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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`HYBRIGENICS SA
`Petitioner,
`v.
`FORMA THERAPEUTICS, INC.
`Patent Owner.
`
`
`
`Case No. PGR2018-00098
`U.S. Patent No. 9,840,491
`
`
`PATENT OWNER’S MANDATORY NOTICES
`UNDER 37 C.F.R. §42.8
`
`

`

`PGR2018-00098
`Patent Owner’s Mandatory Notices
`Pursuant to 37 C.F.R. § 42.8, Patent Owner Valo Early Discovery, Inc.
`
`respectfully submits the following Mandatory Notices.
`
`I.
`
`RELATED MATTERS
`Patent Owner identifies the following U.S. patent applications and issued
`
`patents that relate to U.S. Patent Application No. 15/015,571, which issued as U.S.
`
`Patent No. 9,840,491:
`
` U.S. Patent Application No. 16/694,500, which issued as U.S. Patent
`
`No. 10,836,741 on November 17, 2020, was filed on November 25,
`
`2019, and claims the benefit of U.S. Patent Application No.
`
`15/837,393, which issued as U.S. Patent No. 10,513,507, which
`
`claims the benefit of U.S. Patent Application No. 15/015,571, which
`
`issued as U.S. Patent No. 9,840,491.
`
` U.S. Patent Application No. 17/096,349, which is pending, was filed
`
`on November 12, 2020, and claims the benefit of U.S. Patent
`
`Application No. 16/694,500, which issued as U.S. Patent No.
`
`10,836,741, which claims the benefit of U.S. Patent Application No.
`
`15/837,393, which issued as U.S. Patent No. 10,513,507, which
`
`claims the benefit of U.S. Patent Application No. 15/015,571, which
`
`issued as U.S. Patent No. 9,840,491.
`
`- 2 -
`
`

`

`PGR2018-00098
`Patent Owner’s Mandatory Notices
`Patent Owner does not concede that any of the above-identified applications,
`
`aside from U.S. Patent No. 9,840,491, would affect, or be affected by, a decision in
`
`the present proceeding.
`
`Date: December 2, 2020
`
`Respectfully submitted,
`By: /John P. Rearick/
`John P. Rearick, Reg. No. 64,909
`Stephanie L. Schonewald, Reg. No. 72,452
`Brenda Herschbach Jarrell, Reg. No. 39,223
`Sophie F. Wang, pro hac vice to be filed
`Michael A. Shinall, Reg. No. 72,676
`Nicholas J. Pace, Reg. No. 74,316
`CHOATE HALL & STEWART LLP
`Two International Place
`Boston, MA 02110
`Representatives for Patent Owner
`
`- 3 -
`
`

`

`PGR2018-00098
`Patent Owner’s Mandatory Notices
`CERTIFICATE OF SERVICE
`I hereby certify that, on December 2, 2020, I caused a true and correct copy
`
`of the following materials:
`
` Patent Owner’s Mandatory Notices Under 37 C.F.R. §42.8
`
`to be served via electronic mail as set forth on page 2 of the Petition:
`
` alexipdock@stites.com
`
`
`
`Date: December 2, 2020
`
`Respectfully submitted,
`
`By: /John P. Rearick/
`John P. Rearick, Reg. No. 64,909
`Stephanie L. Schonewald, Reg. No. 72,452
`Brenda Herschbach Jarrell, Reg. No. 39,223
`Sophie F. Wang, pro hac vice to be filed
`Michael A. Shinall, Reg. No. 72,676
`Nicholas J. Pace, Reg. No. 74,316
`CHOATE HALL & STEWART LLP
`Two International Place
`Boston, MA 02110
`Representatives for Patent Owner
`
`
`
`

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