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UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GLAXOSMITHKLINE CONSUMER HEALTHCARE HOLDINGS (US),
`LLC,
`Petitioner,
`
`v.
`
`CIPLA LTD,
`Patent Owner.
`
`Case IPR2020-00368
`Patent 8,163,723
`
`PATENT OWNER MANDATORY NOTICE INFORMATION
`UNDER 37 C.F.R. § 42.8
`
`

`

`
`
`Pursuant to 37 C.F.R. § 42.8(a)(3), Patent Owner, Cipla Ltd. (“Cipla”),
`
`hereby files its Mandatory Notices:
`
`A.
`
`Real Party-in-Interest (§ 42.8(b)(1))
`
`The following real parties-in-interest are identified: Cipla Ltd, Meda
`
`Pharmaceuticals Inc., Meda AB, Mylan N.V., Mylan Inc., and Mylan
`
`Pharmaceuticals Inc.
`
`B.
`
`Related Matters (§ 42.8(b)(2))
`
`(1) The following matters involve U.S. Patent No. 8,163,723 (“the ’723
`
`Patent), related U.S. Patent No. 8,168,620 (“the ’620 Patent”), and related U.S.
`
`Patent No. 9,259,428 (“the ’428 Patent”):
`
`• Meda Pharmaceuticals Inc. v. Teva Pharmaceuticals USA, Inc., No.
`
`1:15-cv00785-LPS (D. Del.) (dismissed on July 28, 2017);
`
`• Meda Pharmaceuticals Inc. v. Perrigo UK FINCO Ltd., No. 1:16-cv-
`
`00794-LPS (D. Del.) (dismissed on July 7, 2017); and
`
`• Meda Pharmaceuticals, Inc. v. Apotex Inc., No. 1:14-cv-01453-LPS
`
`(D. Del.) (dismissed on May 17, 2017).
`
`(2) The following matters involved the related ’620 Patent:
`
`• Argentum Pharmaceuticals LLC v. Cipla Ltd., IPR2017-00807
`
`(PTAB) (terminated by joint motion on May 21, 2018).
`
`(3) The following matters involve co-pending petitions for inter partes
`
`
`
`

`

`
`
`review:
`
`• GlaxoSmithKline Consumer Healthcare Holdings (US) v. Cipla Ltd.,
`
`IPR2020-00369 (pending) (the ’620 patent),
`
`• GlaxoSmithKline Consumer Healthcare Holdings (US) v. Cipla Ltd.,
`
`IPR2020-00370 (pending) (the ’428 patent), and
`
`• GlaxoSmithKline Consumer Healthcare Holdings (US) v. Cipla Ltd.,
`
`IPR2020-00371 (pending) (U.S. Patent No. 9,901,585).
`
`C.
`
`Counsel and Service Information (§§ 42.8(b)(3) and (4))
`
`Patent Owner identifies its lead and backup counsel as shown below:
`
`First Backup Counsel
`Emily J. Greb
`(Reg. No. 68,244)
`Perkins Coie LLP
`33 East Main Street, Suite 201
`Madison, WI 53703
`Greb-ptab@perkinscoie.com
`Tel: (608) 663-7494
`Fax: (608) 283-4494
`
`
`
`Lead Counsel
`Brandon M. White
`(Reg. No. 52,354)
`Perkins Coie LLP
`700 13th St., NW, Suite 600
`Washington, DC 20005
`White-ptab@perkinscoie.com
`Tel: (202) 654-6206
`Fax: (202) 654-9681
`Backup Counsel
`Nathan K. Kelley
`(Reg. No. 45,295)
`Perkins Coie LLP
`700 13th St., NW, Suite 600
`Washington, DC 20005
`Kelley_nathan-ptab@perkinscoie.com
`Tel: (202) 654-3343
`Fax: (202) 654-9574
`
`Please address all correspondence to the lead and backup counsel at the above
`
`
`
`
`
`

`

`
`
`addresses and to dymista@perkinscoie.com. Patent Owner consents to electronic
`
`service to the e-mail addresses above for lead and backup counsel and to
`
`dymista@perkinscoie.com.
`
`D.
`
`Patent Owner Preliminary Response
`
`Patent Owner reserves the right to file a preliminary response at a separate
`
`date.
`
`E.
`
`Patent Owner Power of Attorney
`
`A Power of Attorney to transact all business in the United States Patent and
`
`Trademark office in connection with above-referenced Inter Partes Review from
`
`Patent Owner Cipla Ltd. to the above-designated counsel at Perkins Coie LLP is
`
`being filed concurrently with these Mandatory Notices.
`
`Date: February 21, 2020
`
`
`
`
`
`
`
`Respectfully submitted,
`/s/ Brandon M. White
`Brandon M. White
`Reg. No. 52,354
`
`Counsel for Cipla Ltd.
`
`
`
`

`

`
`
`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6, I hereby certify that the foregoing Patent
`
`Owner Mandatory Notice Information Under 37 C.F.R. § 42.8 was served on February
`
`21, 2020, 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:
`
`Charles E. Lipsey, charles.lipsey@finnegan.com,
`
`Trenton A. Ward, trenton.ward@finnegan.com,
`
`Richard B. Racine, rich.racine@finnegan.com,
`
`Joann M. Neth, Ph.D., joann.neth@finnegan.com,
`
`Shana K. Cyr, Ph.D., shana.cyr@finnegan.com, and
`
`Cipla-GSK-IPR@finnegan.com.
`
`Date: February 21, 2020
`
`
`
`
`
`Respectfully submitted,
`/s/ Brandon M. White
`Brandon M. White
`Reg. No. 52,354
`
`Counsel for Cipla Ltd.
`
`
`
`
`
`

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