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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APOTEX CORP.,
`Petitioner
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`v.
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`ALCON RESEARCH, LTD.,
`Patent Owner.
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`Case IPR2013-00428
`U.S. Patent No. 8,268,299 B2
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`ALCON RESEARCH, LTD.’S MOTION FOR
`PRO HAC VICE ADMISSION OF CHRISTOPHER J. MANDERNACH
`PURSUANT TO 37 C.F.R. § 42.10(c)
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`Case IPR2013-00428
`U.S. Patent No. 8,268,299
`I.
`RELIEF REQUESTED
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`Attorney Docket No.
`PAT903205-US-NP
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`Pursuant to 37 C.F.R. § 42.10(c), the Board’s Notice of Filing Date
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`Accorded to Petition and Time for Filing Patent Order Preliminary Response
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`(Paper 4, dated July 10, 2013) (hereinafter “Authorizing Order”), and the Board’s
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`“Order–Authorizing Motion for Pro Hac Vice Admission” in Case IPR2013-00639
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`(hereinafter “Unified Patents Order”), Patent Owner Alcon Research, Ltd.
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`(“Alcon”) respectfully requests pro hac vice admission of Christopher J.
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`Mandernach in this proceeding. Petitioner Apotex Corp. does not object to the
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`relief requested herein.
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`II. GOVERNING LAW, RULES, AND PRECEDENT
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`The Board is authorized to recognize counsel pro hac vice pursuant to 37
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`C.F.R. § 42.10(c), which provides that:
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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 Authorizing Order requires that any motion for pro hac vice admission
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`be filed in accordance with the “Order – Authorizing Motion for Pro Hac Vice
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`1
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`Attorney Docket No.
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`Case IPR2013-00428
`PAT903205-US-NP
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`U.S. Patent No. 8,268,299
`Admission” in Case IPR 2013-00010 (MPT) (“Prior Order”). See Authorizing
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`Order at 2. However, the Prior Order was issued prior to publication of the Final
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`Rule adopting new Rules of Professional Conduct. See Changes to Representation
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`of Others Before the United States Patent and Trademark Office; Final Rule, 78
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`Fed. Reg. 20,180 (Apr. 3, 2013); see also Unified Patents Order at 2. The Final
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`Rule removes part 10 of title 37, Code of Federal Regulations (C.F.R.), referred to
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`in the Prior Order. See Unified Patents Order at 2. As a result, the Board has
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`determined that its Unified Patents Order “updates and supersedes” the Prior
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`Order. Unified Patents Order at 2. Accordingly, Alcon assumes that the Board
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`wishes counsel to follow as a representative order the Unified Patents Order and
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`has done so in this motion.
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`The Unified Patents Order requires that a pro hac vice motion “[c]ontain a
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`statement of facts showing there is good cause for the Board to recognize counsel
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`pro hac vice during the proceeding.” Unified Patents Order at 3. A motion for pro
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`hac vice admission should also be accompanied by an affidavit or declaration of
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`the individuals seeking to appear attesting to the following:
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`i.
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`Membership in good standing of the Bar of at least one State or the
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`District of Columbia;
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`ii.
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`No suspensions or disbarments from practice before any court or
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`administrative body;
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`2
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`Attorney Docket No.
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`Case IPR2013-00428
`PAT903205-US-NP
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`U.S. Patent No. 8,268,299
`iii. No application for admission to practice before any court or
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`administrative body ever denied;
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`iv. No sanctions or contempt citations imposed by any court or
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`administrative body;
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`v.
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`The individual seeking to appear has read and will comply with the
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`Office Patent Trial Practice Guide and the Board’s Rules of Practice
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`for Trials set forth in part 42 of 37 C.F.R.;
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`vi.
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`The individual will be subject to the USPTO Rules of Professional
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`Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary
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`jurisdiction under 37 C.F.R. § 11.19(a);
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`vii. All other proceedings before the Office for which the individual has
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`applied to appear pro hac vice in the last three (3) years; and
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`viii. Familiarity with the subject matter at issue in the proceeding.
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`Unified Patents Order at 3–4.
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`In its Authorizing Order, the Board gave Alcon permission to file motions
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`for pro hac vice admission. (See Paper 4 at 2.) Pursuant to that Order, Alcon
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`hereby files a motion for pro hac vice admission of Christopher J. Mandernach.
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`3
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`Case IPR2013-00428
`U.S. Patent No. 8,268,299
`III. STATEMENT OF FACTS
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`Attorney Docket No.
`PAT903205-US-NP
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`Based on the following facts, and supported by the Declaration of Mr.
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`Mandernach (AL 2075) submitted herewith, Alcon requests the pro hac vice
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`admission of Christopher J. Mandernach in this proceeding:
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`1.
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`Alcon’s lead counsel, Stanley E. Fisher, and back-up counsel, David
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`M. Krinsky and Barry L. Copeland, are registered practitioners
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`(Fisher, Reg. No. 55,820); (Copeland, Reg. No. 34,801); (Krinsky,
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`Reg. No. 72,339).
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`2. Mr. Mandernach has established familiarity with the subject matter at
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`issue in this proceeding. As detailed below, Mr. Mandernach is trial
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`counsel to Alcon in various related proceedings in which the claims of
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`the ’299 patent are at issue. (AL 2075 ¶ 10.) Mr. Mandernach has
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`worked directly with Alcon’s expert witnesses on the matters at issue
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`in this proceeding. (Id.)
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`3. Mr. Mandernach is a member in good standing of the bars of the State
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`of Minnesota and the District of Columbia. (AL 2075 ¶ 3.)
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`4. Mr. Mandernach has never been suspended or disbarred from practice
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`before any court or administrative body. (AL 2075 ¶ 4.)
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`5.
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`No court or administrative body has ever denied Mr. Mandernach’s
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`application for admission to practice before it. (AL 2075 ¶ 5.)
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`4
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`Attorney Docket No.
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`Case IPR2013-00428
`PAT903205-US-NP
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`U.S. Patent No. 8,268,299
`6.
`No court or administrative body has ever imposed sanctions or
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`contempt citations on Mr. Mandernach. (AL 2075 ¶ 6.)
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`7. Mr. Mandernach has read and will comply with the Office of Patent
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`Trial Practice Guide and the Board’s Rules of Practice for Trials set
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`forth in part 42 of 37 C.F.R. (AL 2075 ¶ 7.)
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`8. Mr. Mandernach understands that he will be subject to the USPTO
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`Code of Professional Responsibility set forth in 37 C.F.R. §§ 11.101
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`et seq. and will be subject to disciplinary jurisdiction under 37 C.F.R.
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`§ 11.19(a). (AL 2075 ¶ 8.)
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`9. Mr. Mandernach is concurrently seeking pro hac vice admission to
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`appear in the Petitioner’s inter partes challenges to U.S. Patent Nos.
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`8,323,630 and 8,388,941. Those proceedings have been designated
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`IPR2013-00429 and IPR2013-00430, respectively. Mr. Mandernach
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`has not applied to appear pro hac vice in any other proceedings before
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`the Office in the last three (3) years. (AL 2075 ¶ 9.)
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`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION OF
`MR. MANDERNACH IN THIS PROCEEDING.
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`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.
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`§ 42.10(c). Alcon’s lead counsel, Stanley E. Fisher, and back-up counsel, David
`5
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`Attorney Docket No.
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`Case IPR2013-00428
`PAT903205-US-NP
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`U.S. Patent No. 8,268,299
`M. Krinsky and Barry L. Copeland, are registered practitioners before the Board.
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`Based on the facts contained herein, as supported by Mr. Mandernach’s
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`declaration, good cause exists to admit Mr. Mandernach pro hac vice in this
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`proceeding.
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`As set forth in his declaration, Mr. Mandernach has established familiarity
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`with the subject matter at issue in the proceeding. Mr. Mandernach represents
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`Alcon in federal district court litigation concerning the claims of the ’299 patent at
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`issue here. Mr. Mandernach is currently counsel for Alcon in litigation against
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`other generic pharmaceutical companies in the U.S. District Court for the District
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`of Delaware in which the ’299 patent is at issue: Alcon Research, Ltd. v. Mylan
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`Pharmaceuticals Inc. & Mylan Inc., No. 1:13-cv-01332 (SLR); Alcon Research,
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`Ltd. v. Wockhardt Ltd., Wockhardt Bio AG, & Wockhardt USA, LLC, No. 1:13-cv-
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`02040 (SLR); and Alcon Research, Ltd. v. Micro Labs Ltd. & Micro Labs USA
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`Inc., No. 1:14-cv-00014 (SLR). In addition, Mr. Mandernach has worked with the
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`fact and expert witnesses who submitted declarations in connection with Alcon’s
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`Response to Petitioner’s inter partes petition.
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`Mr. Mandernach thus has experience litigating the precise subject matter
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`raised in Petitioner’s inter partes petition. As trial counsel for Alcon, Mr.
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`Mandernach has been actively involved in all aspects of its district court litigation,
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`including Alcon’s factual investigation and development concerning the claims of
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`6
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`Attorney Docket No.
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`Case IPR2013-00428
`PAT903205-US-NP
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`U.S. Patent No. 8,268,299
`the ’299 patent being challenged in this proceeding. In view of Mr. Mandernach’s
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`knowledge of the precise subject matter at issue in this proceeding, and in view of
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`the interrelatedness of this proceeding and the district court litigation, admission of
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`Mr. Mandernach pro hac vice will avoid unnecessary expense and duplication of
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`work for Alcon between this and the district court proceedings identified above.
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`See 77 Fed. Reg. 48,680, 48,720 (Aug. 14, 2012) (Office’s comment on final rule
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`discussing concerns about efficiency and costs where a patent owner has already
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`engaged counsel for parallel district court litigation). In addition, admission of Mr.
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`Mandernach pro hac vice will enable him to participate in defending the
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`depositions of the Alcon witnesses with whom he has worked. For these reasons,
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`Alcon has a substantial need for Mr. Mandernach’s pro hac vice admission and his
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`involvement in the continued prosecution of this proceeding.
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`V. CONCLUSION
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`For the foregoing reasons, Alcon respectfully requests that Mr. Mandernach
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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 No. 010682.
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`Dated: April 7, 2014
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`Respectfully submitted,
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`/Stanley E. Fisher/
`Stanley E. Fisher
`7
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`Attorney Docket No.
`PAT903205-US-NP
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`Reg. No. 55,820
`Phone: 202-434-5289
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`Case IPR2013-00428
`U.S. Patent No. 8,268,299
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`Correspondence Address:
`Williams & Connolly LLP
`725 Twelfth Street NW
`Washington, D.C. 20005
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`8
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`Attorney Docket No.
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`Case IPR2013-00428
`PAT903205-US-NP
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`U.S. Patent No. 8,268,299
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
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`The undersigned hereby certifies that the foregoing “ALCON RESEARCH
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`LTD.’S MOTION FOR PRO HAC VICE ADMISSION OF CHRISTOPHER J.
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`MANDERNACH PURSUANT TO 37 C.F.R. § 42.10(c)” and “DECLARATION
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`OF CHRISTOPHER J. MANDERNACH IN SUPPORT OF MOTION FOR PRO
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`HAC VICE ADMISSION PURSUANT TO 37 C.F.R. § 42.10(c)” were served on
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`April 7, 2014, by filing this document through the Patent Review Processing
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`System as well as delivering a copy electronically to the following attorneys of
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`record for the Petitioner:
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`Eldora L. Ellison (Reg. No. 39,967)
`Ralph W. Powers III (Reg. No. 63,504)
`David H. Holman (Reg. No. 61,205)
`H. Keeto Sabharwal
`Paul A. Ainsworth
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`1100 New York Avenue, NW
`Washington, DC 20005
`(202) 371-2600 (telephone)
`(202) 371-2540 (facsimile)
`eellison-PTAB@skgf.com
`tpowers-PTAB@skgf.com
`dholman-PTAB@skgf.com
`keetos-PTAB@skgf.com
`painsworth@skgf.com
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`Dated: April 7, 2014
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`Respectfully submitted,
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`/Stanley E. Fisher/
`Stanley E. Fisher
`Reg. No. 55,820
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`9
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