Filed on behalf of: INO Therapeutics, LLC
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`Entered: November 12, 2015
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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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`PRAXAIR DISTRIBUTION, INC.
`Petitioner
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`v.
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`INO THERAPEUTICS LLC,
`Patent Owner
`_______________________
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`Case IPR2015-00529
`U.S. Patent No. 8,846,112 B2
`_______________________
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`Before LORA M. GREEN, TINA E. HULSE, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
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`
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`PATENT OWNER INO THERAPEUTICS LLC’S MOTION FOR
`PRO HAC VICE ADMISSION OF KENNETH G. SCHULER
`UNDER 37 C.F.R. § 42.10(c)
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`Entered: November 12, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
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`PRAXAIR DISTRIBUTION, INC.
`Petitioner
`
`v.
`
`INO THERAPEUTICS LLC,
`Patent Owner
`_______________________
`
`Case IPR2015-00529
`U.S. Patent No. 8,846,112 B2
`_______________________
`
`Before LORA M. GREEN, TINA E. HULSE, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`
`
`PATENT OWNER INO THERAPEUTICS LLC’S MOTION FOR
`PRO HAC VICE ADMISSION OF KENNETH G. SCHULER
`UNDER 37 C.F.R. § 42.10(c)
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`Case IPR2015-00529
`U.S. Patent No. 8,849,112
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`I.
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`RELIEF REQUESTED
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`Under 37 C.F.R. § 42.10(c) and the Notice of Filing Date Accorded to
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`Petition and Time for Filing Patent Owner Preliminary Response (Paper No. 5),
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`Patent Owner INO Therapeutics LLC (“Patent Owner”) respectfully requests the
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`pro hac vice admission of attorney Kenneth G. Schuler, Esq. in this proceeding.
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`Patent Owner has conferred with counsel for Praxair Distribution, Inc.
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`(“Petitioner”), and Petitioner does not oppose this motion.
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`II. LEGAL STANDARD
`Under 37 C.F.R. § 42.10(c):
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`The Board may recognize counsel pro hac vice during a proceeding
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`upon a showing of good cause, subject to the condition that lead
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`counsel be a registered practitioner and to any other conditions as the
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`Board may impose. For example, where the lead counsel is a
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`registered practitioner, a motion to appear pro hac vice by counsel
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`who is not a registered practitioner may be granted upon showing that
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`counsel is an experienced litigating attorney and has an established
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`familiarity with the subject matter at issue in the proceeding.
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`The Notice of Filing Date Accorded to Petition and Time for Filing Patent
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`Owner Preliminary Response (Paper No. 5) further instructs:
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`The parties are advised that under 37 C.F.R. § 42.10(c), recognition of
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`1
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`Case IPR2015-00529
`U.S. Patent No. 8,849,112
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`counsel pro hac vice requires a showing of good cause. The parties
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`are authorized to file motions for pro hac vice admission under 37
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`C.F.R. § 42.10(c). Such motions shall be filed in accordance with the
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`“Order -- Authorizing Motion for Pro Hac Vice Admission” in Case
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`IPR2013-00639, Paper 7, a copy of which is available on the Board
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`Web site under “Representative Orders, Decisions, and Notices.”
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`(Id. at 2.) The above referenced “Order - - Authorizing Motion for Pro Hac Vice
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`Admission” further provides:
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`A motion for pro hac vice admission must:
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`a.
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`Contain a statement of facts showing there is good cause for the Board
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`to recognize counsel pro hac vice during the proceeding.
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`b.
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`Be accompanied by an affidavit or declaration of the individual
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`seeking to appear attesting to the following:
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`i. Membership in good standing of the Bar of at least one State or
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`the District of Columbia;
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`ii.
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`No suspensions or disbarments from practice before any court
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`or administrative body;
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`iii.
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`No application for admission to practice before any court or
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`administrative body ever denied;
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`iv.
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`No sanctions or contempt citations imposed by any court or
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`Case IPR2015-00529
`U.S. Patent No. 8,849,112
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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
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`the Office Patent Trial Practice Guide and Board’s Rules of
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`Practice 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
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`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);
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`vii.
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`All other proceedings before the Office for which the individual
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`has applied to appear pro hac vice in the last (3) years; and
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`viii.
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`Familiarity with the subject matter at issue in the proceeding.
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`(IPR2013-00639, Paper No. 7 at 3.) As set forth below, and in the accompanying
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`Declaration of Kenneth G. Schuler (“Schuler Decl.”), each of these requirements is
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`satisfied here.
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`III. STATEMENT OF FACTS SHOWING GOOD CAUSE FOR THE
`BOARD TO RECOGNIZE KENNETH G. SCHULER PRO HAC VICE
`IN THIS PROCEEDING
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`Mr. Schuler is a member in good standing of the Illinois State Bar (Bar No.
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`6226036). He is also admitted to practice before the U.S. District Courts for the
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`Eastern District of Michigan, Eastern District of Wisconsin, Northern District of
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`Illinois (General and Trial Bars), Southern District of Illinois, and the U.S. Courts
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`of Appeals for the Sixth, Seventh, and Federal Circuits. (Schuler Decl. at ¶ 2.)
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`3
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`Case IPR2015-00529
`U.S. Patent No. 8,849,112
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`Mr. Schuler has never been suspended or disbarred from practice before any court
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`or administrative body. (Id. at ¶ 3.) No application of Mr. Schuler for admission
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`to practice before any court or administrative body has ever been denied. (Id.)
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`Nor has any court or administrative body imposed sanctions or contempt citations
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`against Mr. Schuler. (Id.) Mr. Schuler has read, fully understands, and will
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`comply with the Office Patent Trial Practice Guide and the Board’s Rules of
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`Practice for Trials set forth in part 42 of the C.F.R. (Id. at ¶ 4.) Mr. Schuler
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`acknowledges and agrees that he will be subject to the USPTO Rules of
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`Professional 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). (Id.)
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`Patent Owner’s lead counsel in this proceeding, Robert Steinberg, is a
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`registered practitioner (Reg. No. 33144). Moreover, as set forth below (and in his
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`accompanying declaration), Mr. Schuler is both an experienced and technically-
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`trained litigation attorney with an established familiarity with the subject matter at
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`issue in this proceeding.
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`Mr. Schuler received a Bachelor of Arts degree from the University of
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`Northern Iowa in 1990 and a law degree from the University of Michigan Law
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`School in 1993. (Id. at ¶ 5.) Mr. Schuler clerked for the Honorable James B.
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`Loken of the U.S. Court of Appeals for the Eighth Circuit from 1993 to 1994 and
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`joined Latham & Watkins LLP as an associate thereafter. He was named a partner
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`4
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`U.S. Patent No. 8,849,112
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`of the firm in 2002. (Id.)
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`Mr. Schuler is currently global co-chair of Latham & Watkins’ intellectual
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`property group. His practice involves intellectual property rights, with a particular
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`emphasis in pharmaceutical patent litigation. (Id. at ¶ 6.) Mr. Schuler has over
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`twenty years of experience litigating intellectual property matters. (Id.)
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`Mr. Schuler has been actively involved in analyzing and assisting with
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`Patent Owner’s Response to the Petition for Inter Partes Review submitted in this
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`proceeding, as well as the responses to the petitions submitted in related
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`proceedings that are currently pending before the Patent Trial and Appeal Board:
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`• Case No. IPR2015-00884: Petition for Inter Partes Review of U.S.
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`Patent No. 8,291,904;
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`• Case No. IPR2015-00888: Petition for Inter Partes Review of U.S.
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`Patent No. 8,776,794;
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`• Case No. IPR2015-00889: Petition for Inter Partes Review of U.S.
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`Patent No. 8,573,209;
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`• Case No. IPR2015-00891: Petition for Inter Partes Review of U.S.
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`Patent No. 8,573,210; and
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`• Case No. IPR2015-00893: Petition for Inter Partes Review of U.S.
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`Patent No. 8,776,795.
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`(Id. at ¶ 7.) He has not applied to appear pro hac vice in any other proceeding
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`U.S. Patent No. 8,849,112
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`before the USPTO. (Id. at ¶ 8.)
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`In view of Mr. Schuler’s extensive knowledge of the subject matter at issue
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`in this proceeding, Patent Owner has a substantial need for Mr. Schuler’s pro hac
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`vice admission and his involvement in the continued prosecution of this
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`proceeding.
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`IV. CONCLUSION
`For the foregoing reasons, Patent Owner respectfully requests that Mr.
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`Schuler be admitted pro hac vice in this proceeding.
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`Respectfully submitted,
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`By: /Robert Steinberg/
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`Robert Steinberg (Reg. No. 33,144)
`bob.steinberg@lw.com
`Latham & Watkins LLP
`355 South Grand Avenue
`Los Angeles, CA 90071-1560
`213.485.1234; 213.891.8763 (Fax)
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`Daniel G. Brown (Reg. No. 54,005)
`daniel.brown@lw.com
`Latham & Watkins LLP
`885 Third Avenue
`New York, NY 10022-4834
`212.906.1200; 212.751.4864 (Fax)
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`Counsel for Patent Owner
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`Dated: November 12, 2015
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`Case IPR2015-00529
`U.S. Patent No. 8,849,112
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I certify that on this 12th day of
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`November, 2015, a true and correct copy of the foregoing Patent Owner INO
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`Therapeutics LLC’s Motion for Pro Hac Vice Admission of Kenneth G.
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`Schuler Under 37 C.F.R. § 42.10(c) was served by electronic mail on
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`Petitioner’s lead and backup counsel at the following email addresses:
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`sanjay.murthy@klgates.com
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`sara.kerrane@klgates.com
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`michael.abernathy@klgates.com
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`margaux.nair@klgates.com
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`maria.doukas@klgates.com
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`By: /Robert Steinberg/
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`Robert Steinberg (Reg. No. 33,144)
`bob.steinberg@lw.com
`Latham & Watkins LLP
`355 South Grand Avenue
`Los Angeles, CA 90071-1560
`213.485.1234; 213.891.8763 (Fax)
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