throbber
UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`ALEMBIC PHARMACEUTICALS LIMITED,
`Petitioner,
`
`
`
`v.
`
`
`
`UCB PHARMA GMBH,
`Patent Owner.
`
`
`
`Case IPR2016-01596
`Patent 6,858,650 B1
`
`
`
`PATENT OWNER MANDATORY NOTICE INFORMATION
`UNDER 37 C.F.R. § 42.8
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`
`IPR2016-01596
`Patent 6,858,650 B1
`A. Real Party in Interest
`UCB Pharma GmbH (“UCB”), formerly known as Schwarz Pharma AG and
`
`organized and existing under the laws of Germany, holds title to U.S. Patent No.
`
`6,858,650 (the “‘650 patent”) and is the real party-in-interest.
`
`B. Related Matters
`UCB and Pfizer Inc. (“Pfizer”), the exclusive licensee of the ‘650 patent,
`
`have sued Mylan Pharmaceuticals Inc. for infringement of the ‘650 patent in the
`
`following pending actions: Pfizer, Inc. and UCB Pharma GmbH v. Mylan
`
`Pharmaceuticals, Inc., No. 1:15-cv-00079-GMS (D. Del.) and Pfizer Inc. and UCB
`
`Pharma GmbH v. Mylan Pharmaceuticals Inc., Case No. 1:15-cv-00013-IMK
`
`(N.D.W.Va.).
`
`The following action also involved the ‘650 patent: Pfizer, Inc. and UCB
`
`Pharma GmbH v. Sandoz, Inc., et al., No. 1:13-cv-01110-GMS (D. Del.).
`
`Following trial before Judge Gregory Sleet in the District Court of Delaware in
`
`July 2015, judgment was entered that, inter alia, (1) the claims are not obvious
`
`under 35 U.S.C. § 103, (2) the claims are not anticipated under 35 U.S.C. § 102,
`
`and (3) the claims are not indefinite under 35 U.S.C. § 112. Defendants did not
`
`file a Notice of Appeal to the Federal Circuit. Defendants’ arguments at trial
`
`regarding obviousness included the assertion of, inter alia, Brynne (Petitioner’s
`
`Ex. 1007), Bundgaard (Petitioner’s Ex. 1012), Johansson (Petitioner’s Ex. 1005),
`
`
`
`
`2
`
`
`
`
`
`

`
`IPR2016-01596
`Patent 6,858,650 B1
`and the Detrol Label (Petitioner’s Ex. 1009). Defendants identified Postlind
`
`(Petitioner’s Ex. 1010) in the Pretrial Order as a prior art reference potentially
`
`relevant for obviousness.
`
`The Patent Trial and Appeal Board has instituted Inter Partes Review of
`
`Petitions filed by Mylan Pharmaceuticals Inc. and Mylan Laboratories Limited,
`
`which are listed in the table below, relating to either the ‘650 patent or four other
`
`patents related to the ‘650 patent (U.S. Patent Nos. 7,384,980; 7,855,230;
`
`7,985,772; and 8,338,478):
`
`Patent No. Petitioners
`
`Case No.
`
`IPR Filing Date Claims
`
`IPR2016-00510 January 28, 2016 1-5, 21-24
`
`IPR2016-00512 January 28, 2016 1-16
`
`IPR2016-00514 January 28, 2016 1-5
`
`6,858,650 Mylan
`Pharmaceuticals
`Inc. and Mylan
`Laboratories
`Limited
`7,384,980 Mylan
`Pharmaceuticals
`Inc. and Mylan
`Laboratories
`Limited
`
`7,855,230 Mylan
`Pharmaceuticals
`Inc. and Mylan
`Laboratories
`Limited
`
`
`
`
`
`3
`
`
`
`
`
`

`
`IPR2016-01596
`Patent 6,858,650 B1
`7,985,772 Mylan
`Pharmaceuticals
`Inc. and Mylan
`Laboratories
`Limited
`
`8,338,478 Mylan
`Pharmaceuticals
`Inc. and Mylan
`Laboratories
`Limited
`
`
`IPR2016-00517 January 28, 2016 1, 3, 4, 6-8
`
`IPR2016-00516 January 28, 2016 1-3, 5-8, 10-
`12
`
`Additionally, UCB understands that Torrent Pharmaceuticals Limited and
`
`Amerigen Pharmaceuticals Limited have each filed an Inter Partes Review
`
`Petition relating to the ‘650 patent, as well as Motions for Joinder of their petitions
`
`with IPR2016-00510:
`
`Patent No. Petitioner
`
`Case No.
`
`IPR Filing Date Claims
`
`6,858,650
`
`Torrent
`Pharmaceuticals
`Limited
`
`6,858,650 Amerigen
`Pharmaceuticals
`Limited
`
`
`
`IPR2016-01636 August 18, 2016 1-5, 21-24
`
`IPR2016-01665 August 22, 2016 1-5, 21-24
`
`C. Lead and Back-up Counsel
`Lead Counsel
`Jeffrey Oelke, Reg. No. 37,409
`White & Case LLP
`1155 Avenue of the Americas
`
`
`
`
`4
`
`
`
`
`
`

`
`IPR2016-01596
`Patent 6,858,650 B1
`New York, NY 10036
`(212) 819-8936
`joelke@whitecase.com
`
`
`
`Back-Up Counsel
`
`James Trainor, Reg. No. 52,297
`White & Case LLP
`1155 Avenue of the Americas
`New York, NY 10036
`(212) 819-8580
`jtrainor@whitecase.com
`
`Robert Counihan, Reg. No. 61,382
`White & Case LLP
`1155 Avenue of the Americas
`New York, NY 10036
`(212) 819-8255
`rcounihan@whitecase.com
`
`
`
`
`D. Service Information
`
`UCB may be served at its counsel, White & Case LLP, at the above-
`
`indicated email addresses.
`
`E. Patent Owner Preliminary Response
`
`Patent Owner reserves the right to file a preliminary response at a later date.
`
`
`
`
`5
`
`
`
`
`
`

`
`IPR2016-01596
`Patent 6,858,650 B1
`
`Date: September 9, 2016
`
`WHITE & CASE LLP
`
`/s/ Jeffrey J. Oelke (Electronically signed)
`Jeffrey J. Oelke, Reg. No. 37,409
`James S. Trainor, Jr., Reg. No. 52,297
`Robert Counihan, Reg. No. 61,382
`White & Case LLP
`1155 Avenue of the Americas
`New York, NY 10036
`(212) 819-8200
`
`Attorneys for UCB Pharma GmbH
`
`
`
`
`
`
`
`
`6
`
`
`
`
`
`
`
`

`
`IPR2016-01596
`Patent 6,858,650 B1
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Patent Owner
`
`Mandatory Notice Information Under 37 C.F.R. § 42.8 and the associated Power of
`
`Attorney document were served on September 9, 2016, 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:
`
`Manish K. Mehta
`Sheppard Mullin Richter & Hampton, LLP
`70 W. Madison St., 48th Floor
`Chicago, Illinois 60602
`(312) 499-6352
`mmehta@sheppardmullin.com
`
`Laura Burson
`Sheppard Mullin Richter & Hampton, LLP
`333 S. Hope St., 43rd Floor
`Los Angeles, California 90071
`(213) 617-5527
`lburson@sheppardmullin.com
`
`
`
`Respectfully submitted,
`
`/s/ Jeffrey J. Oelke (Electronically signed)
`Jeffrey J. Oelke
`Reg. No. 37,409
`Phone: (212) 819-8936
`
`
`
`Date: September 9, 2016
`
`
`
`
`
`7

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket