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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
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`COALITION FOR AFFORDABLE DRUGS IV LLC
`Petitioner
`v.
`PHARMACYCLICS, INC.
`Patent Owner
`_____________________
`
`
`Case No. IPR2015-01076
`Patent No. 8,754,090
`_____________________
`
`
`PETITIONER’S MOTION FOR ADMISSION PRO HAC VICE OF
`SHANE A. BRUNNER UNDER 37 C.F.R. § 42.10(c)
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`
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`Case IPR2015-01076
`Patent 8,754,090
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`RELIEF REQUESTED
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`Under 37 C.F.R. § 42.10(c), and in accordance with the Board’s “Order –
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`Authorizing Motion for Pro Hac Vice Admission” in case IPR2015-01076,
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`Petitioner Coalition for Affordable Drugs II, LLC, requests that the Board admit
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`Shane A. Brunner pro hac vice in this proceeding.
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`GOVERNING LAWS, RULES, AND PRECEDENT
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`Section 42.10(c) provides the “Board may recognize counsel pro hac vice
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`during a proceeding upon a showing of good cause, subject to the condition that
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`lead counsel be a registered practitioner and any other conditions as the Board may
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`impose.” The Rule provides that counsel who is not a registered practitioner “may
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`be granted upon showing that counsel is an experienced litigating attorney and has
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`an established familiarity with the subject matter at issue in the proceeding.”
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`The Board’s April 30, 2015, Notice of Filing Date Accorded to Petition,
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`Paper No. 4, authorized the parties to file motions for pro hac vice admission under
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`37 C.F.R. § 42.10(c). The Notice provided pro hac vice motions shall be filed in
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`accordance with the “Order – Authorizing Motion for Pro Hac Vice Admission” in
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`Case IPR2013-00639. On October 15, 2013, the Board issued an Order, Paper No.
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`7, in Case IPR2013-00639 that provides the guidelines for admission under 37
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`C.F.R. § 42.10(c). The Order incorporated changes in the rules, including the
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`1
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`Case IPR2015-01076
`Patent 8,754,090
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`publication of the Final Rule in 78 Fed. Reg. 20180 adopting new Rules of
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`Professional Conduct.
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`The October 15, 2013 Order provides motions for pro hac vice “[c]ontain a
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`statement of facts showing there is good cause for the Board to recognize counsel
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`pro hac vice during the proceeding.” The Order further provides the motion is to
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`be “accompanied by an affidavit or declaration of the individual seeking to appear
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`attesting to the following:
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`i. Membership in good standing of the Bar of at least one State or the
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`District of Columbia;
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`ii.
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`No suspensions or disbarments from practice before any court or
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`administrative body;
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`iii. No application for admission to practice before any court or
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`administrative body ever denied;
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`iv. No sanctions or contempt citations imposed by any court or
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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 the
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`Office Patent Trial Practice Guide and the Board’s Rules of Practice for
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`Trials set forth in part 42 of 37 C.F.R.;
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`2
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`vi.
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`The individual will be subject to the USPTO Rules of Professional
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`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);
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`vii. All other proceedings before the Office for which the individual has
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`applied to appear pro hac vice in the last three (3) years; and
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`viii. Familiarity with the subject matter at issue in the proceeding.”
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`TIME OF FILING
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`In accordance with the rules, this motion is being filed no sooner than
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`twenty one (21) days after service of the petition.
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`STATEMENT OF THE FACTS
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`The following facts, supported by the attached Declaration of Shane A.
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`Brunner in Support of Petitioner’s Motion for Admission Pro Hac Vice, establish
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`good cause to recognize Mr. Brunner pro hac vice in this proceeding.
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`There is good cause for the Board to recognize counsel Shane A. Brunner
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`pro hac vice during this proceeding.
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`Petitioner’s Lead counsel, Jeffrey S. Ward, is a registered practitioner (Reg.
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`No.32,774).
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`Counsel Shane A. Brunner is an experienced litigating attorney. Mr. Brunner
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`is a partner at the law firm of Merchant & Gould P.C. Mr. Brunner has been a
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`3
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`patent litigation attorney for more than 15 years. Brunner Decl., ¶ 7. He has
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`substantial experience representing clients in litigation involving pharmaceutical
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`patents.
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`Mr. Brunner has established familiarity with the subject matter at issue in
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`this proceeding. Mr. Brunner has worked with lead counsel in the preparation of
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`Petitioner’s Petition. Id., ¶ 8. As such, Mr. Brunner has become familiar with U.S.
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`Patent No. 78,754,090 (the “'090 Patent”) and with its prosecution file history. Id.
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`He is familiar with the prior art relied upon in Petitioner’s Petition. He is also
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`familiar with the legal and factual arguments made by Petitioner. Id.
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`Mr. Brunner is in good standing and admitted to practice in the Bars of:
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`Wisconsin and Illinois, the United States District Court for the Western District of
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`Wisconsin, United States District Court for the Eastern District of Wisconsin,
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`United States District Court for the Northern District of Illinois, United States
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`District Court for the Northern District of Indiana, the United States Court of
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`Appeals for the Seventh Circuit and the United States Court of Appeals for the
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`Federal Circuit. Brunner Decl., ¶ 1.
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`Mr. Brunner has had no suspensions or disbarments from practice before any
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`court or administrative body. Id., ¶ 2.
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`4
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`Case IPR2015-01076
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`Mr. Brunner has never been denied application to practice before any court
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`or administrative body. Id., ¶ 3.
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`Mr. Brunner has never been sanctioned or cited for contempt by any court or
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`administrative body. Id., ¶ 4.
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`Mr. Brunner has read and will comply with the Office Patent Trial Practice
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`Guide and the Board’s Rules of Practice for Trials set forth in part 42 of 37 C.F.R.
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`Id., ¶ 5.
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`Mr. Brunner has agreed to be subject to the United States Patent and
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`Trademark Office Rules of Professional Conduct, as set forth in 37 C.F.R. §§
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`11.101 et. Seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a). Id., ¶ 6.
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`
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`ANALYSIS
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`37 C.F.R. § 42.10(c) states that the “Board may recognize counsel pro hac
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`vice during a proceeding upon a showing of good cause, subject to the condition
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`that lead 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 registered
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`practitioner, “a motion to appear pro hac vice by counsel who is not a registered
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`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
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`5
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`Case IPR2015-01076
`Patent 8,754,090
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`proceeding.” The “Order – Authorizing Motion for Pro Hac Vice Admission” in
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`Case IPR2013-00639 clarified the requirements for a motion for pro hac vice
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`admission under 37 C.F.R. § 42.10(c).
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`The above-identified facts and the Brunner Declaration establish that there is
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`good cause to admit Mr. Brunner pro hac vice in this proceeding under 37 C.F.R. §
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`42.10(c). Lead counsel, Jeffrey S. Ward, is a registered practitioner. Mr. Brunner
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`is an attorney with over fifteen (15) years of patent experience. Mr. Brunner has
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`established familiarity with the subject matter at issue in the proceeding.
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`Admission of Mr. Brunner will further enable Petitioner to be effectively and
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`efficiently represented before the Board in this proceeding. Mr. Brunner, in turn,
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`will ensure that he follows the rules and guidelines set out by the Board.
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`
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`CONCLUSION
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`For the reasons stated above, Petitioners respectfully request that the Board
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`admit Shane A. Brunner to appear pro hac vice in this proceeding.
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`Dated: July 15, 2015
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`
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` Respectfully submitted,
` MERCHANT & GOULD, P.C.
`
`
`
`/Jeffrey S. Ward
`
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`6
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`Case IPR2015-01076
`Patent 8,754,090
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`
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`(Trial No. IPR2015-01076)
`
`Jeffrey S. Ward (Reg. No. 32,774)
`MERCHANT & GOULD, P.C.
`10 E. Doty Street
`Suite 600
`Madison, WI 53703-3376
`Telephone: (608) 280-6751
`Facsimile: (612) 332-9081
`
`
` ATTORNEYS FOR PETITIONER
`
`
`
`7
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`
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