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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`OCULAR THERAPEUTIX, INC.
`Petitioner,
`
`v.
`
` MATI THERAPEUTICS, INC.
`Patent Owner
`
`Case No. IPR2019-00442
`Patent No. 9,463,114
`
`
`
`
`MATI THERAPEUTICS, INC.’S MANDATORY NOTICES
`UNDER 37 C.F.R. §42.8
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`Case No. IPR2019-00442
`Patent No.: 9,463,114
`
`
`
`Pursuant to 37 C.F.R. § 42.8, Patent Owner, Mati Therapeutics, Inc., submits
`
`the following required Mandatory Notice information in response to the Petition for
`
`Inter Partes Review of U.S. Patent No. 9,463,114.
`
`A. Real Party-in-Interest
`
`In accordance with 37 C.F.R. § 42.8(b)(1), Patent Owner identifies Mati
`
`Therapeutics, Inc. as the real party-in-interest.
`
`B.
`
`Related Matters
`
`In accordance with 37 C.F.R. § 42.8(b)(2), Patent Owner identifies the
`
`following related matters:
`
`•
`
` Petitioner filed another petition requesting inter partes review directed
`to U.S. Patent No. 9,849,082, pending as IPR2019-00448. The ‘082
`Patent is not related to the ‘114 Patent in priority, but is generally
`directed to similar technology.
`
`• U.S. Patent Application Nos. 15/247,574 and 15/427,578 are both
`pending, and each includes the ‘114 Patent among its priority claims.
`
`C.
`
`Lead and Back-Up Counsel
`
`In accordance with 37 C.F.R. § 42.8(b)(3), Patent Owner provides the
`
`following designation of counsel:
`
`
`
`2
`
`

`

`Case No. IPR2019-00442
`Patent No.: 9,463,114
`
`Lead Counsel
`Anita Varma
`USPTO Reg. No. 43,221
`White & Case LLP
`75 State Street
`Boston, MA 02109
`Phone: 617-979-9326
`Fax: 617-979-9301
`Email: anita.varma@whitecase.com
`
`
`
`
`Back-Up Counsel
`David Tennant
`USPTO Reg. No. 48,362
`White & Case LLP
`701 Thirteenth Street
`Washington, DC 20005-3807
`Phone: 202-626-3684
`Fax: 202-639-9355
`Email: dtennant@whitecase.com
`
`Grace Wang
`USPTO Reg. 69,892
`White & Case LLP
`1221 Avenue of the Americas
`New York, NY 10020-1095
`Phone: 212-819-8574
`Fax: 212-354-8113
`Email: grace.wang@whitecase.com
`
`Yang Xu
`USPTO Reg. 67,268
`White & Case LLP
`2 Palo Alto Square, Suite 900
`Palo Alto, CA 94306
`Phone: 650-213-0333
`Fax: 650-213-8158
`Email: yang.xu@whitecase.com
`
`
`
`
`
`
`
`
`3
`
`

`

`Case No. IPR2019-00442
`Patent No.: 9,463,114
`
`D.
`
`Electronic Service
`
`In accordance with 37 C.F.R. § 42.8(b)(4), Patent Owner consents to
`
`electronic service by email at the email addresses provided above.
`
`Dated: January 18, 2019
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/Anita Varma/
`Anita Varma
`Reg. No.: 43,221
`
`
`4
`
`

`

`Case No. IPR2019-00442
`Patent No.: 9,463,114
`
`
`CERTIFICATE OF SERVICE
`I certify that the foregoing Patent Owner’s Mandatory Notices Under 37
`
`C.F.R. § 42.8 and accompanying Patent Owner’s Power of Attorney were served on
`
`this 18th day of January 2019, on the Petitioner at the email correspondence address
`
`of the Petitioner as follows:
`
`Brian M. Seeve: bseeve@mccarter.com
`
`Kia L. Freeman: kfreeman@mccarter.com
`
`Erik Paul Belt: ebelt@mccarter.com
`
`Wyley S. Proctor: wproctor@mccarter.com
`
`Thomas F. Foley: tfoley@mccarter.com
`
`OCLIPR@mccarter.com
`
`
`Date: January 18, 2019
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Anita Varma/
`Anita Varma
`Reg. No.: 43,221
`Counsel for Patent Owner
`
`
`
`5
`
`

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