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UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`MYLAN PHARMACEUTICALS INC. and MYLAN LABORATORIES
`LIMITED,
`Petitioner,
`
`v.
`
`UCB PHARMA GMBH,
`Patent Owner.
`
`Case No. IPR2016-005101
`Patent No. 6,858,650 B1
`
`
`
`
`
`PATENT OWNER’S UPDATED MANDATORY
`NOTICE INFORMATION
`UNDER 37 C.F.R. § 42.8
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1 Petitioners Alembic Pharmaceuticals Limited from IPR2016-01596, Torrent
`Pharmaceuticals Limited from IPR2016-01636, and Amerigen Pharmaceuticals
`Limited from IPR2016-01665 have been joined as Petitioners to this proceeding.
`
`
`
`
`
`
`
`
`
`
`

`

`
`
`
`
`Patent Owner UCB Pharma GmbH hereby submits Updated Mandatory
`
`Notice Information pursuant to 37 C.F.R. § 42.8 to identify any other judicial or
`
`administrative matter that would affect, or be affected by, a decision in the
`
`proceeding. Patent Owner identifies that the District Court of Delaware has
`
`conducted a trial in the related matter of Pfizer, Inc. and UCB Pharma GmbH v.
`
`Mylan Pharmaceuticals Inc., No. 1:15-cv-00079-GMS (D. Del.). At the
`
`conclusion of the 3-day bench trial, which commenced on January 23, 2017, Judge
`
`Sleet entered a general verdict in favor of Plaintiffs and found the asserted claims
`
`of U.S. Patent Nos. 6,858,650; 7,384,980; 7,855,230; 7,985,772; and 8,338,478
`
`(collectively, the “asserted patents”) not obvious.
`
`Additionally, UCB Pharma GmbH and Pfizer Inc., the exclusive licensee of
`
`the asserted patents, have filed suit against Torrent Pharmaceuticals Limited and
`
`Torrent Pharma Incorporated for infringement of the asserted patents in the
`
`following action: Pfizer, Inc. and UCB Pharma GmbH v. Torrent Pharmaceuticals
`
`Limited et al., No. 1:17-cv-00112-GMS (D. Del.).
`
`
`
`
`
`
`2
`
`
`
`
`
`

`

`
`
`Date: February 16, 2017
`
`
`
`
`
`WHITE & CASE LLP
`
`/s/ Jeffrey J. Oelke_________________
`Jeffrey J. Oelke, Reg. No. 37,409
`joelke@whitecase.com
`James S. Trainor, Jr., Reg. No. 52,297
`jtrainor@whitecase.com
`Robert Counihan, Reg. No. 61,382
`rcounihan@whitecase.com
`White & Case LLP
`1155 Avenue of the Americas
`New York, NY 10036
`(212) 819-8200
`
`Attorneys for UCB Pharma GmbH
`
`
`
`
`3
`
`
`
`
`
`

`

`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Patent
`
`Owner’s Updated Mandatory Notice Information Under 37 C.F.R. § 42.8 was
`
`served on February 16, 2017, by filing this document through the Patent Trial and
`
`Appeal Board End to End System as well as delivering a copy via electronic mail
`
`upon the following attorneys of record for the Petitioner:
`
`
`Mitchell G. Stockwell, Reg. No. 39,389
`mstockwell@kilpatricktownsend.com
`D. Clay Holloway, Reg. No. 58,011
`cholloway@kilpatricktownsend.com
`Alyson L. Wooten, Reg. No. 58,045
`awooten@kilpatricktownsend.com
`Kilpatrick Townsend & Stockton LLP
`1100 Peachtree Street, NE Suite 2800
`Atlanta, Georgia 30309
`(404) 815-6500
`
`
`
`Bill Hare
`bill@miplaw.com
`Gabriella Materassi
`materassi@miplaw.com
`Renita Rathinam
`rathinam@miplaw.com
`McNeely, Hare & War LLP
`5335 Wisconsin Ave, NW, Suite 440
`Washington, DC 20015
`(202) 640-1801
`
`
`
`
`
`
`4
`
`
`
`
`
`

`

`Lawrence M. Sung
`lsung@wileyrein.com
`A. Neal Seth
`nseth@wileyrein.com
`Wiley Rein LLP
`1776 K Street NW
`Washington, DC 20006
`(202) 719-7000
`
`Manish K. Mehta
`mmehta@sheppardmullin.com
`Laura M. Burson
`lburson@sheppardmullin.com
`Sheppard, Mullin, Richter & Hampton LLP
`Three First National Plaza
`70 West Madison Street, 48th Floor
`Chicago, IL 60602
`(312) 499-6300
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Date: February 16, 2017
`
`
`
`
`
`
`
`5
`
`
`
`Respectfully submitted
`
`/s/ Jeffrey J. Oelke_____________
`Jeffrey J. Oelke
`Reg. No. 37,409
`Phone: (212) 819-8936
`
`
`
`

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