`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`HYBRIGENICS SA
`Petitioner,
`v.
`FORMA THERAPEUTICS, INC.
`Patent Owner.
`
`
`
`Case 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 Integral Early Discovery, Inc.
`
`respectfully submits the following Mandatory Notices.
`
`I.
`
`REAL PARTY IN INTEREST
`Pursuant to an assignment from FORMA Therapeutics, Inc., Integral Early
`
`Discovery, Inc. now owns U.S. Patent No. 9,840,491. Integral Early Discovery,
`
`Inc. and FORMA Therapeutics, Inc. are real parties in interest.
`
`II. 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. 62/112,487, which was filed on February
`
`5, 2015, and is now expired, is a provisional application from which
`
`U.S. Patent Application 15/015,571, which issued as U.S. Patent No.
`
`9,840,491 claims the benefit of priority;
`
` Patent Cooperation Treaty Application No. PCT/US2016/016542,
`
`which published as WO2016/126926, and which was filed on
`
`February 4, 2016, is the international application claiming priority to
`
`the same provisional application as the U.S. Patent Application
`
`15/015,571, which issued as U.S. Patent No. 9,840,491;
`
`- 2 -
`
`
`
`PGR2018-00098
`Patent Owner’s Mandatory Notices
`
` U.S. Patent Application No. 15/837,393, which issued as U.S. Patent
`
`No. 10,513,507 on December 24, 2019, was filed on December 11,
`
`2017, and 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. 16/179,061, which issued as U.S. Patent
`
`No. 10,513,508 on December 24, 2019, was filed on November 2,
`
`2018, 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. 16/179,071, which issued as U.S. Patent
`
`No. 10,519,127 on December 31, 2019, was filed on November 2,
`
`2018, 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. 16/179,099, which issued as U.S. Patent
`
`No. 10,508,098 on December 17, 2019, was filed on November 2,
`
`2018, and claims the benefit of U.S. Patent Application No.
`
`15/837,393, which issued as U.S. Patent No. 10,513,507, which
`
`- 3 -
`
`
`
`PGR2018-00098
`Patent Owner’s Mandatory Notices
`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. 16/179,111, which issued as U.S. Patent
`
`No. 10,519,128 on December 31, 2019, was filed on November 2,
`
`2018, 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. 16/179,117, which issued as U.S. Patent
`
`No. 10,519,129 on December 31, 2019, was filed on November 2,
`
`2018, 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. 16/179,125, which issued as U.S. Patent
`
`No. 10,519,130 on December 31, 2019, was filed on November 2,
`
`2018, 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.
`
`- 4 -
`
`
`
`PGR2018-00098
`Patent Owner’s Mandatory Notices
`
` U.S. Patent Application No. 16/694,500, which is pending, 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.
`
`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.
`
`III. COUNSEL
`Patent Owner provides the following designation of counsel:
`
`Lead Counsel
`John P. Rearick
`Reg. No. 64,909
`CHOATE, HALL & STEWART LLP
`Two International Place
`Boston, MA 02110
`Tel: (617) 248-5213
`Email: jrearick@choate.com
`
`Back-Up Counsel
`Brenda Herschbach Jarrell
`Reg. No. 39,223
`CHOATE, HALL & STEWART LLP
`Two International Place
`Boston, MA 02110
`Tel: (617) 248-5175
`Email: bjarrell@choate.com
`
`First Back-up Counsel
`Stephanie L. Schonewald
`Reg. No. 72,452
`CHOATE, HALL & STEWART LLP
`Two International Place
`Boston, MA 02110
`Tel: (617) 248-4798
`Email: sschonewald@choate.com
`
`Back-up Counsel
`Sophie F. Wang
`(pro hac vice motion to be filed)
`CHOATE, HALL & STEWART LLP
`Two International Place
`Boston, MA 02110
`Tel: (617) 248-4052
`Email: swang@choate.com
`
`- 5 -
`
`
`
`PGR2018-00098
`Patent Owner’s Mandatory Notices
`
`
`
`Back-Up Counsel
`Michael A. Shinall
`Reg. No. 72,676
`CHOATE, HALL & STEWART LLP
`Two International Place
`Boston, MA 02110
`Tel: (617) 248-4801
`Email: mshinall@choate.com
`
`Back-up Counsel
`Nicholas J. Pace
`Reg. No. 74,316
`CHOATE, HALL & STEWART LLP
`Two International Place
`Boston, MA 02110
`Tel: (617) 248-5294
`Email: IntegralPGR@choate.com
`
` Power of Attorney is filed concurrently with these Mandatory Notices.
`
` A
`
`IV. SERVICE INFORMATION
`Patent Owner requests that all postal correspondence be addressed to lead
`
`counsel at the address shown above. Patent Owner also consents to electronic
`
`service by email to lead counsel at jrearick@choate.com with a courtesy copy to
`
`IntegralPGR@choate.com.
`
`Date: May 19, 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
`Attorneys/Agents for Patent Owner
`
`- 6 -
`
`
`
`PGR2018-00098
`Patent Owner’s Mandatory Notices
`CERTIFICATE OF SERVICE
`I hereby certify that, on May 19, 2020, I caused a true and correct copy of
`
`the following materials:
`
` Patent Owner’s Mandatory Notices Under 37 C.F.R. §42.8; and
` Patent Owner’s Power of Attorney
`
`to be served via electronic mail as set forth on page 2 of the Petition:
`
` alexipdock@stites.com
`
`
`
`Date: May 19, 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
`Attorneys/Agents for Patent Owner
`
`
`
`
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