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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`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.
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`RESEARCH CORPORATION TECHNOLOGIES, INC.,
`Patent Owner
`
`
`
`Case: IPR2014-01126
`Patent RE 38,551
`
`
`
`PETITIONERS’ MOTION FOR PRO HAC VICE ADMISSION
`OF CHARLES B. KLEIN 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
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`
`
`Pursuant to 37 C.F.R. § 42.10, and pursuant to the authorization provided by
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`the United States Patent and Trademark Office’s Patent Trial and Appeal Board
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`(“Board”) in the Notice of Filing Date Accorded to Petition and Time for Filing
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`Patent Owner Preliminary Response (Paper Number 8, mailed July 23, 2014) (“the
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`Notice”), Petitioners Actavis, Inc., Actavis Laboratories FL, Inc. (f/k/a Watson
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`Laboratories, Inc. – Florida), Actavis Pharma, Inc. (f/k/a Watson Pharma, Inc.),
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`Amneal Pharmaceuticals, LLC, Amneal Pharmaceuticals of New York, LLC,
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`Aurobindo Pharma Ltd., Aurobindo Pharma USA, Inc., Breckenridge
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`Pharmaceutical, Inc., Vennoot Pharmaceuticals, LLC, Sandoz Inc., Sun Pharma
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`Global FZE, and Sun Pharmaceutical Industries, Ltd. submit this motion for
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`Charles B. Klein to appear pro hac vice. Petitioners respectfully request the Board
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`to recognize Mr. Klein as counsel pro hac vice during this proceeding, and
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`demonstrate good cause for doing so as shown below.
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`I.
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`TIME FOR FILING
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`Pursuant to the authorization provided in the Notice, as well as the “Order –
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`Authorizing Motion for Pro Hac Vice Admission” in Unified Patents, Inc. v.
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`Parallel Iron, LLC, IPR2013-00639, Paper 7 (Oct. 15, 2013) (“the Order”), this
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`motion for pro hac vice admission is being filed no sooner than twenty-one (21)
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`days after service of the Petition.
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`
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`
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`II.
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`STATEMENT OF FACTS
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`Pursuant to the Order, the following statement of facts shows that good
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`cause exists for the Board to recognize Mr. Klein pro hac vice.
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`Lead counsel for this proceeding, Samuel S. Park, is a registered practitioner
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`(Reg. No. 59,656).
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`Mr. Klein is an experienced litigation attorney with 19 years of litigation
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`experience. Ex. 1038 ¶ 8. He has been involved in numerous patent infringement
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`cases in federal district courts across the country. Id. He has experience in various
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`aspects of patent infringement matters, including jury and bench trials, Markman
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`hearings, and summary judgment hearings. Id. He has argued in multiple patent
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`cases in federal courts. Id.
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`Mr. Klein is a member in good standing of the District of Columbia and
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`Virginia Bars and is admitted to practice before the United States Supreme Court,
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`the United States Court of Appeals for the Federal Circuit, the United States Court
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`of Appeals for the Third Circuit, the United States Court of Appeals for the Fourth
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`Circuit, the United States Court of Appeals for the Seventh Circuit, the United
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`States Court of Appeals for the Ninth Circuit, the United States Court of Appeals
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`for the District of Columbia Circuit, the United States Court of Federal Claims,
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`the United States District Court for the District of Arizona, the United States
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`District Court for the District of Columbia, the United States District Court for the
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`2
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`
`
`
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`District of Maryland, the United States District Court for the Eastern District of
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`Michigan, the United States District Court for the Eastern District of Virginia, the
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`United States District Court for the Western District of Virginia, the United States
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`Bankruptcy Court for the Eastern District of Virginia Alexandria Division, and the
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`Supreme Court for the Commonwealth of Virginia. Id. ¶ 1.
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`Mr. Klein has not been suspended or disbarred from practice, has never had
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`any application for admission to practice denied, and has never had any sanctions
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`or contempt citations imposed against him. Id. ¶¶ 2-4.
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`Mr. Klein is trial counsel for Petitioners in patent litigation against Patent
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`Owner concerning the patent challenged in the Petition (UCB, Inc., et al. v. Accord
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`Healthcare, Inc., et al., C.A. No. 13-1206-LPS (D. Del.)). Id. ¶ 8. As a result of
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`Mr. Klein’s involvement as trial counsel for Petitioners in co-pending district court
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`litigation over the involved patent, Mr. Klein has obtained familiarity with the
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`involved patent, the prior art, and the various issues raised in this proceeding.
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`Moreover, Mr. Klein has reviewed the involved patent, the Petition, the prior art,
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`and all other cited materials. Id. Given his extensive patent litigation
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`experience—including patent litigation on behalf of Petitioners—and his
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`familiarity with the instant Petition, the cited materials, and the patented
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`technology, Mr. Klein has established familiarity with the subject matter at issue in
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`this proceeding. Id.
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`3
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`
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`Mr. Klein has read and will comply with the Office Patent Trial Practice
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`Guide and the Board’s Rules for Practice for Trials set forth in part 42 of the
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`C.F.R., and he agrees to be subject to the USPTO Rules of Professional Conduct
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`set forth in 37 C.F.R. §§ 11.101 et seq., and to disciplinary jurisdiction under 37
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`C.F.R. § 11.19(a). Id. ¶¶ 5-6.
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`Mr. Klein has not applied to appear pro hac vice in the last three years in any
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`matter before the Board. Id. ¶ 7.
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`Given that Mr. Klein is a trusted advisor to Petitioners on matters involving
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`the litigation of patent disputes—including patent litigation concerning the patent
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`at issue here—and his familiarity with the subject matter at issue in this
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`proceeding, Petitioners respectfully submit that they have shown good cause for
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`the Board to recognize Mr. Klein as counsel pro hac vice during this proceeding.
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`III. AFFIDAVIT OR DECLARATION OF INDIVIDUAL SEEKING TO
`APPEAR
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`This Motion is accompanied by a Declaration of Mr. Klein as required by
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`the Order.
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`4
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`
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`Respectfully submitted,
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`
`
` /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.
`
`
`
`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
`
`
`5
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`
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`
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), I certify that, on August 19,
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`2014, I caused to be served true and correct copies of the foregoing
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`“PETITIONERS’ MOTION FOR PRO HAC VICE ADMISSION OF CHARLES
`
`B. KLEIN UNDER 37 C.F.R. § 42.10” by electronic mail on the following
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`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
`
`
`
`Dated: August 19, 2014
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`WINSTON & STRAWN LLP
`35 W. Wacker Drive
`Chicago, IL 60601
`Telephone: (312) 558-7931
`Fax: (312) 558-5700
`Email: spark@winston.com
`
`Respectfully submitted,
`
` /Samuel S. Park/
`Samuel S. Park
`Reg. No. 59,656
`
`Lead Counsel for Petitioners