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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MYLAN PHARMACEUTICALS INC.,
`Petitioner
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`v.
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`SHIRE LABORATORIES, INC.,
`Patent Owner
`____________
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`Case IPR2017-00011
`Patent RE41,148
`____________
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`PATENT OWNER MANDATORY NOTICES
`UNDER 37 C.F.R. § 42.8(a)(2)
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`Pursuant to 37 C.F.R. § 42.8, Patent Owner Shire LLC (“Patent Owner”)
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`Case No. IPR2017-00011
`Reissue Patent No. 41,148
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`submits the following Mandatory Notices in response to the Petition for Inter
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`Partes Review of U.S. Reissue Patent No. 41,148.
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`I.
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`Real Party-In-Interest – 37 C.F.R. § 42.8(b)(1)
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`The real parties-in-interest are Shire Laboratories, Inc. and Shire LLC.
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`II. Related Matters – 37 C.F.R. § 42.8(b)(2)
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`Judicial Matters
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`The following district court litigations concern the challenged U.S. Reissue
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`Patent RE 41,148 and/or its sister patent RE 42,096.
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`(1) Shire LLC v. Amerigen Pharms. Ltd., No. 14-cv-6095 (D.N.J filed Oct.
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`1, 2014);
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`(2) Shire LLC v. Par Pharm., Inc., No. 15-cv-1454 (D.N.J. filed Feb. 26,
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`2015);
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`(3) Shire LLC v. Corepharma, LLC, No. 14-cv-5694 (D.N.J. filed Sept. 12,
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`2014);
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`(4) Shire LLC v. Neos Therapeutics, Inc., No. 13-cv-1452 (N.D. Tex.
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`dismissed by stipulation Aug. 13, 2014);
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`(5) Shire LLC v. Sandoz, Inc., No. 07-cv-197 (D. Col.);
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`(6) Shire Labs., Inc. v. Impax Labs, Inc., No. 03-cv-1164 (D. Del.);
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`(7) Shire Labs., Inc. v. Barr Labs., Inc., No. 03-cv-1219, -6632 (S.D.N.Y.);
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`1
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`Case No. IPR2017-00011
`Reissue Patent No. 41,148
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`(8) Shire LLC v. Watson Pharms., Inc., No. 11-cv-02340 (S.D.N.Y.); and
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`(9) Shire LLC v. Colony Pharms., Inc., No. 07-cv-00718 (D. Md.).
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`Administrative Matters
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`RE 41,148 (the challenged patent) claims priority to U.S. Application No.
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`09/807,462 and is a continuation-in-part of U.S. Application No. 09/ 176,542,
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`which ultimately reissued as RE42,096. The ‘096 reissue patent is the subject of
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`Amerigen Pharmaceuticals Ltd. v. Shire LLC, IPR2015-02009 and Mylan
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`Pharmaceuticals, Inc. v. Shire Labs, Inc., IPR2016-01033.
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`The Patent Owner is not aware of any other judicial or administrative
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`matters that would affect, or be affected by, a decision in this proceeding.
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`III. Lead and Back-Up Counsel – 37 C.F.R. § 42.8(b)(3)
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`Case No. IPR2017-00011
`Reissue Patent No. 41,148
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`Patent Owner provides the following designation of counsel:
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`Lead Counsel:
`Joseph R. Robinson
`PTO Reg. 33,448
`Troutman Sanders LLP
`875 Third Avenue
`New York, NY 10022
`Phone: 212.704.6246
`Facsimile: 212.704.6288
`joseph.robinson@troutmansanders.com
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`Back-Up Counsel:
`Robert Schaffer
`PTO Reg. 31,194
`Troutman Sanders LLP
`875 Third Avenue
`New York, NY 10022
`Phone: 212.704.6252
`Facsimile: 212.704.6288
`robert.schaffer@troutmansanders.com
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`Dustin B. Weeks
`PTO Reg. 67,466
`Troutman Sanders LLP
`Bank of America Plaza
`600 Peachtree Street NE, Suite 5200
`Atlanta, GA 30308-2231
`Phone: 404.885.3446
`Facsimile: 404.962.6848
`dustin.weeks@troutmansanders.com
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` Power of Attorney is being filed concurrently herewith in accordance with
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`37 C.F.R. § 42.10(b).
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`IV. Service Information – 37 C.F.R. § 42.8(b)(4)
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`Case No. IPR2017-00011
`Reissue Patent No. 41,148
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`Owner provides the following service information:
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`Electronic Mail Addresses:
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`Postal Mailing Address:
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`Telephone Number:
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`Facsimile Number:
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`joseph.robinson@troutmansanders.com
`robert.schaffer@troutmansanders.com
`dustin.weeks@troutmansanders.com
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`Joseph R. Robinson
`Troutman Sanders LLP
`875 Third Avenue
`New York, NY 10022
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`212.704.6246
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`212.704.6288
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`Owner consents to electronic service of all papers concerning this matter at
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`Respectfully submitted,
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`/Joseph R. Robinson/
`Joseph R. Robinson
`PTO Reg. No. 33,448
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`the email addresses provided above.
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`Dated: October 24, 2016
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`Case No. IPR2017-00011
`Reissue Patent No. 41,148
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Patent Owner
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`Mandatory Notices Under 37 C.F.R. § 42.8(a)(2) and the associated power of
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`attorney were served via electronic mail on October 24, 2016 at the following
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`email addresses provided by Petitioner:
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`jitty.malik@alston.com
`bryan.skelton@alston.com
`james.abe@alston.com
`brianna.kadjo@alston.com
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`Respectfully submitted,
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`/Dustin B. Weeks/
`Dustin B. Weeks
`PTO Reg. No. 67,466
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`5
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`Dated: October 24, 2016
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