Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 17
`Entered: September September 29, 2014
`
`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 E
`_______________
`
`Before FRANCISCO C. PRATS, JACQUELINE WRIGHT BONILLA, and
`ZHENYU YANG, Administrative Patent Judges.
`
`BONILLA, Administrative Patent Judge.
`
`
`DECISION
`Petitioners’ Motion for Pro Hac Vice
`Admission of Charles B. Klein
`37 C.F.R. § 42.10
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 17
`Entered: September September 29, 2014
`
`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 E
`_______________
`
`Before FRANCISCO C. PRATS, JACQUELINE WRIGHT BONILLA, and
`ZHENYU YANG, Administrative Patent Judges.
`
`BONILLA, Administrative Patent Judge.
`
`
`DECISION
`Petitioners’ Motion for Pro Hac Vice
`Admission of Charles B. Klein
`37 C.F.R. § 42.10
`
`
`
`IPR2014-01126
`Patent RE 38,551 E
`
`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”) filed a Motion for Pro Hac Vice
`Admission of Charles B. Klein. Paper 12 (“Motion”). Petitioners also filed
`Motions for Pro Hac Vice Admission of James F. Hurst (Paper 11) and Maureen L.
`Rurka (Paper 13). Petitioners filed Declarations from Mr. Klein (Ex. 1038), as
`well as the other two attorneys (Exs. 1037 and 1039), in support of the Motions.
`Research Corporation Technologies, Inc., (“Patent Owner”) filed an Opposition to
`Petitioners’ Motions for Pro Hac Vice Admission of all three attorneys. Paper 15
`(“Opposition”). For the reasons provided below, the Motion for Pro Hac Vice
`Admission of Charles B. Klein is granted.
`As set forth in 37 C.F.R. § 42.10(c), we 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. For example, where the lead counsel is a
`registered practitioner, a non-registered practitioner may be permitted to appear
`pro hac vice “upon showing that counsel is an experienced litigating attorney and
`has an established familiarity with the subject matter at issue in the proceeding.”
`37 C.F.R. § 42.10(c). In authorizing motions for pro hac vice admission, we also
`require a statement of facts showing there is good cause for us to recognize counsel
`pro hac vice and an affidavit or declaration of the individual seeking to appear in
`this proceeding. See Paper 8 at 2; see also “Order—Authorizing Motion for Pro
`Hac Vice Admission” in Unified Patents, Inc. v. Parallel Iron, LLC, Case
`IPR2013-00639, Paper 7 (PTAB Oct. 15, 2013) (expanded panel) (superseding
`IPR2013-00010, Paper 8).
`
`
` 2
`
`
`
`
`
`
`
`IPR2014-01126
`Patent RE 38,551 E
`
`In their Motion, Petitioners state that there is good cause for Mr. Klein’s pro
`hac vice admission because he: (1) is an experienced litigation attorney, who has
`been involved in numerous patent cases; (2) has familiarity with relevant subject
`matter because he “is 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.))”; and (3) “has
`obtained familiarity with the involved patent, the prior art, and the various issues
`raised in this proceeding.” Motion, 2-3. In support of the Motion, Mr. Klein
`attests to these facts in his Declaration with sufficient explanations. Ex. 1038.
`In its Opposition, Patent Owner states that Petitioners have filed “three
`virtually identical” Motions for Pro Hac Vice Admission of three trial attorneys,
`including Mr. Klein. Opposition 2. Patent Owner contends that Petitioners have
`not shown good cause for admission of all three when the “admission of one
`qualified trial counsel” is reasonable and “furthers the just, speedy, and
`inexpensive resolution of this proceeding.” Id. (citing 37 C.F.R. § 42.1(b)). Patent
`Owner also contends that the Motion presents “no attribute, knowledge, or
`experience that distinguishes one counsel over another,” except to acknowledge the
`designation of Mr. Hurst as “lead” trial counsel. Id. at 3. Patent Owner further
`asserts that we should deny pro hac vice admission of all three attorneys because
`none have “any particular expertise in inter partes review,” pointing out that none
`have applied to appear pro hac vice before the Board in the last three years. Id.
`Based on the facts set forth above, we conclude that Mr. Klein has sufficient
`legal and technical qualifications to represent Petitioners in this proceeding.
`Accordingly, Petitioners have established good cause for Mr. Klein’s pro hac vice
`admission.
`
` 3
`
`
`
`
`
`
`
`IPR2014-01126
`Patent RE 38,551 E
`
`We note that Petitioners do not fail to establish good cause by virtue of
`requesting pro hac vice admission of three trial attorneys rather than just one.
`There are legitimate reasons why a party may wish to have more than one trial
`attorney involved in an inter partes review as back-up counsel, especially when a
`number of parties act collectively as one party in relation to single Petition, as is
`the case for Petitioners here. Three additional attorneys acting as back-up counsel
`in this proceeding is not excessive, and counsel for Petitioners will speak as one
`collective voice before the Board in any event. Petitioners also do not fail to
`establish good cause because none of the three attorneys have applied to appear
`pro hac vice before the Board in the last three years. Even assuming those
`attorneys have no expertise in proceedings before the Board prior to now,
`Petitioners’ lead counsel, Samuel S. Park, is a registered practitioner. Motion 2.
`Mr. Klein will be permitted to appear pro hac vice in the instant proceeding
`as back-up counsel only. See 37 C.F.R. § 42.10(c).
`
`For the forgoing reasons, it is
`
`ORDERED that Petitioners’ Motion for Pro Hac Vice Admission of Mr.
`
`Klein for this proceeding is GRANTED;
`
`FURTHER ORDERED that Petitioners are to continue to have a registered
`practitioner represent it as lead counsel for this proceeding; and
`FURTHER ORDERED that Mr. Klein is to comply with the Office Patent
`Trial Practice Guide and the Board’s Rules of Practice for Trials, as set forth in
`Part 42 of the C.F.R., and to be subject to the Office’s Code of Professional
`Responsibility set forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction
`under 37 C.F.R. § 11.19(a).
`
` 4
`
`
`
`
`
`
`
`IPR2014-01126
`Patent RE 38,551 E
`
`
`
`For PETITIONERS:
`
`
`Samuel S. Park
`Andrew R. Sommer
`WINSTON & STRAWN LLP
`spark@winston.com
`asommer@winston.com
`
`
`
`For PATENT OWNER:
`
`
`Andrea G. Reister
`Enrique D. Longton
`Gregory S. Discher
`COVINGTON & BURLING LLP
`areister@cov.com
`rlongton@cov.com
`gdischer@cov.com
`
` 5
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