`Date Filed: November 17, 2014
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`Filed On Behalf Of:
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`Novartis AG and LTS Lohmann Therapie-Systeme AG
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`By:
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`Raymond R. Mandra
`ExelonPatchIPR@fchs.com
`(212) 218-2100
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`NOVEN PHARMACEUTICALS INC.,
`Petitioner
`
`v.
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`NOVARTIS AG AND LTS LOHMANN THERAPIE-SYSTEME AG,
`Patent Owners
`
`Inter Partes Review No. 2014-00549
`
`U.S. Patent 6,316,023
`
`PATENT OWNERS’ MOTION FOR PRO HAC VICE ADMISSION OF
`CHARLOTTE C. JACOBSEN UNDER 37 C.F.R. § 42.10
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`
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`I.
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`RELIEF REQUESTED
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`Pursuant to 37 C.F.R. § 42.10(c), Patent Owners Novartis AG and LTS
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`Lohmann Therapie-Systeme AG (collectively, “Novartis”) respectfully request the
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`pro hac vice admission of Charlotte C. Jacobsen in this proceeding.
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`This motion is being filed more than twenty one (21) days after service of
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`the Petition. Petitioner does not oppose the motion.
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`II.
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`THE GOVERNING LAW, RULES, AND PRECEDENT
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`37 C.F.R. § 42.10(c) concerns motions for pro hac vice admission and states
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`as follows:
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`The Board may recognize counsel pro hac vice during a
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`proceeding upon a showing of good cause, subject to the
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`condition that lead counsel be a registered practitioner
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`and to any other conditions as the Board may impose. For
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`example, where the lead counsel is a registered
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`practitioner, a motion to appear pro hac vice by counsel
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`who is not a registered practitioner may be granted upon
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`showing that counsel is an experienced litigating attorney
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`and has an established familiarity with the subject matter
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`at issue in the proceeding.
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`The Board has stated that motions for pro hac vice admission under 37
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`C.F.R. § 42.10(c) must be filed in accordance with the “Order – Authorizing
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`Motion for Pro Hac Vice Admission” entered in Case IPR2013-00010 (Paper 6)
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`(Informative Opinion).
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`In that Order, the Board stated that motions for pro hac vice admission must
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`“[c]ontain a statement of facts showing there is good cause for the Board to
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`recognize counsel pro hac vice during the proceeding,” and must “[b]e
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`accompanied by an affidavit or declaration of the individual seeking to appear
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`attesting to the following:”
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`i.
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`Membership in good standing of the Bar of at least one
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`State or the District of Columbia;
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`ii.
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`No suspensions or disbarments from practice before any
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`court or administrative body;
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`iii.
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`No application for admission to practice before any court
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`or administrative body ever denied;
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`iv.
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`No sanctions or contempt citations imposed by any court
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`or administrative body;
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`v.
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`The individual seeking to appear has read and will
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`comply with the Office Patent Trial Practice Guide and
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`the Board’s Rules of Practice for Trials set forth in part
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`42 of the C.F.R.;
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`vi.
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`The individual will be subject to the USPTO Code of
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`Professional Responsibility set forth in 37 C.F.R.
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`§§ 10.20 et seq. and disciplinary jurisdiction under 37
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`C.F.R. § 11.19(a);
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`vii. All other proceedings before the Office for which the
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`individual has applied to appear pro hac vice in the last
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`three (3) years; and
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`viii. Familiarity with the subject matter at issue in the
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`proceeding.
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`III.
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`STATEMENT OF MATERIAL FACTS
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`Based on the following facts, which are supported by the Declaration of Ms.
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`Charlotte C. Jacobsen (Ex 2005) filed concurrently with this motion, Patent
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`Owners request that Charlotte C. Jacobsen be admitted pro hac vice in this
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`proceeding:
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`1.
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`Patent Owners’ lead counsel, Raymond R. Mandra, is a registered
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`practitioner (Reg. No. 34,382).
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`2.
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`Ms. Jacobsen is a partner at the law firm of Fitzpatrick, Cella, Harper
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`& Scinto. (Ex 2005 at ¶ 3.)
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`3
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`3.
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`Ms. Jacobsen is an experienced patent litigation attorney. Ms.
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`Jacobsen has been a patent litigation attorney for more than eleven
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`(11) years. (Id. at ¶ 4.) Ms. Jacobsen has been litigating patent cases
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`during this entire time period and has been involved in numerous
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`cases involving patent validity and infringement in District Courts
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`across the country as well as at the Federal Circuit. (Id.) She has
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`extensive experience in bench trials. (Id.)
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`4.
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`Ms. Jacobsen is a member in good standing of the State Bar of New
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`York and the Bar of England and Wales. (Id. at ¶ 5.)
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`5.
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`Ms. Jacobsen has never been suspended or disbarred from practice
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`before any court or administrative body. (Id.)
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`6.
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`No application of Ms. Jacobsen for admission to practice before any
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`court or administrative body has ever been denied. (Id. at ¶ 6.)
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`7.
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`No sanctions or contempt citations have ever been imposed against
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`Ms. Jacobsen by any court or administrative body. (Id. at ¶ 7.)
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`8.
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`Ms. Jacobsen 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.
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`Ms. Jacobsen understands that she will be subject to the Office’s
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`Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq.
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`and disciplinary jurisdiction under 37 C.F.R. § 11.19(a). (Id. at ¶ 9.)
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`10. Ms. Jacobsen is concurrently seeking pro hac vice admission to
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`appear in a co-pending related matter, Case IPR2014-00550. (Id. at ¶
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`10.) Ms. Jacobsen has not applied to appear pro hac vice in another
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`proceeding before the Office in the last three (3) years. (Id.)
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`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION OF
`MS. JACOBSEN 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
`
`practitioner and to any other conditions as the Board may impose. 37 C.F.R.
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`§ 42.10(c). Patent Owners’ lead counsel, Raymond R. Mandra, is a registered
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`practitioner. Based on the facts set forth in this motion, as supported by Ms.
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`Jacobsen’s Declaration (Ex 2005), there is good cause to admit Ms. Jacobsen pro
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`hac vice in this proceeding.
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`Ms. Jacobsen has an established familiarity with the subject matter at issue
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`in this proceeding. (Ex 2005 at ¶¶ 11-15.) She has been involved consistently and
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`substantively in this matter for over 7 months, since its inception in April 2014.
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`(Id. at ¶ 11.) She has read in detail and understands the Petition and the
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`challenged patent, U.S. Patent 6,316,023 (“the ’023 patent”). (Id.) She has also
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`reviewed in detail all the exhibits relied upon by Petitioner in this proceeding. (Id.)
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`Additionally, Ms. Jacobsen has engaged in extensive strategic and substantive
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`discussions regarding this proceeding with Raymond R. Mandra, who is the lead
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`counsel for Patent Owners in this proceeding and in Case IPR2014-00550, and
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`Nicholas K. Kallas, who is the back-up counsel for Patent Owners in this
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`proceeding. (Id. at ¶ 12.) She has engaged in extensive substantive discussions
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`with experts concerning issues relevant to this proceeding and Case IPR2014-
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`00550. (Id.) Since January 2012, she has served as counsel for Patent Owners in
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`several related lawsuits in which the ’023 patent is and was asserted. (Id. at ¶ 13.)
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`Two of those lawsuits are against Petitioner. (Id.) In those two lawsuits, she
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`recently deposed one of Petitioner’s declarants from this proceeding. (Id.)
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`Thus, Ms. Jacobsen has an established familiarity with the subject matter at
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`issue in this proceeding as well as significant litigation experience and expertise.
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`For these reasons, good cause exists to admit Ms. Jacobsen pro hac vice in this
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`proceeding.
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`Dated: November 17, 2014
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`Respectfully submitted,
`
`/Raymond R. Mandra /
`Raymond R. Mandra
`Registration No. 34,382
`Lead Counsel for Patent Owners
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`
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`FITZPATRICK, CELLA, HARPER
`& SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`Tel. 212-218-2100
`
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`
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`CERTIFICATE OF SERVICE
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`I certify that a copy of the Patent Owners’ Motion For Pro Hac Vice
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`Admission of Charlotte C. Jacobsen Under 37 C.F.R. § 42.10 was served on
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`November 17, 2014 by causing it to be sent by email to counsel for Petitioner at
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`the following email addresses:
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`Steven J. Lee (slee@kenyon.com)
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`Michael K. Levy (mlevy@kenyon.com)
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`Dated: November 17, 2014
`
`/Raymond R. Mandra /
`Raymond R. Mandra
`Registration No. 34,382
`FITZPATRICK, CELLA, HARPER
`& SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`Tel. 212-218-2100
`
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