UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`ACTAVIS, INC., ACTAVIS LABORATORIES FL, INC.,
`ACTAVIS PHARMA, INC., AMNEAL PHARMACEUTICALS, LLC,
`AMNEAL PHARMACEUTICALS OF NEW YORK, LLC,
`AUROBINDO PHARMA LTD., AUROBINDO PHARMA USA, INC.,
`BRECKENRIDGE PHARMACEUTICAL, INC., VENNOOT
`PHARMACEUTICALS, LLC, SANDOZ INC., SUN PHARMA GLOBAL FZE,
`and SUN PHARMACEUTICAL INDUSTRIES, LTD.,
`Petitioners
`
`v.
`
`RESEARCH CORPORATION TECHNOLOGIES, INC.,
`Patent Owner
`
`
`
`Case: IPR2014-01126
`Patent RE 38,551
`
`
`
`PETITIONERS’ MOTION FOR PRO HAC VICE ADMISSION OF
`JAMES F. HURST UNDER 37 C.F.R. § 42.10
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313–1450
`Submitted Electronically via the Patent Review Processing System
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`ACTAVIS, INC., ACTAVIS LABORATORIES FL, INC.,
`ACTAVIS PHARMA, INC., AMNEAL PHARMACEUTICALS, LLC,
`AMNEAL PHARMACEUTICALS OF NEW YORK, LLC,
`AUROBINDO PHARMA LTD., AUROBINDO PHARMA USA, INC.,
`BRECKENRIDGE PHARMACEUTICAL, INC., VENNOOT
`PHARMACEUTICALS, LLC, SANDOZ INC., SUN PHARMA GLOBAL FZE,
`and SUN PHARMACEUTICAL INDUSTRIES, LTD.,
`Petitioners
`
`v.
`
`RESEARCH CORPORATION TECHNOLOGIES, INC.,
`Patent Owner
`
`
`
`Case: IPR2014-01126
`Patent RE 38,551
`
`
`
`PETITIONERS’ MOTION FOR PRO HAC VICE ADMISSION OF
`JAMES F. HURST UNDER 37 C.F.R. § 42.10
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313–1450
`Submitted Electronically via the Patent Review Processing System
`
`
`
`Pursuant to 37 C.F.R. § 42.10, and pursuant to the authorization provided by
`
`the United States Patent and Trademark Office’s Patent Trial and Appeal Board
`
`(“Board”) in the Notice of Filing Date Accorded to Petition and Time for Filing
`
`Patent Owner Preliminary Response (Paper Number 8, mailed July 23, 2014) (“the
`
`Notice”), Petitioners Actavis, Inc., Actavis Laboratories FL, Inc. (f/k/a Watson
`
`Laboratories, Inc. – Florida), Actavis Pharma, Inc. (f/k/a Watson Pharma, Inc.),
`
`Amneal Pharmaceuticals, LLC, Amneal Pharmaceuticals of New York, LLC,
`
`Aurobindo Pharma Ltd., Aurobindo Pharma USA, Inc., Breckenridge
`
`Pharmaceutical, Inc., Vennoot Pharmaceuticals, LLC, Sandoz Inc., Sun Pharma
`
`Global FZE, and Sun Pharmaceutical Industries, Ltd. submit this motion for James
`
`F. Hurst to appear pro hac vice. Petitioners respectfully request the Board to
`
`recognize Mr. Hurst as counsel pro hac vice during this proceeding, and
`
`demonstrate good cause for doing so as shown below.
`
`I.
`
`TIME FOR FILING
`
`Pursuant to the authorization provided in the Notice, as well as the “Order –
`
`Authorizing Motion for Pro Hac Vice Admission” in Unified Patents, Inc. v.
`
`Parallel Iron, LLC, IPR2013-00639, Paper 7 (Oct. 15, 2013) (“the Order”), this
`
`motion for pro hac vice admission is being filed no sooner than twenty-one (21)
`
`days after service of the Petition.
`
`
`
`
`
`
`
`
`
`II.
`
`STATEMENT OF FACTS
`
`Pursuant to the Order, the following statement of facts shows that good
`
`cause exists for the Board to recognize Mr. Hurst pro hac vice.
`
`Lead counsel for this proceeding, Samuel S. Park, is a registered practitioner
`
`(Reg. No. 59,656).
`
`Mr. Hurst is an experienced litigation attorney with 25 years of litigation
`
`experience. Ex. 1037 ¶ 8. He has been involved in numerous patent infringement
`
`cases in federal district courts across the country. Id. He has experience in various
`
`aspects of patent infringement matters, including jury and bench trials, Markman
`
`hearings, and summary judgment hearings. Id. He has argued multiple patent
`
`cases before the U.S. Court of Appeals for the Federal Circuit. Id.
`
`Mr. Hurst is a member in good standing of the Illinois Bar and is admitted to
`
`practice before the United States Supreme Court, the United States Court of
`
`Appeals for the Federal Circuit, the United States Court of Appeals for the Fourth
`
`Circuit, the United States Court of Appeals for the Seventh Circuit, the United
`
`States Court of Appeals for the Ninth Circuit, the United States Court of Appeals
`
`for the District of Columbia Circuit, the United States District Court for the
`
`Eastern District of Texas, and the United States District Court for the Northern
`
`District of Illinois. Id. ¶ 1.
`
`2
`
`
`
`
`
`Mr. Hurst has not been suspended or disbarred from practice, has never had
`
`any application for admission to practice denied, and has never had any sanctions
`
`or contempt citations imposed against him. Id. ¶¶ 2-4.
`
`Mr. Hurst is lead trial counsel for Petitioners in patent litigation against
`
`Patent Owner concerning the patent challenged in the Petition (UCB, Inc., et al. v.
`
`Accord Healthcare, Inc., et al., C.A. No. 13-1206-LPS (D. Del.)). Id. ¶ 8. As a
`
`result of Mr. Hurst’s involvement as trial counsel for Petitioners in co-pending
`
`district court litigation over the involved patent, Mr. Hurst has obtained familiarity
`
`with the involved patent, the prior art, and the various issues raised in this
`
`proceeding. Moreover, Mr. Hurst has reviewed the involved patent, the Petition,
`
`the prior art, and all other cited materials. Id. Given his extensive patent litigation
`
`experience—including patent litigation on behalf of Petitioners—and his
`
`familiarity with the instant Petition, the cited materials, and the patented
`
`technology, Mr. Hurst has established familiarity with the subject matter at issue in
`
`this proceeding. Id.
`
`Mr. Hurst has read and will comply with the Office Patent Trial Practice
`
`Guide and the Board’s Rules for Practice for Trials set forth in part 42 of the
`
`C.F.R., and he agrees to be subject to the USPTO Rules of Professional Conduct
`
`set forth in 37 C.F.R. §§ 11.101 et seq., and to disciplinary jurisdiction under 37
`
`C.F.R. § 11.19(a). Id. ¶¶ 5-6.
`
`3
`
`
`
`
`
`Mr. Hurst has not applied to appear pro hac vice in the last three years in any
`
`matter before the Board. Id. ¶ 7.
`
`Given that Mr. Hurst is a trusted advisor to Petitioners on matters involving
`
`the litigation of patent disputes—including patent litigation concerning the patent
`
`at issue here—and his familiarity with the subject matter at issue in this
`
`proceeding, Petitioners respectfully submit that they have shown good cause for
`
`the Board to recognize Mr. Hurst as counsel pro hac vice during this proceeding.
`
`III. AFFIDAVIT OR DECLARATION OF INDIVIDUAL SEEKING TO
`APPEAR
`
`This Motion is accompanied by a Declaration of Mr. Hurst as required by
`
`Respectfully submitted,
`
`
`
` /Samuel S. Park/
`Samuel S. Park
`Reg. No. 59,656
`Lead Counsel for Petitioners Actavis,
`Inc., Actavis Laboratories FL, Inc.,
`Actavis Pharma, Inc., Amneal
`Pharmaceuticals, LLC, Amneal
`Pharmaceuticals of New York, LLC,
`Aurobindo Pharma Ltd., Aurobindo
`Pharma USA, Inc., Breckenridge
`Pharmaceutical, Inc., Vennoot
`Pharmaceuticals, LLC, Sandoz Inc.,
`Sun Pharma Global FZE, and Sun
`Pharmaceutical Industries, Ltd.
`
`4
`
`the Order.
`
`Dated: August 19, 2014
`
`
`
`WINSTON & STRAWN LLP
`35 W. Wacker Drive
`Chicago, IL 60601
`Telephone: (312) 558-7931
`Fax: (312) 558-5700
`Email: spark@winston.com
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), I certify that, on August 19,
`
`2014, I caused to be served true and correct copies of the foregoing
`
`“PETITIONERS’ MOTION FOR PRO HAC VICE ADMISSION OF JAMES F.
`
`HURST UNDER 37 C.F.R. § 42.10” by electronic mail on the following attorneys:
`
`
`
`Andrea G. Reister (Reg. No. 36,253)
`COVINGTON & BURLING LLP
`1201 Pennsylvania Ave., NW
`Washington, DC 20004
`areister@cov.com
`
`Lead Counsel for Patent Owner
`
`Enrique D. Longton (Reg. No. 47,304)
`Gregory S. Discher (Reg No. 42,488)
`COVINGTON & BURLING LLP
`1201 Pennsylvania Ave., NW
`Washington, DC 20004
`rlongton@cov.com
`gidscher@cov.com
`
`Backup Counsel for Patent Owner
`
`Respectfully submitted,
`
` /Samuel S. Park/
`Samuel S. Park
`Reg. No. 59,656
`
`Lead Counsel for Petitioners
`
`
`
`
`
`Dated: August 19, 2014
`
`WINSTON & STRAWN LLP
`35 W. Wacker Drive
`Chicago, IL 60601
`Telephone: (312) 558-7931
`Fax: (312) 558-5700
`Email: spark@winston.com
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