`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`UMICORE AG & CO. KG
`
`Petitioner
`
`v.
`
`BASF CORPORATION
`
`Patent Owner
`
`Case IPR2015-01121
`Patent 7,601,662
`__________________________________________________________________
`
`MOTION FOR PRO HAC VICE ADMISSION
`OF K. PATRICK HERMAN PURSUANT TO 37 C.F.R. § 42.10(c)
`__________________________________________________________________
`
`
`
`I.
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`RELIEF REQUESTED
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`Pursuant to 37 C.F.R. § 42.10(c) and the Notice of Filing Date (Paper 3),
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`Petitioner Umicore AG & Co. KG (“Umicore” or “Petitioner”) respectfully
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`requests the pro hac vice admission of K. Patrick Herman as additional back-up
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`counsel in this proceeding. Patent Owner has indicated that it does not oppose this
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`motion.
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`II.
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`TIMING OF FILING
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`In accordance with the “Order – Authorizing Motion for Pro Hac Vice
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`Admission” entered in Case No. IPR2013-00639 (“Pro Hac Vice Order”), this
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`motion is being filed more than twenty-one days after service of Umicore’s
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`Petition for Inter Partes Review in this proceeding.
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`III.
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`STATEMENT OF FACTS
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`The following statement of facts shows good cause for the Board to
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`recognize Mr. Herman pro hac vice in the current proceeding:
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`A.
`
`B.
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`Patent Owner has indicated that it does not oppose this motion.
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`Umicore’s lead counsel, Elizabeth A. Gardner, is a registered USPTO
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`practitioner (Reg. No. 36,519).
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`C. Mr. Herman is an attorney at the law firm of Orrick, Herrington, &
`
`Sutcliffe LLP.
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`D. Mr. Herman has been litigating patent cases for over 11 years.
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`-1-
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`E. Mr. Herman is admitted to practice law in the State of New York, the
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`United States District Court for the Eastern District of Michigan, and
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`the United States Court of Appeals for the Federal Circuit.
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`F. Mr. Herman has an established familiarity with the subject matter at
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`issue in the proceeding. Mr. Herman has actively counseled and
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`represented Umicore in connection with the patent and prior art
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`addressed in the Petition, and extensively assisted the undersigned in
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`preparation of the Petition and the arguments contained therein.
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`G.
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`Pursuant to the Pro Hac Vice Order, Mr. Herman has submitted a
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`declaration as Exhibit 1017.
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`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION OF
`MR. HERMAN IN THIS PROCEEDING
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`As counsel for Umicore, Mr. Herman has been actively involved in all
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`aspects of the analysis and preparations performed on behalf of Umicore leading
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`up to the filing of the Petition. Mr. Herman has extensive knowledge of the patent
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`at issue, the prior art discussed in the Petition, and Umicore’s arguments and
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`positions regarding the same. In view of Mr. Herman’s knowledge of the subject
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`matter at issue, Umicore has a substantial need for the pro hac vice admission and
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`continued involvement of Mr. Herman in this proceeding. Further, Patent Owner
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`does not oppose this motion. Based on the facts contained herein and in Mr.
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`Herman’s declaration (Ex. 1017), good cause exists for the admission of Mr.
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`
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`Herman pro hac vice as additional back-up counsel in this proceeding.
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`Date: 1/14/2016
`
`/ Elizabeth Gardner /
`Elizabeth Gardner (Reg. No. 36,519)
`Orrick, Herrington, & Sutcliffe LLP
`51 West 52nd Street
`New York, NY 10019
`Tel: 212-506-5000
`Fax. 212-506-5151
`Email: egardner@orrick.com
`
`-3-
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`
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`CERTIFICATE OF SERVICE
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`The undersigned hereby confirms that the foregoing MOTION FOR PRO
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`HAC VICE ADMISSION OF K. PATRICK HERMAN PURSUANT TO 37
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`C.F.R. § 42.10(c) was served on January 14, 2016 via e-mail upon the following
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`counsel of record for Patent Owner:
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`Brian E. Ferguson (brian.ferguson@weil.com)
`Anish R. Desai (anish.desai@weil.com)
`Weil, Gotshal & Manges LLP
`1300 Eye Street, NW Suite 900
`Washington, DC 20005
`
`/ Elizabeth Gardner /
`Elizabeth Gardner (Reg. No. 36,519)
`Orrick, Herrington, & Sutcliffe LLP
`51 West 52nd Street
`New York, NY 10019
`Tel: 212-506-5000
`Fax. 212-506-5151
`Email: egardner@orrick.com
`
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