UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MYLAN PHARMACEUTICALS INC.
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`Petitioner
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`v.
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`YEDA RESEARCH AND DEVELOPMENT CO. LTD.
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`Patent Owner
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`Case No. IPR2015-00644
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`Patent No. 8,399,413
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`PATENT OWNER’S MOTION FOR PRO HAC VICE ADMISSION OF
`DARYL L. WIESEN UNDER 37 C.F.R. § 42.10(c)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MYLAN PHARMACEUTICALS INC.
`
`Petitioner
`
`v.
`
`YEDA RESEARCH AND DEVELOPMENT CO. LTD.
`
`Patent Owner
`
`Case No. IPR2015-00644
`
`Patent No. 8,399,413
`
`PATENT OWNER’S MOTION FOR PRO HAC VICE ADMISSION OF
`DARYL L. WIESEN UNDER 37 C.F.R. § 42.10(c)
`
`
`
`
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`Case No. IPR2015-00644
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`I.
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`STATEMENT OF THE PRECISE RELIEF REQUESTED
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`Pursuant to the Board’s “Notice of Filing Date Accorded to Petition and
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`Time for Filing Patent Owner Preliminary Response,” dated February 25, 2015
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`(Paper No. 5), authorizing the parties to file motions for pro hac vice admission
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`under 37 C.F.R. § 42.10(c), Patent Owner Yeda Research and Development Co.
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`Ltd. respectfully requests that the Board allow Daryl L. Wiesen to appear pro hac
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`vice on its behalf in this proceeding. Petitioner has stated that it will not oppose
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`this motion.
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`II. REASONS THE REQUESTED RELIEF SHOULD BE GRANTED
`As set forth in the Statement of Material Facts below, and as required by 37
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`C.F.R. § 42.10(c), Patent Owner has demonstrated good cause to admit Mr.
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`Wiesen pro hac vice in this proceeding. In particular, Patent Owner’s lead counsel
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`is a registered practitioner, and Mr. Wiesen is an experienced litigating attorney
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`having an established familiarity with the subject matter at issue in this proceeding.
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`Furthermore, this motion is being filed more than twenty one days after
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`service of the petition; includes a statement of facts showing good cause for the
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`Board to recognize Mr. Wiesen pro hac vice; and is being filed concurrently with
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`Exhibit 2137, the Declaration of Daryl L. Wiesen in Support of Patent Owner’s
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`Motion for Pro Hac Vice Admission of Daryl L. Wiesen (“Wiesen Decl.”), all in
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`accordance with the “Order Authorizing Motion for Pro Hac Vice Admission” in
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`
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`1
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`
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`Case No. IPR2015-00644
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`Unified Patents, Inc. v. Parallel Iron, LLC, IPR2013-00639, Paper 7 at 3 (P.T.A.B.
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`Oct. 15, 2013).
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`III. STATEMENT OF MATERIAL FACTS
`1. 37 C.F.R. § 42.10(c) provides that “[t]he Board may recognize counsel pro
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`hac vice during a proceeding upon a showing of good cause, subject to the
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`condition that lead counsel be a registered practitioner and to any other
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`conditions as the 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 who is not a
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`registered practitioner may be granted upon showing that counsel is an
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`experienced litigating attorney and has an established familiarity with the subject
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`matter at issue in the proceeding.”
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`2. Elizabeth J. Holland, lead counsel for Patent Owner Yeda Research and
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`Development Co. Ltd. in this proceeding, is a registered practitioner holding
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`Registration No. 47,657.
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`3. As set forth in the Wiesen Decl., Mr. Wiesen is an experienced litigating
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`attorney. Specifically, Mr. Wiesen has nearly 20 years of experience
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`representing clients in patent litigations, primarily in the chemical arts, in United
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`States district courts and the Court of Appeals for the Federal Circuit. (Wiesen
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`Decl., ¶¶ 2-3). Mr. Wiesen also has over a decade of experience litigating cases
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`2
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`Case No. IPR2015-00644
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`on behalf of the Patent Owner and Teva entities, both generally and in litigations
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`related to GA and Copolymer 1. (Wiesen Decl., ¶¶ 5-7).
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`4. Mr. Wiesen also has an established familiarity with the precise subject
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`matter at issue in this proceeding. Petitioner and Patent Owner are currently
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`involved in district court litigation involving U.S. Patent No. 8,399,413 (“the
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`’413 patent”), the patent at issue in this proceeding, against Petitioner and several
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`other defendants in Teva Pharmaceuticals USA, Inc. et al. v. Mylan
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`Pharmaceuticals Inc. et al., Civil Action No. 1:14-cv-01278-GMS (D.Del.)
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`(consolidated as In re Copaxone 40 MG Consolidated Cases, Case No. 1:14-cv-
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`01171-GMS (D. Del.)), as well as in Teva Pharmaceuticals USA, Inc. et al. v.
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`Mylan Pharmaceuticals Inc. et al., Case No. 1:14-cv-00167-IMK (N.D.W.Va).
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`Mr. Wiesen is litigation counsel for Teva Pharmaceuticals USA, Inc., Teva
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`Pharmaceutical Industries Ltd., Teva Neuroscience, Inc. and Yeda Research and
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`Development Co., Ltd., in these litigations. In the course of this representation,
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`he has developed a strong familiarity with the ’413 patent, its prosecution history,
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`the general subject matter to which the ’413 patent is directed, and the prior art
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`references relied upon by Petitioner in support of its invalidity grounds in this
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`proceeding. (Wiesen Decl., ¶ 8). Additionally, Mr. Wiesen has thoroughly
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`reviewed the Petition and accompanying Exhibits submitted in this proceeding.
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`(Id.).
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`3
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`Case No. IPR2015-00644
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`5. Mr. Wiesen has attested to the each of the requirements set forth in
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`paragraph 2(b)(i)-(viii) of the “Order Authorizing Motion for Pro Hac Vice
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`Admission” in Case IPR2013-00639, Paper 7 at 3. (Wiesen Decl., ¶¶ 3, 4, 6-8, 9-
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`13).
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`IV. CONCLUSION
`In view of the foregoing, Patent Owner respectfully submits that the
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`requirements of 37 C.F.R. § 42.10(c) have been satisfied, and requests an Order
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`permitting Daryl L. Wiesen to appear pro hac vice on its behalf in this proceeding.
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`Dated: December 18, 2015
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`Respectfully submitted,
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`
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`/Elizabeth J. Holland/
`Elizabeth J. Holland (Reg. No. 47,657)
`Goodwin Procter LLP
`The New York Times Building
`620 Eighth Avenue
`New York, NY 10018
`Tel: 212-813-8800
`Fax: 212-355-3333
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`Counsel for Patent Owner Yeda Research
`and Development Co. Ltd.
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`4
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`CERTIFICATION OF SERVICE
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`The undersigned hereby certifies that “PATENT OWNER’S MOTION FOR
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`PRO HAC VICE ADMISSION OF DARYL L. WIESEN UNDER 37 C.F.R. §
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`42.10(c),” and “EXHIBIT 2137- DECLARATION OF DARYL L. WIESEN IN
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`SUPPORT OF PATENT OWNER’S MOTION FOR PRO HAC VICE
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`ADMISSION OF DARYL L. WIESEN UNDER 37 C.F.R. § 42.10(c)” were
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`served electronically via e-mail on December 18, 2015 on the following:
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`Jeffrey W. Guise
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`jguise@wsgr.com
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`Brandon M. White
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`BMWhite@perkinscoie.com
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`Shannon Bloodworth
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`sbloodworth@perkinscoie.com
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`David Anstaett
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`DAnstaett@perkinscoie.com
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`Richard Torczon
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`rtorczon@wsgr.com
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`
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`Dated: December 18, 2015
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`/Eleanor M. Yost/
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`Eleanor M. Yost
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