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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FRESENIUS KABI USA LLC
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`Petitioner,
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`v.
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`CUBIST PHARMACEUTICALS, INC.
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`Patent Owner.
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`Case: IPR2015-01572
`Patent No. 8,058,238
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`MOTION FOR PRO HAC VICE ADMISSION OF
`ROBERT V. CERWINSKI UNDER 37 C.F.R. § 42.10(c)
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`I.
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`STATEMENT OF THE PRECISE RELIEF REQUESTED
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`Pursuant to the Board’s “Notice of Filing Date Accorded to Petition and
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`Time for Filing Patent Owner Preliminary Response,” dated July 29, 2015 (Paper
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`3), authorizing the parties to file motions for pro hac vice admission under 37
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`C.F.R. § 42.10(c), Petitioner Fresenius Kabi USA LLC respectfully requests that
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`the Board allow Robert V. Cerwinski to appear pro hac vice on its behalf in this
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`proceeding.
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`II. REASONS THE REQUESTED RELIEF SHOULD BE GRANTED
`As set forth in the Statement of Material Facts below, as required by 37
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`C.F.R. § 42.10(c), Petitioner has demonstrated good cause to admit Mr. Cerwinski
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`pro hac vice in this proceeding. In particular, Petitioner’s lead counsel is a
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`registered practitioner, and Mr. Cerwinski is an experienced litigating attorney
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`having an established familiarity with the subject matter at issue in this proceeding.
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`Furthermore, this motion is being filed more than twenty one days after
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`service of the petition; includes a statement of facts showing good cause for the
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`Board to recognize Mr. Cerwinski pro hac vice; and is accompanied by the
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`declaration of Robert V. Cerwinski in Support of Petitioner’s Motion for Pro Hac
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`Vice Admission (Ex. 1040), all in accordance with the “Order Authorizing Motion
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`for Pro Hac Vice Admission” in Case IPR2013-00639, Paper 7.
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`1
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`III. STATEMENT OF MATERIAL FACTS
`1.
`37 C.F.R. § 42.10(c) provides:
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`The Board may recognize counsel pro hac vice during a proceeding
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`upon a showing of good cause, subject to the condition that lead
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`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
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`registered practitioner, a motion to appear pro hac vice by counsel
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`who is not a registered practitioner may be granted upon showing that
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`counsel is an experienced litigating attorney and has an established
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`familiarity with the subject matter at issue in the proceeding.
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`2.
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`Elizabeth J. Holland, lead counsel for Petitioner Fresenius Kabi USA
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`LLC in this proceeding, is a registered practitioner holding Registration No.
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`47,657.
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`3.
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`As set forth in the declaration of Robert V. Cerwinski in Support of
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`Petitioner’s Motion for Pro Hac Vice Admission (Ex. 1040), Mr. Cerwinski is an
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`experienced litigating attorney. Specifically, Mr. Cerwinski has nearly 18 years of
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`experience representing clients in patent litigations, primarily in the chemical arts,
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`in United States district courts and the Court of Appeals for the Federal Circuit.
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`(Ex. 1040, ¶ 2).
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`2
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`4. Mr. Cerwinski also has an established familiarity with the subject
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`matter at issue in this proceeding. Patent Owner has asserted U.S. Patent No.
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`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.
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`Del.). Mr. Cerwinski is litigation counsel for Fresenius Kabi USA LLC in that
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`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. 1040, ¶ 10).
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`Additionally, Mr. Cerwinski has thoroughly reviewed the Petition and
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`accompanying Exhibits submitted in this proceeding. (Id.).
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`5. Mr. Cerwinski 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. 1040, ¶¶ 3-10).
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`IV. CONCLUSION
`In view of the foregoing, Petitioner respectfully submits that the
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`requirements of 37 C.F.R. § 42.10(c) have been satisfied, and requests an Order
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`permitting Robert V. Cerwinski to appear pro hac vice on its behalf in this
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`proceeding.
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`3
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`Dated: August 13, 2015
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`Respectfully submitted,
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`/Elizabeth J. Holland/
`Elizabeth J. Holland
`Reg. No. 47,657
`Lead Attorney for Petitioner Fresenius Kabi
`USA LLC
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`4
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`CERTIFICATION OF SERVICE
`The undersigned hereby certifies that “MOTION FOR PRO HAC VICE
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`ADMISSION OF ROBERT V. CERWINSKI UNDER 37 C.F.R. § 42.10(c),” and
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`“DECLARATION OF ROBERT V. CERWINSKI IN SUPPORT OF MOTION
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`FOR PRO HAC VICE ADMISSION UNDER 37 C.F.R. § 42.10(c), (FRESENIUS-
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`KABI, Exh. 1040)” were served by electronic mail on this 13 day of August, 2015
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`/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
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`on the following:
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`Emily.whelan@wilmerhale.com
`Andrej.barbic@wilmerhale.com
`Gerard.devlin@merck.com
`Lisa.jakob@merck.com
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`Dated: August 13, 2015