UNITED STATES PATENT AND TRADEMARK OFFICE
`________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________________
`
`LUPIN LIMITED
`Petitioner,
`v.
`JANSSEN R&D IRELAND
`Patent Owner.
`
`
`
`________________________________
`
`Case IPR2015-01030
`Patent 8,518,987 B2
`________________________________
`
`
`
`LUPIN LIMITED’S MOTION FOR PRO HAC VICE
`ADMISSION OF WILLIAM A. RAKOCZY PURSUANT
`TO 37 C.F.R. § 42.10(c)
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`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________________
`
`LUPIN LIMITED
`Petitioner,
`v.
`JANSSEN R&D IRELAND
`Patent Owner.
`
`
`
`________________________________
`
`Case IPR2015-01030
`Patent 8,518,987 B2
`________________________________
`
`
`
`LUPIN LIMITED’S MOTION FOR PRO HAC VICE
`ADMISSION OF WILLIAM A. RAKOCZY PURSUANT
`TO 37 C.F.R. § 42.10(c)
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`IPR2015-01030
`Patent No. 8,518,987 B2
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`I.
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`RELIEF REQUESTED.
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`Pursuant to 37 C.F.R. §42.10(c) and the Board’s “Order Authorizing Motion
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`for Pro Hac Vice Admission – 37 C.F.R. §42.10,” in Case IPR2013-00639, Paper
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`7, entered October 15, 2013, incorporated by Paper 4 in the present case, Petitioner
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`Lupin Limited requests that the Board admit William A. Rakoczy pro hac vice in
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`this proceeding.
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`II.
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`STATEMENT OF FACTS.
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`Pursuant to 37 C.F.R. §42.10(c), the Board
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`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 and to any other conditions as the Board may
`impose. For example, where the lead counsel is a registered
`practitioner, a motion to appear pro hac vice by counsel who is not a
`registered practitioner may be granted upon showing that counsel is an
`experienced litigating attorney and has an established familiarity with
`the subject matter at issue in the proceeding.
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`37 C.F.R. §42.10(c). The facts, supported by the attached Declaration of William
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`A. Rakoczy in Support of Motion for Admission Pro Hac Vice (“Rakoczy Decl.”),
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`establish good cause to admit Mr. Rakoczy pro hac vice in this proceeding.
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`1.
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`Lead counsel Deanne M. Mazzochi is a registered practitioner before
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`the USPTO.
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`2.
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`Back-up counsel Tara M. Raghavan is a registered practitioner before
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`the USPTO.
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`IPR2015-01030
`Patent No. 8,518,987 B2
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`3. William A. Rakoczy is an experienced litigating attorney. Mr.
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`Rakoczy has been a litigating attorney for more than 15 years. (Rakoczy Decl. ¶
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`1). Mr. Rakoczy has been litigating patent cases for at least 15 years. (Id. ¶ 2).
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`Mr. Rakoczy is a member in good standing of the Illinois State Bar, with no
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`suspensions or disbarments from practice, nor any application for admission to
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`practice denied, nor any sanctions or contempt citations, and is admitted to practice
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`in the Supreme Court of the United States, United States Court of Appeals for the
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`Federal Circuit, United States Court of Appeals for the Seventh Circuit, United
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`States Court of Appeals for the District of Columbia Circuit, United States Court of
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`Appeals for the Fourth Circuit, United States Court of Appeals for the Third
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`Circuit, and the United States District Courts for the Northern District of Illinois,
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`Western District of Wisconsin, District of Columbia, Western District of Michigan,
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`and District of Colorado. (Id. ¶¶ 3-5).
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`4. Mr. Rakoczy has familiarity with the subject matter at issue in this
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`proceeding based on his work as counsel in the past district court cases Janssen
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`Prods., L.P. et al. v. Lupin Ltd. et al., Lead Consolidated C.A. No. 10-5954
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`(D.N.J.) (pending Consolidated Appeal No. 14-1842 (Fed. Cir.)); Tibotec Inc. et al.
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`v. Lupin Ltd. et al., C.A. No. 11-4027 (D.N.J.) (consolidated with 10-5954 action,
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`pending 14-1842 appeal); and Janssen Prods., L.P. et al. v. Lupin Ltd. et al., C.A.
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`No. 13-3891 (D.N.J.) (stayed pending 14-1842 appeal). The aforementioned cases
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`IPR2015-01030
`Patent No. 8,518,987 B2
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`involve related patents to the patent-at-issue in this proceeding. (Rakoczy Decl. ¶
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`6). Mr. Rakoczy has been actively involved in all aspects of the past district court
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`cases, including the issue of validity of the related patents-in-suit. (Id. ¶¶ 6-7).
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`5. Mr. Rakoczy has read and will comply with the Office Patent Trial
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`Practice Guide and the Board’s Rules for Practice for Trials set forth in part 42 of
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`the C.F.R, and he agrees to be subject to the USPTO Code of Professional
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`Responsibility set forth in 37 C.F.R. §§11.101 et seq., and to disciplinary
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`jurisdiction under 37 C.F.R. §11.19(a). (Rakoczy Decl. ¶¶ 8-9).
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`6.
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`In the last three (3) years, Mr. Rakoczy has not applied to appear pro
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`hac vice in an inter partes review proceeding. (Rakoczy Decl. ¶ 10).
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`III. ANALYSIS.
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`The facts contained in the Statement of Facts above, and contained in the
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`Rakoczy Declaration, establish that there is good cause to admit Mr. Rakoczy pro
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`hac vice in this proceeding under 37 C.F.R. §42.10(c). Lead and backup counsel
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`are registered practitioners, Mr. Rakoczy is an experienced litigating attorney, and
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`Mr. Rakoczy has an established familiarity with the subject matter at issue in the
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`proceeding.
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`IV. CONCLUSION.
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`For the foregoing reasons, Petitioner Lupin Limited respectfully requests
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`that the Board admit William A. Rakoczy pro hac vice in this proceeding.
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`3
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`Respectfully submitted,
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`
`
`/s/ Deanne M. Mazzochi
`
`RAKOCZY MOLINO MAZZOCHI SIWIK LLP
`Deanne M. Mazzochi (Reg. No. 50,158)
`Tara M. Raghavan (Reg. No. 55,557)
`6 West Hubbard, Suite 500
`Chicago, IL
`(312) 222-6305 (telephone)
`(312) 222-6325 (facsimile)
`dmazzochi@rmmslegal.com
`
`Attorneys for Petitioner Lupin Limited
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`IPR2015-01030
`Patent No. 8,518,987 B2
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`Dated: April 30, 2015
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`4
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on April 30,
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`2015, a copy of the foregoing document “LUPIN LIMITED’S MOTION FOR
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`PRO HAC VICE ADMISSION OF WILLIAM A. RAKOCZY PURSUANT
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`TO 37 C.F.R. § 42.10(c)” and accompanying declaration were served by
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`delivering a copy via Federal Express for overnight delivery, upon the following:
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`Dianne B. Elderkin
`Barbara L. Mullin
`Ruben H. Munoz
`AKIN GUMP STRAUSS HAUER
`& FELD LLP
`Two Commerce Square
`2001 Market Street, Suite 4100
`Philadelphia, PA 19103
`
`Counsel for Patent Owner
`
`Baker & Hostetler LLP
`ATTN: Stephanie A. Lodise
`Cira Centre, 12th Floor
`2929 Arch Street
`Philadelphia, PA 19104-2891
`
`Patent owner’s correspondence
`address of record for U.S. Patent No.
`8,518,987
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`Dated: April 30, 2015.
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`Irena Royzman
`PATTERSON BELKNAP WEBB &
`TYLER LLP
`1133 Avenue of the Americas
`New York, NY 10036
`
`
`
`
`/Deanne M. Mazzochi/
`Deanne M. Mazzochi
`Registration No. 50,158
`6 West Hubbard, Suite 500
`Chicago, IL
`(312) 222-6305 (telephone)
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`(312) 222-6325 (facsimile)
`dmazzochi@rmmslegal.com
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`Attorney for Petitioner Lupin Limited
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________________
`
`LUPIN LIMITED
`Petitioner,
`v.
`JANSSEN R&D IRELAND
`Patent Owner.
`
`
`
`________________________________
`
`Case IPR2015-01030
`Patent 8,518,987 B2
`________________________________
`
`
`
`DECLARATION OF WILLIAM A. RAKOCZY IN SUPPORT OF
`LUPIN LIMITED’S MOTION FOR PRO HAC VICE
`ADMISSION IN IPR 2015-01030
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`IPR2015-01030
`Patent No. 8,518,987 B2
`
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`I, William A. Rakoczy, declare as follows:
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`1.
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`I am an experienced litigating attorney with more than fifteen (15)
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`years of experience.
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`2.
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`3.
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`I have been litigating patent cases for at least fifteen (15) years.
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`I am a member in good standing of the Illinois State Bar and am
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`admitted to practice in the Supreme Court of the United States, United States Court
`
`of Appeals for the Federal Circuit, United States Court of Appeals for the Seventh
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`Circuit, United States Court of Appeals for the District of Columbia Circuit, United
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`States Court of Appeals for the Fourth Circuit, United States Court of Appeals for
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`the Third Circuit, and the United States District Courts for the Northern District of
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`Illinois, Western District of Wisconsin, District of Columbia, Western District of
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`Michigan, and District of Colorado. I have never been suspended or disbarred
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`from practice before any court or administrative body.
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`4.
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`I have never had an application for admission to practice before any
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`court or administrative body denied.
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`5.
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`I have had no sanctions or contempt citations imposed against me by
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`any court or administrative body.
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`6.
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`I am familiar with the subject matter at issue in this proceeding,
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`including the patent-at-issue. I was counsel in the preceding district court cases
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`Janssen Prods., L.P. et al. v. Lupin Ltd. et al., Lead Consolidated C.A. No. 10-
`
`
`
`1
`
`
`
`IPR2015-01030
`Patent No. 8,518,987 B2
`
`5954 (D.N.J.) (pending Consolidated Appeal No. 14-1842 (Fed. Cir.)); Tibotec Inc.
`
`et al. v. Lupin Ltd. et al., C.A. No. 11-4027 (D.N.J.) (consolidated with 10-5954
`
`action, pending 14-1842 appeal); and Janssen Prods., L.P. et al. v. Lupin Ltd. et
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`al., C.A. No. 13-3891 (D.N.J.) (stayed pending 14-1842 appeal). All of the
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`aforementioned cases involve related patents to the patent-at-issue in this
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`proceeding.
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`7.
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`I am actively involved in all aspects of the past and pending district
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`court cases, including the issue of validity of the related patents-in-suit, which
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`include the patent-at-issue in this proceeding.
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`8.
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`I have 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
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`C.F.R.
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`9.
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`I agree
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`to be subject
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`to
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`the USPTO Code of Professional
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`Responsibility set forth in 37 C.F.R. §§11.101 et seq., and to disciplinary
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`jurisdiction under 37 C.F.R. §11.19(a).
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`10.
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`In the last three (3) years, I have not applied to appear pro hac vice in
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`an inter partes review proceeding.
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`11.
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`I hereby declare that all statements made herein of my own
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`knowledge are true and that all statements made on information and belief are
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`believed to be true; and further that these statements are made with the knowledge
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`2
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`IPR2015-01030
`Patent No. 8,518,987 B2
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`that willful false statements and the like so made are punishable by fine or
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`imprisonment, or both, under Section 1001 of Title 18 of the United States Code
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`and that such willful false statements may jeopardize the validity of U.S. Patent
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`No. 8,518,987 B2.
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`Dated: April 30, 2015
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`/s/ William A. Rakoczy
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`William A. Rakoczy
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`RAKOCZY MOLINO MAZZOCHI SIWIK LLP
`6 West Hubbard, Suite 500
`Chicago, IL
`(312) 222-6301 (telephone)
`(312) 222-6321 (facsimile)
`
`3
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