`Case PGR2020-00068
`Attorney Docket No: 48751-0007PS1
`The following issued U.S. patents and U.S. patent applications
`claim priority from the ’453 patent:
`U.S. Patent
`10,653,719
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`
`
`
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`3.
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`U.S. Applications
`16/746,028
`16/773,641
`16/850,726
`16/850,962
`16/850,973
`
`
`Lead and Back-Up Counsel, under 37 CFR § 42.8(b)(3)
`
`The Patent Owner designates the following lead and back-up counsel:
`
`LEAD COUNSEL
`Dorothy P. Whelan, Reg. No. 33,814
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel:
`(612) 337-2509
`Email: PGR48751-0007PS1@fr.com
`Fax:
`(877) 769-7945
`
`4.
`
`BACK-UP COUNSEL
`Alana Mannige, Reg. No. 71,899
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel:
`(404) 892-5005
`Email:
`PTABInbound@fr.com
`Fax:
`(877) 769-7945
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`Service Information under 37 CFR § 42.8(b)(4)(i) et seq.
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`Please address all correspondence and service to both counsel as listed
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`above. Patent Owner consents to service by email at PGR48751-0007PS1@fr.com
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`and PTABInbound@fr.com (ref.: Docket No. 48751-0007PS1).
`
`3
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`

`

`Case PGR2020-00068
`Attorney Docket No: 48751-0007PS1
`Respectfully submitted,
`
`/Dorothy P. Whelan/
`Dorothy P. Whelan
`Reg. No. 33,814
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`
`
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`
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`Date: June 18, 2020
`
`
`Customer Number 26191
`Fish & Richardson P.C.
`Telephone: (612) 337-2509
`Facsimile: (877) 769-7945
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`4
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`

`

`Case PGR2020-00068
`Attorney Docket No: 48751-0007PS1
`
`
`
`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e), the undersigned certifies that on June 18,
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`2020, a complete and entire copy of this Patent Owner Exela Pharma Sciences,
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`LLC’s Mandatory Notices and Power of Attorney were provided via email, to the
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`Petitioner by serving the email correspondence addresses of record as follows:
`
`Ralph J. Gabric
`Eugene Goryunov
`Judy K. He
`Jeff Wolfson
`Haynes and Boone LLP
`2323 Victory Ave., Suite 700
`Dallas, TX 75219
`
`Email: ralph.gabric.ipr@haynesboone.com
`Email: eugene.goryunov.ipr@haynesboone.com
`Email: judy.he.ipr@haynesboone.com
`Email: jeff.wolfson.ipr@haynesboone.com
`
`
`
`
`
`
`
`/Edward G. Faeth/
`Edward G. Faeth
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 626-6420
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`5
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