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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
`
`_____________________
`
`CASE IPR2013-00428
`
`U.S. Patent No. 8,268,299
`_____________________
`
`
`APOTEX CORP.'S MOTION FOR PRO HAC VICE ADMISSION OF
`H. KEETO SABHARWAL UNDER 37 C.F.R. § 42.10(c)
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
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`APOTEX CORP.'S MOTION FOR PRO HAC VICE ADMISSION
`CASE IPR2013-00428
`
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`I. RELIEF REQUESTED
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`Pursuant to 37 C.F.R. § 42.10(c), Petitioner Apotex Corp. ("Apotex")
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`respectfully requests the pro hac vice admission of H. Keeto Sabharwal in this
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`proceeding. In email correspondence between Petitioner and Patent Owner dated
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`January 24, 2014, Patent Owner agreed not to oppose this motion.
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`II. GOVERNING LAW, RULES, AND PRECEDENT
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`Section 42.10(c) states as follows:
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`The Board may recognize counsel pro hac vice during a
`proceeding upon a showing of good cause, subject to the
`condition that lead counsel be a registered practitioner and
`to any other conditions as the Board may impose. For
`example, where the lead counsel is a registered
`practitioner, a motion to appear pro hac vice by counsel
`who is not a registered practitioner may be granted upon
`showing that counsel is an experienced litigating attorney
`and has an established familiarity with the subject matter
`at issue in the proceeding.
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`The Board has stated that motions for pro hac vice admission under 37 C.F.R.
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`§ 42.10(c) must be filed in accordance with the “Order – Authorizing Motion for Pro
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`Hac Vice Admission” entered in Case IPR2013-00010 (MPT) (“Motorola Order”).
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`APOTEX CORP.'S MOTION FOR PRO HAC VICE ADMISSION
`CASE IPR2013-00428
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`See, e.g., Case IPR 2012-00006 (SGL) (Paper 18); Case IPR2012-0035 (SGL) (Paper
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`13).
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`The Motorola Order requires that such motions (1) “[c]ontain a statement of
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`facts showing there is good cause for the Board to recognize counsel pro hac vice
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`during the proceeding;” and (2) “[b]e accompanied by an affidavit or declaration of
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`the individual seeking to appear attesting to the following”:
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`ii.
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`i. Membership in good standing of the Bar of at least
`one State or the District of Columbia;
`No suspensions or disbarments from practice before
`any court or administrative body;
`iii. No application for admission to practice before any
`court or administrative body ever denied;
`iv. No sanctions or contempt citations imposed by any
`court or administrative body;
`The individual seeking to appear has 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.;
`The individual will be subject to the USPTO Code
`of Professional Responsibility set forth in 37 C.F.R.
`§§ 10.20 et seq. and disciplinary jurisdiction under
`37 C.F.R. § 11.19(a);
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`v.
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`vi.
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`APOTEX CORP.'S MOTION FOR PRO HAC VICE ADMISSION
`CASE IPR2013-00428
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`vii. All other proceedings before the Office for which
`the individual has applied to appear pro hac vice in
`the last three (3) years; and
`viii. Familiarity with the subject matter at issue in the
`proceeding.
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`III. STATEMENT OF FACTS
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`Based on the following facts, and supported by the Affidavit of Mr. Sabharwal
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`(Ex. 1018) submitted herewith, Petitioner requests the pro hac vice admission of H.
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`Keeto Sabharwal in this proceeding:
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`1.
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`Petitioner's lead counsel, Eldora L. Ellison, is a registered practitioner
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`(Reg. No. 39,967).
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`2. Mr. Sabharwal is a Director at the law firm of Sterne, Kessler, Goldstein
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`and Fox P.L.L.C. (Ex. 1018 at ¶ 3.)
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`3. Mr. Sabharwal is an experienced patent litigation attorney. Mr.
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`Sabharwal has been a patent litigation attorney for nearly 20 years. (Id.
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`at ¶ 4.) Mr. Sabharwal has been litigating patent cases during the entire
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`time period and, in particular, has litigated at least 30 patent
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`infringement actions involving a variety of pharmaceutical and life
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`APOTEX CORP.'S MOTION FOR PRO HAC VICE ADMISSION
`CASE IPR2013-00428
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`sciences matters and has served as lead trial counsel in a large majority
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`of these matters. (Id.)
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`4. Mr. Sabharwal is a member of good standing of the State Bar of New
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`York and the Bar of the District of Columbia. (Id. at ¶ 5.)
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`5. Mr. Sabharwal has never been suspended or disbarred from practice
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`before any court or administrative body. (Id. at ¶ 5.)
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`6.
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`No application of Mr. Sabharwal for admission to practice before any
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`court or administrative body has ever been ultimately denied.1 (Id. at ¶
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`6.)
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`1 The Board initially denied Mr. Sabharwal pro hac vice admission without
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`prejudice and with permission
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`to re-file
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`in Cases IPR2012-00022 and
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`IPR2013-00250 because the moving papers did not fully articulate his familiarity
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`with the subject matter at issue in those proceedings. (Ex. 1018 at ¶ 6.) Both
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`proceedings concerned a single patent at issue. (Id.) Mr. Sabharwal was not serving
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`as trial counsel in the corresponding litigation. (Id.) After providing additional detail
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`showing Mr. Sabharwal's familiarity with the subject matter at issue in the
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`proceedings, the Board granted Mr. Sabharwal pro hac vice admission in both cases.
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`(Id.)
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`APOTEX CORP.'S MOTION FOR PRO HAC VICE ADMISSION
`CASE IPR2013-00428
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`No sanctions or contempt citations have ever been imposed against Mr.
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`7.
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`Sabharwal by any court or administrative body. (Id. at ¶ 7.)
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`8. Mr. Sabharwal has read and will comply with the Office Patent Trial
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`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. (Id. at ¶ 8.)
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`9. Mr. Sabharwal understands that he will be subject to the Office’s Rules
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`of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and
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`disciplinary jurisdiction under 37 C.F.R. § 11.19(a). (Id. at ¶ 9.)
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`10. Mr. Sabharwal is concurrently seeking pro hac vice admission to appear
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`in co-pending, related matters against the Patent Owner, Case
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`IPR2013-004292 and Case IPR2013-004303. (Id. at ¶ 10.) He has
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`applied to appear pro hac vice in seven other proceedings before the
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`2 Case IPR2013-00429 challenges claims of U.S. Patent No. 8,323,630 ("the
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`'630 patent"), which is in the same patent family as the patent at issue in this
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`proceeding.
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`3 Case IPR2013-00430 challenges claims of U.S. Patent No. 8,388,941 ("the
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`'941 patent"), which concerns the same subject matter as the patent at issue in this
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`proceeding.
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`APOTEX CORP.'S MOTION FOR PRO HAC VICE ADMISSION
`CASE IPR2013-00428
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`Office in the last three (3) years: Case IPR2013-00012, Case
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`IPR2013-00015, Case IPR2012-00022, Case IPR2013-00250, Case
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`IPR2013-00368, Case IPR2013-00371, and Case IPR 2013-00372.
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`(Id.) He was admitted pro hac vice in all seven cases and participated in
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`IPR depositions in various cases. (Id.)
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`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION OF
`MR. SABHARWAL IN THIS PROCEEDING
`The Board may recognize counsel pro hac vice during a proceeding upon a
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`showing of good cause, subject to the condition that lead counsel be a registered
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`practitioner and to any other conditions as the Board may impose. 37 C.F.R. §
`
`42.10(c). Petitioner's lead counsel, Eldora L. Ellison, Ph.D., is a registered
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`practitioner. Based on the facts contained herein, as supported by Mr. Sabharwal's
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`Affidavit, good cause exists to admit Mr. Sabharwal pro hac vice in this proceeding.
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`Mr. Sabharwal has an established familiarity with the subject matter at issue in
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`this proceeding. (Exhibit 1018 at ¶¶ 11-14.)
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`Mr. Sabharwal has reviewed in detail the pleadings submitted by Petitioner
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`and Patent Owner in this proceeding and in related Cases IPR2013-00429 and
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`IPR2013-00430. (Id. at ¶ 11.) Mr. Sabharwal has reviewed in detail the challenged
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`patent, U.S. Patent No. 8,268,299 ("the '299 patent"). (Id.at ¶ 12.) He has also
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`APOTEX CORP.'S MOTION FOR PRO HAC VICE ADMISSION
`CASE IPR2013-00428
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`reviewed in detail exhibits relied upon by Petitioner, such as Exhibit 1002
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`(Declaration of Michael J. Miller, Ph.D.); Exhibit 1003 (Xia et al., WO
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`2005/097067, "Zinc Preservative Composition and Method of Use"); Exhibit 1004
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`(Chowhan et al., U.S. Patent No. 6,143,799, "Use of Borate-Polyol Complexes in
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`Ophthalmic Compositions"); Exhibit 1005 (Gadd et al., "Microorganisms and Heavy
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`Metal Toxicity," Microbial Ecology, 4:303-317 (1978)); and Exhibit 1006 (FDA
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`Approved Drug Label "TRAVATAN® (travoprost ophthalmic solution) 0.004%
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`Sterile" (2001)). (Id.) Mr. Sabharwal has engaged in hours of strategic and
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`substantive discussions regarding this proceeding with Eldora L. Ellison, Ph.D., who
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`is the lead counsel for Petitioner in this proceeding and in Case IPR2013-00429 and
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`Case IPR2013-00430. (Id at ¶ 11.)
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`The '299 patent claims ophthalmic compositions, and Mr. Sabharwal has
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`gained significant familiarity with such compositions through previous litigation
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`involving similar ophthalmic compositions. (Id. at ¶ 13.) Mr. Sabharwal served as
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`Petitioner's trial counsel in Alcon Pharms. Ltd. v. Apotex Inc., Case no.
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`1:12-cv-00960-UNA (D. Delaware), which concerned U.S. Patent Nos. 6,716,830
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`and 7,671,070 (directed to ophthalmic drug formulations and methods of use). (Id.)
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`APOTEX CORP.'S MOTION FOR PRO HAC VICE ADMISSION
`CASE IPR2013-00428
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`He also represented Petitioner in the inter partes review proceedings concerning the
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`same patents: Case IPR2013-00012 and Case IPR2013-00015. (Id.)
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`Thus, Mr. Sabharwal has an established familiarity with the subject matter at
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`issue in this proceeding. Mr. Sabharwal's significant litigation experience and
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`expertise will be of great value to the Petitioner in this proceeding.
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`Based on the facts contained herein, as supported by Mr. Sabharwal’s
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`Affidavit, good cause exists to admit Mr. Sabharwal pro hac vice in this proceeding.
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`APOTEX CORP.'S MOTION FOR PRO HAC VICE ADMISSION
`CASE IPR2013-00428
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`V. CONCLUSION
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`For the foregoing reasons, Petitioner respectfully requests that Mr. Sabharwal
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`be admitted pro hac vice in this proceeding.
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`The Patent Trial and Appeal Board is hereby authorized to charge any fees
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`associated with this filing to Deposit Account 19-0036 (Customer ID No. 45324).
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`Respectfully Submitted,
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` STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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`
`
`/Eldora L. Ellison/
`
` Eldora L. Ellison, Ph.D.
`Date: February 4, 2014
` Lead Attorney for Petitioner, Apotex Corp.
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`
`
`
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`1100 New York Avenue, N.W. Registration No. 39,967
`Washington, D.C.20005-3934
`
`(202) 371-2600
`1803937_1
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`APOTEX CORP.'S MOTION FOR PRO HAC VICE ADMISSION
`CASE IPR2013-00428
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`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
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`
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`The undersigned hereby certifies that the above-captioned “Apotex Corp.'s
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`Motion for Pro Hac Vice Admission of H. Keeto Sabharwal under 37 C.F.R. §
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`42.10(c)” was served in its entirety on February 4, 2014, upon the following parties
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`via email:
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`Stanley E. Fisher
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`sfisher@wc.com
`Williams & Connolly, LLP
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`Barry L. Copeland
`barry.copeland@alcon.com
`patent.docketing@alcon.com
`Alcon Research, Ltd.
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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`/Eldora L. Ellison/
`Eldora L. Ellison, Ph.D.
`Lead Attorney for Petitioner, Apotex Corp.
`Registration No. 39,967
`
`
`
`
`Date: February 4, 2014
`1100 New York Avenue, N.W.
`Washington, D.C.20005-3934
`(202) 371-2600
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`- 10 -
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