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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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`MYLAN PHARMACEUTICALS INC.,
`WOCKHARDT BIO AG,
`TEVA PHARMACEUTICALS USA, INC.,
`AUROBINDO PHARMA U.S.A., INC.,
`Petitioners,
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`v.
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`ASTRAZENECA AB,
`Patent Owner.
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`
`
`Case: IPR2015-013401
`U.S. Patent No. RE44,186
`
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`ASTRAZENECA’S UNOPPOSED MOTION FOR
`PRO HAC VICE ADMISSION OF DANIEL M. SILVER
`UNDER 37 C.F.R. § 42.10(c)
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`
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`1 Petitioner Wockhardt from IPR2016-01029, Petitioner Teva from IPR2016-
`01122, and Petitioner Aurobindo from IPR2016-01117 have been added as
`Petitioners to this proceeding.
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`I.
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`STATEMENT OF PRECISE RELIEF REQUESTED
`Pursuant to 37 C.F.R. § 42.10(c) authorizing motions for pro hac vice
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`admission of back-up counsel, Patent Owner AstraZeneca AB requests that the
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`Patent Trial and Appeal Board (the “Board”) admit Daniel M. Silver pro hac vice
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`in this proceeding, IPR2015-01340, for the limited purpose of taking a deposition
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`in this proceeding.
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`II.
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`STATEMENT OF FACTS SHOWING GOOD CAUSE FOR THE
`BOARD TO RECOGNIZE BACK-UP COUNSEL PRO HAC VICE
`DURING THE PROCEEDING
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`In accordance with 37 C.F.R. § 42.10(c), the Board may recognize counsel
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`pro hac vice subject to the condition that lead counsel be a registered practitioner
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`and to any other conditions that the Board may impose. Section 42.10(c) provides
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`that “where the lead counsel is a registered practitioner, a motion to appear pro hac
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`vice by counsel who is not a registered practitioner may be granted upon showing
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`that counsel is an experienced litigating attorney and has an established familiarity
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`with the subject matter at issue in the proceeding.” See also Unified Patents v.
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`Parallel Iron, IPR2013-00639, Paper 7 (Oct. 15, 2013). The following facts
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`establish good cause for the Board to recognize Daniel M. Silver pro hac vice in
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`this proceeding:
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`1.
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`As a partner at McCarter & English, Mr. Silver is an experienced
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`litigator, and has established familiarity with the subject matter at issue in this
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`proceeding from his participation in co-pending litigation involving the subject
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`patent. Specifically, U.S. Patent No. RE44,186 is currently asserted by Patent
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`Owner AstraZeneca AB in co-pending litigation, in the District of Delaware,
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`AtraZeneca AB v. Aurobindo Pharma Ltd., et al., 14-cv-00664 (D. Del. 2014) (“the
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`co-pending litigation”). Mr. Silver is a member of the Delaware Bar in good
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`standing, has been representing the Patent Owner in the co-pending litigation and
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`has been actively involved in the case. Mr. Silver has not applied to appear pro
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`hac vice in any other Board, or United States Patent and Trademark Office
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`(“USPTO”) proceeding, over the last three years.
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`2.
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`As part of his participation in co-pending litigation involving the
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`subject patent, Mr. Silver has become intimately familiar with the financial-related
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`issues in this proceeding. In fact, Mr. Silver directed and cross-examined the
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`financial experts during the September trial of the co-pending litigation. Patent
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`Owner wishes to apply Mr. Silver’s knowledge as counsel in the deposition of
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`Petitioners’ financial expert in this proceeding. Admission of Mr. Silver pro hac
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`vice will enable Patent Owner to avoid unnecessary expense and duplication of
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`work between this proceeding and the co-pending litigation.
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`3.
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`Patent Owner’s lead counsel, Charlie Lipsey, is a registered
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`practitioner and Mr. Silver is an experienced litigation attorney having established
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`familiarity with the subject matter at issue in this proceeding. Therefore, Patent
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`2
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`Owner respectfully submits that there is good cause for the Board to recognize Mr.
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`Silver as counsel pro hac vice during this proceeding.
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`4.
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`This Motion for Pro Hac Vice Admission is supported by a
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`Declaration of Mr. Silver (Exhibit 2216).
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`5.
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`Counsel for Petitioners do not oppose Mr. Silver appearing pro hac
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`vice during this proceeding for the limited purpose of taking a deposition.
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`III. CONCLUSION
`For the foregoing reasons, Patent Owner respectfully requests that the Board
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`admit Daniel M. Silver pro hac vice in this proceeding.
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`Dated: November 16, 2016
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`Respectfully submitted,
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`
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`By: / Anthony A. Hartmann /
`
`Anthony A. Hartmann
`Reg. No. 43,662
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`901 New York Avenue, NW Washington,
`DC 20001-4413
`(202) 408-4000
`
`Counsel for Patent Owner in
`IPR2015-01340
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`3
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`The undersigned certifies that copies of the foregoing ASTRAZENECA’S
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`
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`UNOPPOSED MOTION FOR PRO HAC VICE ADMISSION OF DANIEL
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`M. SILVER UNDER 37 C.F.R. § 42.10(c) and AstraZeneca Exhibit 2216
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`were served electronically via e-mail on November 16, 2016, in its entirety to the
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`following:
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`Counsel for Petitioner Mylan Pharmaceuticals Inc.:
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`Counsel for Petitioner Wockhardt BIO AG.:
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`Counsel for Petitioner Teva Pharmaceuticals U.S.A., Inc..:
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`CERTIFICATE OF SERVICE
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`Steven W. Parmelee
`sparmelee@wsgr.com
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`Richard Torczon
`rtorczon@wsgr.com
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`Jad A. Mills
`jmills@wsgr.com
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`Douglas H. Carsten
`dcarsten@wsgr.com
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`Patrick Gallagher
`PCGallagher@duanemorris.com
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`Gary Speier
`gspeier@carlsoncaspers.com
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`Iain McIntyre
`imcintyre@carlsoncaspers.com
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`4
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`Counsel for Petitioner Aurobindo Pharma U.S.A., Inc..:
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`Dated: November 16, 2016
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`Sailesh K. Patel
`SPatel@schiffhardin.com
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`George Yu
`GYu@schiffhardin.com
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`By: /Lauren K. Young/
`Lauren K. Young
`Litigation Legal Assistant
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
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`5
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