IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FRESENIUS KABI USA LLC
`
`Petitioner,
`
`
`
`v.
`
`
`
`CUBIST PHARMACEUTICALS, INC.
`
`Patent Owner.
`
`
`
`Case: IPR2015-01571
`Patent No. 8,058,238
`
`
`
`
`MOTION FOR PRO HAC VICE ADMISSION OF
`DANIEL P. MARGOLIS UNDER 37 C.F.R. § 42.10(c)
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FRESENIUS KABI USA LLC
`
`Petitioner,
`
`
`
`v.
`
`
`
`CUBIST PHARMACEUTICALS, INC.
`
`Patent Owner.
`
`
`
`Case: IPR2015-01571
`Patent No. 8,058,238
`
`
`
`
`MOTION FOR PRO HAC VICE ADMISSION OF
`DANIEL P. MARGOLIS UNDER 37 C.F.R. § 42.10(c)
`
`
`
`
`
`
`
`
`
`
`
`
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`Pursuant to the Board’s “Notice of Filing Date Accorded to Petition and
`
`Time for Filing Patent Owner Preliminary Response,” dated July 29, 2015 (Paper
`
`3), authorizing the parties to file motions for pro hac vice admission under 37
`
`C.F.R. § 42.10(c), Petitioner Fresenius Kabi USA LLC respectfully requests that
`
`the Board allow Daniel P. Margolis to appear pro hac vice on its behalf in this
`
`proceeding.
`
`II. REASONS THE REQUESTED RELIEF SHOULD BE GRANTED
`As set forth in the Statement of Material Facts below, as required by 37
`
`C.F.R. § 42.10(c), Petitioner has demonstrated good cause to admit Dr. Margolis
`
`pro hac vice in this proceeding. In particular, Petitioner’s lead counsel is a
`
`registered practitioner, and Dr. Margolis is an experienced litigating attorney
`
`having an established familiarity with the subject matter at issue in this proceeding.
`
`Furthermore, this motion is being filed more than twenty one days after
`
`service of the petition; includes a statement of facts showing good cause for the
`
`Board to recognize Dr. Margolis pro hac vice; and is accompanied by the
`
`declaration of Daniel P. Margolis in Support of Petitioner’s Motion for Pro Hac
`
`Vice Admission (Ex. 1039), all in accordance with the “Order Authorizing Motion
`
`for Pro Hac Vice Admission” in Case IPR2013-00639, Paper 7.
`
`
`
`1
`
`
`
`
`
`III. STATEMENT OF MATERIAL FACTS
`1.
`37 C.F.R. § 42.10(c) provides:
`
`The Board 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.
`
`2.
`
`Elizabeth J. Holland, lead counsel for Petitioner Fresenius Kabi USA
`
`LLC in this proceeding, is a registered practitioner holding Registration No.
`
`47,657.
`
`3.
`
`As set forth in the declaration of Daniel P. Margolis in Support of
`
`Petitioner’s Motion for Pro Hac Vice Admission (Ex. 1039), Dr. Margolis is an
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`experienced litigating attorney. Specifically, Dr. Margolis has nearly nine years of
`
`experience representing clients in patent litigations, primarily in the chemical arts,
`
`in United States district courts, the Court of Appeals for the Federal Circuit, and
`
`the International Trade Commission. (Ex. 1039, ¶ 2).
`
`
`
`2
`
`
`
`
`
`4.
`
`Dr. Margolis also has an established familiarity with the subject
`
`matter at issue in this proceeding. Patent Owner has asserted U.S. Patent No.
`
`8,058,238 (“the ’238 patent”), the patent at issue in this proceeding, against
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`Petitioner in Cubist Pharms., Inc. v. Fresenius Kabi USA, LLC, 14-cv-00914 (D.
`
`Del.). Dr. Margolis is litigation counsel for Fresenius Kabi USA LLC in that
`
`litigation, and in the course of that representation, developed a strong familiarity
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`with the ’238 patent, its prosecution history, the general subject matter to which the
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`’238 patent is directed, and the prior art references relied upon by Petitioner in
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`support of its invalidity grounds in this proceeding. (Ex. 1039, ¶ 10).
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`Additionally, Dr. Margolis has thoroughly reviewed the Petition and
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`accompanying Exhibits submitted in this proceeding. (Id.).
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`5.
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`Dr. Margolis has attested to the each of the requirements set forth in
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`paragraph 2(b) of the “Order Authorizing Motion for Pro Hac Vice Admission” in
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`Case IPR2013-00639, Paper 7. (Ex. 1039, ¶¶ 3-10).
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`IV. CONCLUSION
`In view of the foregoing, Petitioner respectfully submits that the
`
`requirements of 37 C.F.R. § 42.10(c) have been satisfied, and requests an Order
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`permitting Daniel P. Margolis to appear pro hac vice on its behalf in this
`
`proceeding.
`
`
`
`
`
`3
`
`
`
`
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`Dated: August 13, 2015
`
`Respectfully submitted,
`
`/Elizabeth J. Holland/
`Elizabeth J. Holland
`Reg. No. 47,657
`Lead Attorney for Petitioner Fresenius Kabi
`USA LLC
`
`
`
`
`4
`
`
`
`
`
`CERTIFICATION OF SERVICE
`The undersigned hereby certifies that “MOTION FOR PRO HAC VICE
`
`ADMISSION OF DANIEL P. MARGOLIS UNDER 37 C.F.R. § 42.10(c),” and
`
`“DECLARATION OF DANIEL P. MARGOLIS IN SUPPORT OF MOTION
`
`FOR PRO HAC VICE ADMISSION UNDER 37 C.F.R. § 42.10(c), (FRESENIUS-
`
`KABI, Exh. 1039)” were served by electronic mail on this 13 day of August, 2015
`
`on the following:
`
`
`
`
`
`
`
`/Ryan Curiel/
`Ryan Curiel
`GOODWIN PROCTER LLP
`The New York Times Building
`620 Eighth Avenue
`New York, New York 10018-1405
`Tel: 212-813-8800
`Fax: 212-355-3333
`rcuriel@goodwinprocter.com
`
`Emily.whelan@wilmerhale.com
`Andrej.barbic@wilmerhale.com
`Gerard.devlin@merck.com
`Lisa.jakob@merck.com
`
`
`
`Dated: August 13, 2015
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