Paper No. ____
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`Filed on behalf of LifeScan Scotland Ltd.
`By: Dianne B. Elderkin (delderkin@akingump.com)
`Steven D. Maslowski (smaslowski@akingump.com)
`AKIN GUMP STRAUSS HAUER & FELD LLP
`Two Commerce Square
`2001 Market Street, Suite 4100
`Philadelphia, PA 19103
`Tel: (215) 965-1200
`Fax: (215) 965-1210
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`________________
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`PHARMATECH SOLUTIONS, INC.
`Petitioner
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`v.
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`LIFESCAN SCOTLAND LTD.
`Patent Owner
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`________________
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`Case IPR2013-00247
`Patent 7,250,105
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`________________
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`MOTION FOR PRO HAC VICE ADMISSION
`OF GREGORY L. DISKANT, ESQ. PURSUANT TO 37 C.F.R. § 42.10
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`Filed on behalf of LifeScan Scotland Ltd.
`By: Dianne B. Elderkin (delderkin@akingump.com)
`Steven D. Maslowski (smaslowski@akingump.com)
`AKIN GUMP STRAUSS HAUER & FELD LLP
`Two Commerce Square
`2001 Market Street, Suite 4100
`Philadelphia, PA 19103
`Tel: (215) 965-1200
`Fax: (215) 965-1210
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`________________
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`PHARMATECH SOLUTIONS, INC.
`Petitioner
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`v.
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`LIFESCAN SCOTLAND LTD.
`Patent Owner
`
`________________
`
`Case IPR2013-00247
`Patent 7,250,105
`
`________________
`
`MOTION FOR PRO HAC VICE ADMISSION
`OF GREGORY L. DISKANT, ESQ. PURSUANT TO 37 C.F.R. § 42.10
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`I.
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`Relief Requested
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`Case No. IPR2013-00247
`U.S. Patent No. 7,250,105
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`The Patent Owner respectfully requests that the Board admit Mr. Gregory L.
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`Diskant as counsel pro hac vice for the above-captioned proceeding in accordance
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`with 37 C.F.R. § 42.10.
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`II. Timing of Motion
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`This Motion for pro hac vice admission is being filed no sooner than twenty
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`one (21) days after service of the petition as required by the Order Authorizing
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`Motion for Pro Hac Vice entered April 17, 2013.
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`III. Statement of Facts
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`Both lead counsel and back-up counsel in the above-captioned proceeding,
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`Dianne B. Elderkin and Steven D. Maslowski, are registered practitioners before
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`the USPTO.
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`The facts, supported by the attached Declaration of Gregory L. Diskant in
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`Support of Motion for Admission Pro Hac Vice (Exhibit A), establish good cause
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`to admit Mr. Diskant pro hac vice in this proceeding.
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`Mr. Diskant is an experienced litigating attorney. Mr. Diskant has been a
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`litigating attorney for more than 30 years. He is currently a senior litigation
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`partner at Patterson Belknap, where he served as chair from 1997 – 2007. Mr.
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`Case No. IPR2013-00247
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`U.S. Patent No. 7,250,105
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`Diskant has represented a wide range of clients in complex commercial, securities,
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`and intellectual property litigation matters in both federal and state courts. He has
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`successfully tried numerous patent cases involving medical device and
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`pharmaceutical technology. See Exhibit A.
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`Mr. Diskant graduated from Columbia Law School in 1974 and served as
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`Assistant United States Attorney for the Southern District of New York from 1976
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`– 1980 and Chief Appellate Attorney in 1980. Prior to joining Patterson Belknap,
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`he clerked for the Hon. Thurgood Marshall of the United States Supreme Court and
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`the Hon. J. Skelly Wright of the U.S. Court of Appeals for the District of
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`Columbia. See Exhibit A.
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`Mr. Diskant has familiarity with the subject matter at issue in this proceeding
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`based on his work as lead counsel in the co-pending district court case, Lifescan,
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`Inc. v. Shasta Techs., LLC, 5:11-CV-04494-EJD (N.D. Cal), which involves the
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`same patent at issue in this proceeding. See Exhibit A. Mr. Diskant has been
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`actively involved in all aspects of the co-pending district court case, including on
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`issues related to validity of the patents-in-suit. See Exhibit A. As such, he is very
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`familiar with the subject matter at issue in this proceeding. The Patent Owner has
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`expended significant financial resources conducting the co-pending district court
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`litigation with Mr. Diskant as lead counsel and, therefore, wishes to continue using
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`him in this proceeding.
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`Case No. IPR2013-00247
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`U.S. Patent No. 7,250,105
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`IV. Affidavit or Declaration of Individuals Seeking to Appear
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`This motion for Pro Hac Vice Admission is accompanied by the attached
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`Declaration of Gregory L. Diskant (Exhibit A) as required by the Notice of Filing
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`Date Accorded to Petition entered April 17, 2013. In this Declaration, he states
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`compliance with the general requirements for pro hac vice admission including that
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`he is a member in good standing of the Bar of the State of New York; he has never
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`been suspended or disbarred from practice before any court or administrative body;
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`he has never had a court or administrative body deny his application for admission
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`to practice; he has never had sanctions or contempt citations imposed on him by
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`any court or administrative body; he has read and will comply with the Office
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`Patent Trial Practice Guide and the Board’s Rules of Practice for Trials set forth in
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`part 42 of the C.F.R.; he agrees to be subject to the USPTO Code of Professional
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`Responsibility set forth in 37 C.F.R. §§ 10.20 et seq. and disciplinary jurisdiction
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`under 37 C.F.R. § 11.19(a); and he has not applied to appear pro hac vice before
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`the USPTO in the last three (3) years. See Exhibit A.
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`V. Conclusion
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`In light of the foregoing, the Patent Owner respectfully requests that the
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`Board admit Gregory L. Diskant pro hac vice in this proceeding.
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`Case No. IPR2013-00247
`U.S. Patent No. 7,250,105
`Respectfully submitted,
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`/Dianne B. Elderkin/
`Dianne B. Elderkin
`Registration No. 28,598
`Counsel for Patent Owner
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`5
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`Date: July 1, 2013
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`EXHIBIT A
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`EXHIBIT A
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`Paper No.
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`Filed on behalf of LifeScan Scotland Ltd. (cid:9)
`By: (cid:9)
`Dianne B. Elderkin (delderkin@akingump.com )
`Steven D. Maslowski (smaslowskiakingump .com)
`AKIN GUMP STRAUSS HAUER & FELD LLP
`Two Commerce Square
`2001 Market Street, Suite 4100
`Philadelphia, PA 19103
`Tel: (215) 965-1200
`Fax: (215) 965-1210
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`PHARMATECH SOLUTIONS, INC.
`Petitioner
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`V.
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`LIFESCAN SCOTLAND LTD.
`Patent Owner
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`Case IPR2013-00247
`Patent 7,250,105
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`DECLARATION OF GREGORY L. DISKANT
`IN SUPPORT OF MOTION FOR PRO HAC VICE ADMISSION
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`
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`I, Gregory L. Diskant, declare as follows:
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`Case No. 1PR2013-00247
`U.S. Patent No. 7,250,105
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`Counsel is an experienced litigating attorney
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`1. I am currently a senior litigation partner at Patterson Belknap where I served as
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`chair from 1997-2007. I have been a litigating attorney for over 30 years. I
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`have represented a wide range of clients in both federal and state courts,
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`focusing on complex commercial, securities, and intellectual property litigation.
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`I have successfully represented both plaintiffs and defendants injury trials
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`around the country.
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`2. I graduated from Columbia Law School in 1974. Prior to joining Patterson
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`Belknap, I served as Assistant United States Attorney for the Southern District
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`of New York (1976-1980) and Chief Appellate Attorney (1980). I also clerked
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`for the Hon. Thurgood Marshall of the United States Supreme Court and the
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`Hon. J. Skelly Wright of the U.S. Court of Appeals for the District of Columbia.
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`3. I have tried numerous complex patent cases, focusing on medical device
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`technology and pharmaceuticals. I successfully represented the plaintiff in a
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`series of stent cases resulting in recoveries totaling $3.7 billion. As defendant's
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`counsel, I have won jury verdicts defeating infringement claims on contact
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`lenses, stents, and endoscopic devices.
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`Case No. 1PR2013-00247
`U.S. Patent No. 7,250,105
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`Familiarity with the subject matter at issue in the proceeding (U.S. Patent No.
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`7,250,105)
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`4. I am familiar with the subject matter at issue in this proceeding, specifically
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`U.S. Patent No. 7,250,105 titled "MEASUREMENT OF SUBSTANCES IN
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`LIQUIDS" ("the '105 Patent"). I am lead counsel in the co-pending district
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`court litigation, Lfescan, Inc. v. Shasta Techs., LLC, 5:11 .-CV-04494-EJD (N.D.
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`Cal), in which the '105 Patent is asserted against various manufacturers of
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`glucose test strips implicated in the patented methods. This litigation was filed
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`in the United States District Court for the Northern District of California in
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`September 2011. The '105 Patent was first asserted through an amended
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`complaint dated 12/10/2012.
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`5. I have been actively involved in all aspects of this co-pending district court
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`litigation, including, for example: arguing on behalf of Lifescan at the
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`preliminary injunction and case management conference in the Northern
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`District of California on February 21, 2013; arguing on behalf of Lifescan
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`before the U.S. Court of Appeals for the Federal Circuit on June 5, 2013 in the
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`appeal of the preliminary injunction ruling.
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`General Requirements
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`6. I am a member in good standing of the Bar of the State of New York and am
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`admitted to practice before the United States Supreme Court, the United States
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`Case No. 1PR2013-00247
`U.S. Patent No. 7,250,105
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`Courts of Appeals for the Second, Third, Fifth and Eleventh Circuits, as well as
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`the Federal Circuit.
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`7. I have never been suspended or disbarred from practice before any court or
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`administrative body.
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`8. I have never had a court or administrative body deny my application for
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`admission to practice.
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`9. I have never had sanctions or contempt citations imposed on me by any court or
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`administrative body.
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`10.1 have read and will comply with the Office Patent Trial Practice Guide and the
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`Board's Rules of Practice for Trials set forth in part 42 of the C.F.R.
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`11.1 agree to be subject to the USPTO Code of Professional Responsibility set
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`forth in 37 C.F.R. §§ 10.20 etseq. and disciplinary jurisdiction under 37 C.F.R.
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`§ 11.19(a).
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`12.1 have not applied to appear pro hac vice in any proceedings before the USPTO
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`in the last three (3) years.
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`I hereby declare that all statements made herein of my own knowledge are
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`true and that all statements made on information and belief are believed to be
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`true; and further that these statements are made with the knowledge that
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`willfully false statements and the like so made are punishable by fine or
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`Case No. 1PR2013-00247
`U.S. Patent No. 7,250,105
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`imprisonment, or both, under Section 1001 of Title 18 of the United States Code
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`and that such willfully false statements may jeopardize the validity of U.S.
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`Patent No. 7,250,105.
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`Dated: June 28, 2013 (cid:9)
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`Respectfully submitted,
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`By:
`Gregory Diskant
`Patterson Belknap Webb & Tyler,
`LLP
`1133 Avenue of the Americas,
`New York, NY 10036
`(212)336-2000
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`CERTIFICATE OF SERVICE
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`Case No. IPR2013-00247
`U.S. Patent No. 7,250,105
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`The undersigned hereby certifies that a copy of the foregoing MOTION
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`FOR PRO HAC VICE ADMISSION OF GREGORY L. DISKANT, ESQ.
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`PURSUANT TO 37 C.F.R. § 42.10 was served on counsel of record on July 1,
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`2013, by filing this document through the Patent Review Processing System, as
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`well as delivering a copy via overnight mail to the counsel of record for the
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`Petitioner at the following address:
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`Patent Docketing
`Lathrop & Gage LLP
`2345 Grand Boulevard, Suite 2800
`Kansas City, MO 64108
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`Respectfully submitted,
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`By: /Dianne B. Elderkin/
`Dianne B. Elderkin
`Registration No. 28,598
`Counsel for Patent Owner
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`Date: July 1, 2013
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