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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`Ambry Genetics Corporation
`Petitioners
`
`v.
`
`The Johns Hopkins University,
`Patent Owner
`
`
`
`
`Case No. IPR2017-02093
`
`Patent No. 7,824,889
`
`PATENT OWNER’S MANDATORY DISCLOSURES
`UNDER 37 C.F.R. § 42.8
`
`
`
`
`
`U.S. Patent No. 7,824,889
`IPR2017-02093
`Patent Owner’s Mandatory Disclosures
`
`I.
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`37 C.F.R. § 42.8(b)(1) - NOTICE OF REAL PARTY IN INTEREST
`
`The real parties in interest are The Johns Hopkins University, Esoterix
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`Genetic Laboratories, LLC and Laboratory Corporation of America Holdings.
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`II.
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`37 C.F.R. § 42.8(b)(2) – RELATED MATTERS
`
`U.S. Patent No. 7,824,889 (the “’889 patent”) has been asserted against
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`Petitioner Ambry Genetics Corporation in the Middle District of North Carolina in
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`the litigation styled as: Esoterix Genetic Laboratories, LLC and The Johns Hopkins
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`University v. Ambry Genetics Corporation, Case No. 16-cv-1111 (MDNC).
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`Petitioner filed petitions to institute inter partes reviews of three patents that are
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`related to the ’889 patent, IPR2017-02086 (U.S. Patent No. 6,440,706), IPR2017-
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`02096 (U.S. Patent No. 8,859,206), and IPR2017-02095 (U.S. Patent No.
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`7,915,015). The ’889 patent was also asserted in the litigation styled as: Esoterix
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`Genetic Laboratories, LLC and The Johns Hopkins University v. Myriad Genetics,
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`Inc. and Myriad Genetic Laboratories, Inc., Case No. 16-cv-1112 (MDNC), but that
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`case has recently been dismissed. Myriad Genetics, Inc., Myriad Genetic
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`Laboratories, Inc., Bio-Rad Laboratories, Inc., and Raindance Technologies, Inc.
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`had filed petitions for inter partes review regarding the same patents (IPR-01102, -
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`01105, -01106 and -01107). Those proceedings have been terminated.
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`The ’889 patent was previously asserted in the litigation styled as: Esoterix
`
`Genetic Laboratories, LLC and The Johns Hopkins University v. Life Technologies
`2
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`
`
`U.S. Patent No. 7,824,889
`IPR2017-02093
`Patent Owner’s Mandatory Disclosures
`
`Corp, et al., Civil Action No. 1:12-cv-01173-CCE-JEP (MDNC). The ’889 patent
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`was reexamined by the USPTO (Reexamination Control No. 90/012895), and a
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`reexamination certificate issued on October 31, 2014.
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`III. 37 C.F.R. § 42.8(b)(3) - LEAD AND BACKUP COUNSEL
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`Patent Owner hereby identifies the following lead and backup counsel:
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`Lead Counsel
`Tina W. McKeon PhD.
`Registration No. 43,791
`tmckeon@kilpatricktownsend.com
`
`Postal and Hand-Delivery Address:
`Kilpatrick Townsend & Stockton LLP
`1100 Peachtree Street, N.E., Suite 2800
`Atlanta, GA 30309-4528
`Telephone: 404-815-6103
`
`Back-Up Counsel
`John C. Alemanni
`Reg. No. 47,384
`jalemanni@kilpatricktownsend.com
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`Postal and Hand-Delivery Address:
`Kilpatrick Townsend & Stockton LLP
`4208 Six Forks Road, Suite 1400
`Raleigh, NC 27609
`Telephone: 919-420-1724
`
`Benjamin C. Hsing
`Registration No. 34,528
`bhsing@bakerlaw.com
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`Postal and Hand-Delivery Address:
`Baker & Hostetler, LLP
`45 Rockefeller Plaza
`New York, NY 10111-0100
`Telephone: 212-589-4260
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`A Power of Attorney naming the above lead and backup counsel as attorneys
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`of record is filed concurrently with this paper. Patent Owner hereby consents to
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`service via email
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`to
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`its
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`lead and backup counsel at KTS-Ambry-
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`IPR@kilpatricktownsend.com.
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`
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`3
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`U.S. Patent No. 7,824,889
`IPR2017-02093
`Patent Owner’s Mandatory Disclosures
`
`IV. PRELIMINARY RESPONSE
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`Patent Owner reserves the right to file a preliminary response at a later date.
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`
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`Dated: September 29, 2017
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`
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`
`
`By: /Tina W. McKeon PhD./
`
`Tina W. McKeon Ph.D.
`Reg. No. 43,791
`Lead Counsel for Patent Owner
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`4
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`U.S. Patent No. 7,824,889
`IPR2017-02093
`Patent Owner’s Mandatory Disclosures
`
`
`
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of these Mandatory Disclosures
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`was served via email on the date below, upon the following:
`
`Bhanu Sadasivan
`Jacqueline F. Mahoney
`McDermott Will & Emery LLP
`275 Middlefield Road, Suite 100
`Menlo Park, CA 94025
`Telephone: 650-815-7537
`bsadasivan@mwe.com
`jfmahoney@mwe.com
`AmbryEsoterixMWE@mwe.com
`IPdocketMWE@MWE.com
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`
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`Dated: September 29, 2017
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`
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`By: /Tina W. McKeon PhD./
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`Tina W. McKeon Ph.D.
`Reg. No. 43,791
`Lead Counsel for Patent Owner
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`5
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