`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`LUPIN, LTD. and
`LUPIN PHARMACEUTICALS, INC.,
`Petitioners,
`
`v.
`
`AMGEN INC.,
`Patent Owner.
`______________________
`Case IPR2021-00326
`Patent 9,856,287
`______________________
`
`
`
`PATENT OWNER’S MANDATORY NOTICES
`UNDER 37 C.F.R. § 42.8
`
`
`
`
`
`
`
`IPR2021-00326
`Patent 9,856,287
`Pursuant to 37 C.F.R. §42.8, Patent Owner Amgen Inc., hereby submits this
`
`Mandatory Notice.
`
`I. REAL PARTIES-IN-INTEREST (37 C.F.R. § 42.8(b)(1))
`
`The real parties-in-interest are Patent Owner Amgen Inc. and its exclusive
`
`licensee, Amgen Manufacturing, Limited.
`
`II. RELATED MATTERS (37 C.F.R. § 42.8(b)(2))
`
`Amgen identifies the following judicial and administrative matters that
`
`concern or concerned the ’287 patent:
`
`• Amgen Inc. et al. v. Accord Biopharma, Case No. 0:18-cv-61828-WPD
`
`(S.D. Fla.) (stipulated dismissal approved Nov. 15, 2019);
`
`• Amgen Inc. et al. v. Kashiv BioSciences, LLC et al., Case No. 2:18-cv-
`
`03347-CCC-MF (D.N.J.) (stipulated dismissal so-ordered Nov. 25,
`
`2019);
`
`• Amgen Inc. et al. v. Tanvex BioPharma USA, Inc. et al., Case No. 3:19-
`
`cv-01374-H-AHG (S.D. Cal.) (joint motion to dismiss granted Dec. 19,
`
`2019);
`
`• Fresenius Kabi USA, LLC et al. v. Amgen Inc. et al., Case IPR2019-
`
`00971 (institution denied Oct. 16, 2019) (Paper 13); and
`
`
`
`
`
`IPR2021-00326
`Patent 9,856,287
`• Adello Biologics LLC et al. v. Amgen Inc. et al., Case PGR2019-00001
`
`(adverse judgment entered against two petitioners Oct. 4, 2019; review
`
`terminated due to settlement Dec. 6, 2019) (Papers 23 and 28).
`
`• Fresenius Kabi USA, LLC et al. v. Amgen Inc. et al, Case IPR2020-
`
`00314 (terminated due to settlement prior to institution) (Paper 17).
`
`Additionally, related patents are currently being prosecuted. Specifically,
`
`the ’287 patent application is a continuation of pending U.S. Patent Application
`
`No. 14/793,590, which is a continuation of pending U.S. Patent Application
`
`No. 14/611,037, which is a divisional of U.S. Patent Application No. 12/820,087,
`
`which issued as U.S. Patent No. 8,952,138, and also claims the benefit of U.S.
`
`Provisional Application No. 61/219,257. Also, pending U.S. Patent Application
`
`No. 15/889,559 claims the benefit of the ’287 patent application.
`
`Amgen is not aware of any other judicial or administrative matters that
`
`might affect, or be affected by, a decision in the proceeding.
`
`III. LEAD AND BACK-UP COUNSEL (37 C.F.R. § 42.8(b)(3))
`
`Amgen identifies the following lead and back-up counsel:
`
`
`
`
`
`
`
`
`
`2
`
`
`
`IPR2021-00326
`Patent 9,856,287
`
`Lead Counsel
`Megan Raymond (Reg. No. 72,997)
`PAUL, WEISS, RIFKIND,
`WHARTON & GARRISON LLP
`2001 K Street, NW
`Washington, DC 20006
`Tel.: (202) 223-7300
`Fax: (202) 403-3777
`mraymond@paulweiss.com
`
`Back-up Counsel
`J. Steven Baughman (Reg. No. 47,414)
`PAUL, WEISS, RIFKIND,
`WHARTON & GARRISON LLP
`2001 K Street, NW
`Washington, DC 20006
`Tel.: (202) 223-7300
`Fax: (202) 403-3740
`sbaughman@paulweiss.com
`GRP-Amgen287@paulweiss.com
`
`IV. SERVICE INFORMATION (37 C.F.R. § 42.8(b)(4))
`
`
`
`Amgen consents to service through the counsel identified above. Electronic
`
`service of documents must be sent to each of the listed email addresses of the
`
`counsel and the group email service address identified above.
`
`To the extent physical documents are served on Amgen, please address any
`
`such correspondence to lead counsel and back-up counsel at the following mailing
`
`address:
`
`Megan Raymond
`J. Steven Baughman
`PAUL, WEISS, RIFKIND, WHARTON & GARRISON LLP
`2001 K Street, NW
`Washington, DC 20006
`Dated: January 5, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`/s/ Megan Raymond
`Megan Raymond (Reg. No. 72,997)
`J. Steven Baughman (Reg. No. 47,414)
`PAUL, WEISS, RIFKIND, WHARTON
`& GARRISON LLP
`2001 K Street, NW
`Washington, DC 20006
`
`
`
`3
`
`
`
`IPR2021-00326
`Patent 9,856,287
`
`Tel.: (202) 223-7300
`Fax: (202) 403-3740
`sbaughman@paulweiss.com
`mraymond@paulweiss.com
`
`4
`
`
`
`IPR2021-00326
`Patent 9,856,287
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), I certify that on January 5, 2021, I caused a
`
`true and correct copy of the foregoing PATENT OWNER’S MANDATORY
`
`NOTICES UNDER 37 C.F.R. § 42.8 to be served by email on Petitioners’ counsel
`
`at the addresses listed below:
`
`Thomas J. Meloro
`Michael W. Johnson
`WILLKIE FARR & GALLAGHER LLP
`787 Seventh Ave.
`New York, NY 10019
`tmeloro@willkie.com
`mjohnson1@willkie.com
`
`Dated: January 5, 2021
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`By:
`
`
`/s/ Sayem Osman
`Sayem Osman
`
`
`
`
`
`
`
`
`
`5
`
`
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