Trials@uspto.gov
`571-272-7822
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` Paper 18
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`Entered: February 3, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APOTEX CORP.
`Petitioner
`
`
`
`
`
`v.
`
`ALCON RESEARCH, LTD
`Patent Owner.
`____________
`
`Cases IPR2013-00428 (Patent 8,268,299 B2)
`IPR2013-00429 (Patent 8,323,630 B2)
`IPR2013-00430 (Patent 8,388,941 B2) 1
`
`____________
`
`Before LORA M. GREEN, FRANCISCO C. PRATS, and RAMA G. ELLURU,
`Administrative Patent Judges.
`
`GREEN, Administrative Patent Judge.
`
`
`
`DECISION
`Alcon Research Ltd.’s Motion for Pro Hac Vice Admission of
`Adam L. Perlman
`37 C.F.R. § 42.10
`
`
`
`
`1 This order addresses issues that are the same in all three cases. We, therefore,
`exercise our discretion to issue one order to be filed in each case. The parties,
`however, are not authorized to use this style heading in subsequent papers.
`
`

`

`Cases IPR2013-00428 (Patent 8,268,299 B2)
`IPR2013-00429 (Patent 8,323,630 B2)
`IPR2013-00430 (Patent 8,388,941 B2)
`
`
`Patent Owner, Alcon Research, Ltd. (“Alcon”), filed a motion requesting
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`pro hac vice admission of Adam L. Perlman (Papers 13, 11, and 12),2 accompanied
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`by the Declaration of Mr. Perlman in support of the motion (Ex. 2001 in each
`
`proceeding). The motion is unopposed. For the reasons provided below, Alcon’s
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`motion is granted.
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`
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`As set forth in 37 C.F.R. § 42.10(c), the Board may recognize counsel pro
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`hac vice during a proceeding upon a showing of good cause, subject to the
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`condition that lead counsel be a registered practitioner. For example, where the
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`lead counsel is a registered practitioner, a non-registered practitioner may be
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`permitted to appear pro hac vice “upon showing that counsel is an experienced
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`litigating attorney and has an established familiarity with the subject matter at issue
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`in the proceeding.” 37 C.F.R. § 42.10(c). In authorizing motions for pro hac vice
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`admission, the Board also requires a statement of facts showing there is good cause
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`for the Board to recognize counsel pro hac vice and an affidavit or declaration of
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`the individual seeking to appear in this proceeding. Paper 4 in each proceeding
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`(referencing the “Order – Authorizing Motion for Pro Hac Vice Admission,”
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`Paper 6 in IPR2013-00010 at 3-4).
`
`
`
`In its motion, Alcon asserts that there is a good cause for Mr. Perlman’s pro
`
`hac vice admission because: (1) Mr. Perlman is an experienced litigating attorney,
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`and (2) Mr. Perlman has familiarity with the subject matter at issue in the instant
`
`proceeding, as he is trial counsel to Alcon in various proceedings in which the
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`claims of the ’299, ’630, and ’941 patents are at issue. Papers 13, 11, and 12 at 4.
`
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`2 All references to the papers refer to the three proceedings in numerical order; i.e.,
`the first paper number refers to the paper number in IPR2013-00428, the second
`paper number refers to the paper number in IPR2013-00429, and the third paper
`number refers to the paper number in IPR2013-00430.
`
`
`
`2
`
`

`

`Cases IPR2013-00428 (Patent 8,268,299 B2)
`IPR2013-00429 (Patent 8,323,630 B2)
`IPR2013-00430 (Patent 8,388,941 B2)
`
`In support of the motion, Mr. Perlman attests to these facts in his declaration with
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`sufficient explanations. Ex. 2001. Moreover, Alcon’s lead counsel, Stanley E.
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`Fisher, is a registered practitioner. Papers 13, 11, and 12 at 4.
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`Based on the facts set forth above, we conclude that Mr. Perlman has
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`sufficient legal and technical qualifications to represent Alcon in this proceeding
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`and that there is a need for Alcon to have its trial counsel involved in these
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`proceedings. See IPR2013-00639, Paper 7, dated October 15, 2013 (superseding
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`IPR2013-00010, Paper 6, dated October 15, 2012, and setting forth the
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`requirements for pro hac vice admission) (copy available on the Board Web site
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`under “Representative Orders, Decisions, and Notices”). Accordingly, Alcon has
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`established good cause for Mr. Perlman’s pro hac vice admission. Mr. Perlman
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`will be permitted to appear pro hac vice in the instant proceeding as back-up
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`counsel only. See 37 C.F.R. § 42.10(c).
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`
`
`
`
`
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`For the foregoing reasons, it is
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`ORDERED that Alcon’s motion for pro hac vice admission of Mr. Perlman
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`for the instant proceeding is granted; Mr. Perlman is authorized to represent Alcon
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`as back-up counsel in the instant proceedings;
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`
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`FURTHER ORDERED that Alcon is to continue to have a registered
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`practitioner as lead counsel in the instant proceedings;
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`
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`FURTHER ORDRED that Mr. Perlman is to comply with the Office Patent
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`Trial Practice Guide and the Board’s Rules of Practice for Trials, as set forth in
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`Title 37, Part 42 of the Code of Federal Regulations; and
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`
`
`3
`
`

`

`Cases IPR2013-00428 (Patent 8,268,299 B2)
`IPR2013-00429 (Patent 8,323,630 B2)
`IPR2013-00430 (Patent 8,388,941 B2)
`
`
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`FURTHER ORDERED that Mr. Perlman is to be subject to the Office’s
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`disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and the USPTO Rules of
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`Professional Conduct set forth in 37 C.F.R. §§ 11.101 et. seq.
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`
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`
`
`For PETITIONER:
`
`Eldora L. Ellison
`Ralph W. Powers, II
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`eellison-PTAB@skgf.com
`tpowers-PTAB@skgf.com
`
`For PATENT OWNER:
`
`Stanley E. Fisher
`WILLIAMS & CONNOLLY LLP
`sfisher@wc.com
`
`
`
`
`4
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`