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`Paper No. ____
`Filed December 1, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
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`MYLAN PHARMACEUTICALS INC., TEVA PHARMACEUTICALS USA,
`INC., and AKORN INC.1
`Petitioners,
`v.
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`ALLERGAN, INC.,
`Patent Owner.
`__________
`
`Case IPR2016-01127 (8,685,930 B2)
`Case IPR2016-01128 (8,629,111 B2)
`Case IPR2016-01129 (8,642,556 B2)
`Case IPR2016-01130 (8,633,162 B2)
`Case IPR2016-01131 (8,648,048 B2)
`Case IPR2016-01132 (9,248,191 B2)
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`COMMENTS OF AMICI CURIAE DEVA HOLDING A.S. IN RESPONSE
`TO THE BOARD’S INVITATION FOR AMICUS BRIEFS REGARDING
`THE TRIBE’S MOTION TO TERMINATE
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`1 Cases IPR2017-00576, IPR2017-00594, IPR2017-00578, IPR2017-00596,
`IPR2017-00579, IPR2017-00598, IPR2017-00583, IPR2017-00599, IPR2017-
`00585, IPR2017-00600, IPR2017-00586 and IPR2017-00601 have respectively
`been joined with the above-captioned proceedings. The word-for-word identical
`paper is filed in each proceeding identified in the above caption pursuant to the
`Board’s Scheduling Order (Paper 10).
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`Table of Contents
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`I.
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`IDENTITY OF INTEREST OF AMICI CURIAE…………………………..1
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`II. ARGUMENT ……………………………………………………………....3
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`A.
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`The Tribe’s and Allergan’s actions in related litigation belie
`their claims in these Board proceedings that Allergan and the Tribe lack
`identical interests, and Allergan cannot represent the Tribe
`in its absence…….........................................................................................3
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`The Tribe’s and Allergan’s actions in other related litigation belie
`their claims that Allergan and the Tribe lack identical interests,
`and Allergan cannot represent the Tribe in its absence..……….........……..5
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`B.
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`
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`III. CONCLUSION………………………………………………………….….6
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`CERTIFICATE OF SERVICE………………………………………..……7
`
`ii
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`I.
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`IDENTITY OF INTEREST OF AMICI CURIAE
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`DEVA Holding A.S. (“DEVA”) is a Turkish company involved in a pending
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`lawsuit in the United States District Court for the Eastern District of Texas filed by
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`Allergan, Inc. (“Allergan”) against DEVA, Civil Action No. 2:16-cv-1447-WCB
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`(“the Pending Litigation”). In this action, Allergan alleges that Deva’s proposed
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`generic version of the Restasis® Product, which is the subject of an Abbreviated
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`New Drug Application filed by DEVA with the United States Food and Drug
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`Administration, will infringe United States Patent Nos. 8,629,111, 8,633,162,
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`8,642,556, 8,648,048, 8,685,930, and 9,248,191 (“the Patents-in-Suit”). DEVA
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`asserts that the Patents-In-Suit are invalid or not infringed by its ANDA product.
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`The Pending Litigation is in its early stages, with the parties presently engaged in
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`fact discovery and trial set for October 15, 2018. Recently, Allergan and Deva
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`jointly submitted a stipulation to the Court regarding claim construction, without
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`participation of the Saint Regis Mohawk Tribe (“the Tribe”).
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`Because the Board provides limited procedural guidance regarding a filing
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`of this nature, we respectfully submit these comments to assist the Board’s
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`evaluation of the Tribe’s Motion to Terminate these IPR proceedings. In Paper 96,
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`the Board authorized any interested amici curiae to file briefing on the pending
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`Motion to Terminate by December 1, 2017. We certify that no party or its counsel
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`1
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`
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`to the above-captioned Board proceedings authored these comments in whole or in
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`part, no such party or its counsel contributed money intended to fund the
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`preparation or submission of these comments, and no person other than the amici
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`contributed money intended to fund the preparation or submission of these
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`comments.
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`2
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`
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`II. ARGUMENT
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`A.
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`The Tribe’s and Allergan’s actions in related litigation belie their
`claims in these Board proceedings that Allergan and the Tribe
`lack identical interests, and Allergan cannot represent the Tribe
`in its absence.
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`Actions speak louder than words. In its Corrected Motion to Terminate
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`(Dkt. 81 at 16), the Tribe argues that it is an indispensable party under the Board’s
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`identity-of-interest test. Specifically, the Tribe says that the Board cannot proceed
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`“in the absence of the Tribe because Allergan and the Tribe do not have identical
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`interests, and Allergan cannot represent the Tribe in its absence.” (Id.) In support
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`of that argument, the Tribe further says that claim construction positions “might”
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`serve Allergan’s interest differently than the Tribe’s or that the Tribe might “desire
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`to not risk the validity of the Patents-at-Issue.” (Id. at 22.) Despite these hollow
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`words, the most recent actions by Allergan and the Tribe in the Pending Litigation
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`against DEVA speak volumes to the contrary.
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`
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`In the Pending Litigation against DEVA, Allergan acted by filing a letter
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`with the Court on September 8, 2017 stating that “[t]his morning, Allergan
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`assigned its rights in a number of patents, including the patents-in-suit, to the Saint
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`Regis Mohawk Tribe.” (Pending Litigation, D.I. 44-1.) Allergan further states that
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`“Allergan does not anticipate that this assignment will have any impact on the
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`litigation or the issues before the Court, other than it expects to join the Tribe as a
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`co-plaintiff in due course.” (Id.) Here is whereAllergan’s and the Tribe’s
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`3
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`inconsistent positions before this Board and the district court become apparent. On
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`one hand, in the Pending Litigation against DEVA, Allergan itself informs the
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`Court that it does not anticipate that the Tribe’s involvement “will have any impact
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`on the litigation or the issues before the Court.” But on the other hand, the Tribe
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`argues to this Board that it may need to take claim construction positions
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`competing with Allergan.
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`Just as important, since the September 8, 2017 letter to the Court, neither
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`Allergan or the Tribe have asked that the Tribe be joined as a co-plaintiff to the
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`Pending Litigation. These actions by Allergan and the Tribe demonstrate that they
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`understand and agree that Allergan can and is, in fact, currently representing the
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`Tribe’s identical interests in matters relating to the patents-in-suit. This is also
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`confirmed by the License Agreement stating that Allergan, not the Tribe, retains
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`control over litigation. (EX2087 §§ 5.1.1., 5.2.2., 5.3.)
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`The most telling example showing that, for all practical purposes, Allergan’s
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`and the Tribe’s interests are identically aligned concerns the recent joint filing by
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`Deva and Allergan regarding claim construction in the Pending Litigation. Even
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`after the filing of the Corrected Motion to Terminate on September 22, 2017 (Dkt.
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`81) and corresponding Reply brief on October 20, 2017 (Dkt. 93) with the Board,
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`on November 10, 2017, Deva and Allergan filed a Joint Motion for Stipulation
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`Concerning Claim Construction with the court in the Pending Litigation. (Pending
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`4
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`Litigation, D.I. 47). Noticeably absent from this filing is the Tribe as a named
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`party, let alone any allegation that the Tribe may potentially have a competing
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`claim construction. This filing action by Allergan, coupled with the filing inaction
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`by the Tribe on a substantive issue, clearly demonstrates that the Tribe’s interests
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`are identically aligned with those of Allergan, despite their hollow arguments to
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`the contrary before the Board.
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`B.
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`The Tribe’s and Allergan’s actions in other related litigation belie
`their claims that Allergan and the Tribe lack identical interests,
`and Allergan cannot represent the Tribe in its absence.
`
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`The words of Allergan and the Tribe before the Board are not only hollow
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`and inconsistent with their actions in the Pending Litigation against DEVA, they
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`are equally inconsistent with actions taken in other district court litigations. As
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`recognized by the Tribe in its Reply (Dkt. 93 at 4), the United States District Court
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`for the Eastern District of Texas recently invalidated all asserted claims of the
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`Patents-In-Suit in a different action before Judge Bryson, Allergan et al. v. Teva et
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`al., 2:15-cv-1455-WCB (E.D.Tex.). (EX. 1165.) In response to this judgment, the
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`Tribe says “Allergan could choose not to appeal the district court opinion and
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`thereby avoid paying any additional royalties to the Tribe, which potentially total
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`more than $100,000,000.” (Dkt. 93 at 4). Those arguments to this Board again are
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`inconsistent with the actions of Allergan and the Tribe, when a mere seven days
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`later they jointly filed a notice of appeal with the Federal Circuit on October 27,
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`
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`5
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`
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`2017. Allergan et al. v. Teva et al., 2:15-cv-1455-WCB (E.D.Tex.) (D.I. 527).
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`This again demonstrates that the interests of Allergan and the Tribe are identical
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`for all practical purposes and the Tribe’s Motion to Terminate should be denied.
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`III. CONCLUSION
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`
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`For the foregoing reasons, we respectfully submit these comments and
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`respectfully request the Board to deny the Tribe’s Motion to Terminate.
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`Respectfully submitted,
`
`/Joseph E. Cwik/
`Joseph E. Cwik
`Reg. No. 38,421
`joe@amintalati.com
`Shashank Upadhye
`shashank@amintalati.com
`Erin R. Conway
`erin@amintalati.com
`AMIN TALATI UPADHYE LLP
`100 S. Wacker Dr., Suite 2000
`Chicago IL 60606
`Tel: (312) 466-1033
`Fax: (312) 884-7352
`Attorneys for DEVA Holding
`A.S.
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`December 1, 2017
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`Dated:
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`6
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`CERTIFICATE OF SERVICE
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`
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`Pursuant to 37 C.F.R. §42.6(e)(4) and 42.205(b), the undersigned certifies
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`that on December 1, 2017, a complete and entire copy of COMMENTS OF AMICI
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`CURIAE DEVA HOLDING A.S. IN RESPONSE TO THE BOARD’S
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`INVITATION FOR AMICUS BRIEFS REGARDING THE TRIBE’S MOTION
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`TO TERMINATE was provided, via electronic service, to the Petitioners and
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`Patent Owners by serving the correspondence address of record as follows:
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`
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`Steven W. Parmelee
`Michael T. Rosato
`Jad A. Mills
`WILSON SONSINI GOODRICH & ROSATI
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104-7036
`sparmelee@wsgr.com
`mrosato@wsgr.com
`jmills@wsgr.com
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`Wendy L. Devine
`WILSON SONSINI GOODRICH & ROSATI
`One Market Street, Spear Tower Floor 33
`San Francisco, CA 94105-1126
`wdevine@wsgr.com
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`Douglas H. Carsten
`WILSON SONSINI GOODRICH & ROSATI
`12235 El Camino Real, Suite 200
`San Diego, CA 92130
`dcarsten@wsgr.com
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`Richard Torczon
`WILSON SONSINI GOODRICH & ROSATI
`
`7
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`1700 K Street NW, 5th Floor
`Washington, DC 20006
`rtorczon@wsgr.com
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`Brandon M. White
`Crystal Canterbury
`Charles G. Curtis, Jr.
`Jennifer MacLean
`Benjamin S. Sharp
`Shannon M. Bloodworth
`PERKINS COIE LLP
`700 13th Street NW
`Washington DC 20005
`bmwhite@perkinscoie.com
`ccanterbury@perkinscoie.com
`ccurtis@perkinscoie.com
`jmaclean@perkinscoie.com
`bsharp@perkinscoie.com
`sbloodworth@perkinscoie.com
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`Eric D. Miller
`PERKINS COIE LLP
`1201 Third Avenue, Suite 4900
`Seattle, WA 98101-3099
`emiller@perkinscoie.com
`Attorneys for Mylan Pharmaceuticas, Inc.
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`Michael R. Dzwonczyk
`Azy S. Kokabi
`Travis B. Ribar
`SUGHRUE MION, PLLC
`2100 Pennsylvania Ave., NW, Suite 800
`Washington, DC 20037
`mdzwonczyk@sughrue.com
`akokabi@sughrue.com
`tribar@sughrue.com
`Attorneys for Akorn Inc.
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`Gary J. Speier
`Mark D. Schuman
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`8
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`CARLSON, CASPERS, VANDENBURGH, LINDQUIST & SCHUMAN, P.A.
`225 South Sixth Street, Suite 4200
`Minneapolis, MN 55402
`gspeier@carlsoncaspers.com
`mschuman@carlsoncaspers.com
`IPRCyclosporine@carlsoncaspers.com
`Attorneys for Teva Pharmaceuticals
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`Alfonso Chan
`achan@shorechan.com
`Michael Shore
`mshore@shorechan.com
`Christopher Evans
`cevans@shorechan.com
`SHORE CHAN DEPUMPO LLP
`901 Main Street, Suite 3300
`Dallas, TX 75201
`Tel: (214) 593-9110
`Fax: (214) 593-9111
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`Marsha Schmidt
`Attorney at Law
`14928 Perrywood Drive
`Burtonsville, MD 20866
`marsha@mkschmidtlaw.com
`Tel: (301) 949-5176
`Attorneys for Saint Regis Mohawk Tribe
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`Dorothy P. Whelan
`Michael Kane
`Susan Morrison Colletti
`Robert M. Oakes
`Jonathan Singer
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Email: IPR13351-0008IP1@fr.com
`Email: IPR13351-0008IP2@fr.com
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`9
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`Email: IPR13351-0008IP3@fr.com
`Email: IPR13351-0008IP4@fr.com
`Email: IPR13351-0008IP5@fr.com
`Email: IPR13351-0008IP6@fr.com
`PTABinbound@fr.com
`Attorneys for Allergan, Inc.
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`December 1, 2017
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`Respectfully submitted,
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`/Joseph E. Cwik/
`Joseph E. Cwik
`Reg. No. 38,421
`joe@amintalati.com
`Shashank Upadhye
`shashank@amintalati.com
`Erin R. Conway
`erin@amintalati.com
`AMIN TALATI UPADHYE LLP
`100 S. Wacker Dr., Suite 2000
`Chicago IL 60606
`Tel: (312) 466-1033
`Fax: (312) 884-7352
`Attorneys for DEVA Holding
`A.S.
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`10
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`Dated:
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