UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APOTEX CORP.
`Petitioner
`V.
`ALCON RESEARCH, LTD.
`Patent Owner
`
`CASE 1PR2013-00428
`
`U.S. Patent No. 8,268,299
`
`AFFIDAVIT IN SUPPORT OF MOTION FOR PRO HAC VICE ADMISSION
`OF PAULA. AINS WORTH UNDER 37 C.F.R. § 42.10(c)
`
`Mail Slop "PA TENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 223 13-1450
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APOTEX CORP.
`Petitioner
`V.
`ALCON RESEARCH, LTD.
`Patent Owner
`
`CASE 1PR2013-00428
`
`U.S. Patent No. 8,268,299
`
`AFFIDAVIT IN SUPPORT OF MOTION FOR PRO HAC VICE ADMISSION
`OF PAULA. AINS WORTH UNDER 37 C.F.R. § 42.10(c)
`
`Mail Slop "PA TENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 223 13-1450
`
`
`
`AFFIDAVIT OF PAUL A. AINS WORTH
`CASE 1PR2013-00428
`
`1.
`
`I, Paul A. Ainsworth, am more than twenty-one years of age, am
`
`competent to present this affidavit, and have personal knowledge of the facts set forth
`
`herein.
`
`2.
`
`This affidavit is given in support of the Petitioner Apotex Corp.’s
`
`Motion for Pro Hac Vice Admission.
`
`3.
`
`I am a director at the law firm of Sterne, Kessler, Goldstein and Fox
`
`P.L.L.C.
`
`4.
`
`I have been a patent litigation attorney for more than nine years. I have
`
`been litigating patent cases during that entire time period. A significant portion of my
`
`work has involved biological and chemical arts, with particular emphasis in
`
`pharmaceuticals. I am, therefore, an experienced litigating attorney.
`
`5.
`
`I am a member in good standing of the State Bar of Maryland and the
`
`Bar of the District of Columbia. I have never been suspended or disbarred from
`
`practice before any court or administrative body.
`
`6.
`
`No court or administrative body has ever denied my application for
`
`admission to practice before it.
`
`-1-
`
`
`
`7.
`
`No court or administrative body has ever imposed sanctions or
`
`AFFIDAVIT OF PAUL A. AINS WORTH
`CASE 1PR2013-00428
`
`contempt citations on me.
`
`8.
`
`I have read and will comply with the Office Patent Trial Practice Guide
`
`and the Board’s Rules of Practice for Trials set forth in part 42 of the C.F.R.
`
`9.
`
`I understand that I will be subject to the Office’s Rules of Professional
`
`Conduct set forth in 37 C.F.R. §§ 11.10 1 et seq. and disciplinary jurisdiction under
`
`37 C.F.R. § 11.19(a).
`
`10.
`
`I am concurrently seeking pro hac vice admission to appear in
`
`Petitioner’s co-pending related matters against Patent Owner, Case IPR20 13-00429’
`
`and Case 1PR2013-00430. 2 I have applied to appear pro hac vice in seven other
`
`’Case 1PR2013-00429 challenges claims of U.S. Patent No. 8,323,630 ("the
`
`’630 patent"), which is in the same patent family as the patent at issue in this
`
`proceeding.
`
`2 Case 1PR2013-00430 challenges claims of U.S. Patent No. 8,388,941 ("the
`
`’941 patent"), which concerns the same subject matter as the patent at issue in this
`
`proceeding.
`
`-2-
`
`
`
`AFFIDAVIT OF PAUL A. AINS WORTH
`CASE IPR2013-00428
`
`proceedings before the Office in the last three (3) years: Case 1PR2013-00012, Case
`
`1PR2013-00015, Case 1PR2013-00214, Case 1PR2013-00215, Case 1PR2013-00368,
`
`Case 1PR2013-00371, and Case 1PR2013-00372. I was admittedpro hac vice in all
`
`seven cases.
`
`11.
`
`I have an established familiarity with the subject matter at issue in this
`
`proceeding. I have read and understand the pleadings submitted by Petitioner and
`
`Patent Owner in this proceeding and in Cases 1PR2013-00429 and 1PR2013-00430. I
`
`have engaged in strategic and substantive discussions regarding this proceeding with
`
`Eldora L. Ellison, Ph.D., who is the lead counsel for Petitioner in this proceeding and
`
`in Case 1PR2013-00429 and Case 1PR2013-00430. Through my nine years of patent
`
`litigation experience, I am very familiar with the legal theories advanced in this case.
`
`12.
`
`I have reviewed in detail U.S. Patent No. 8,268,299 ("the ’299 patent"),
`
`which is the patent challenged in this proceeding. I have also reviewed Exhibits
`
`submitted by Petitioner in this proceeding, such as Exhibit 1002 (Declaration of
`
`Michael J. Miller, Ph.D.); Exhibit 1003 (Xia et al., WO 2005/097067, "Zinc
`
`Preservative Composition and Method of Use"); Exhibit 1004 (Chowhan et al., U.S.
`
`Patent No. 6,143,799, "Use of Borate-Polyol Complexes in Ophthalmic
`
`Compositions"); Exhibit 1005 (Gadd et al., "Microorganisms and Heavy Metal
`-3-
`
`
`
`AFFIDAVIT OF PAUL A. AINS WORTH
`CASE 1PR2013-00428
`
`Toxicity," Microbial Ecology, 4:303-317 (1978)); and Exhibit 1006 (FDA Approved
`
`Drug Label "TRAVATANfi (travoprost ophthalmic solution) 0.004% Sterile"
`
`(2001)).
`
`13. Through previous litigation involving similar products, I have
`
`significant familiarity with ophthalmic formulations such as those claimed by the
`
`’299 patent. I served as Petitioner’s trial counsel in A icon Pharms. Ltd. v. Apotex Inc.,
`
`Case no. 1:12-cv-00960-UNA (D. Delaware), which concerned U.S. Patent Nos.
`
`6,716,830 and 7,671,070 (directed to ophthalmic drug formulations and methods of
`
`use). I also represented Petitioner in the
`
`inter partes review proceedings concerning
`
`the same patents: Case 1PR2013-00012 and Case 1PR2013-00015.
`
`14.
`
`Therefore, I have an established familiarity with the subject matter at
`
`issue in this proceeding.
`
`
`
`AFFIDAVIT OF PAUL A. A[NS WORTH
`CASE IPR20 13-00428
`
`15.
`
`I understand that IPR counsel for Patent Owner has agreed not to oppose
`
`Petitioner’s motion for my pro hac vice admission in this proceeding.
`
`Sworn to and subscribed before me
`this’."day of January, 2014.
`
`Notary Public
`
`18025571
`
`Paul A. Ainsworth
`
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`
`
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