`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`Sawai USA Inc., and Sawai Pharmaceutical Co., Ltd,
`Petitioners,
`
`v.
`
`Nissan Chemical Industries, Ltd.,
`Patent Owner
`________________
`
`U.S. Patent No. 5,856,336
`
`Issue Date: January 5, 1999
`
`Title: Quinoline Type Mevalonolactones
`
`________________
`
`Inter Partes Review No. IPR2015-01648
`
`MOTION OF NISSAN CHEMICAL INDUSTRIES, LTD.,
`FOR PRO HAC VICE ADMISSION OF THOMAS H. WINTNER
`
`
`
`I.
`
`Statement of Precise Relief Requested
`
`Patent Owner Nissan Chemical Industries, Ltd. (“NCI”) respectfully
`
`requests that the Board admit Thomas H. Wintner pro hac vice in this proceeding
`
`under 37 C.F.R. § 42.10(c).
`
`II.
`
`Statement of Facts Showing Good Cause for the Board to Recognize
`Counsel Pro Hac Vice during the Proceeding
`
`Pursuant to 37 C.F.R. § 42.10(c), the Board may admit counsel pro hac vice
`
`for good cause, subject to any other conditions that the Board may require, so long
`
`as lead counsel is a registered practitioner. Good cause includes when “counsel is
`
`an experienced litigating attorney and has an established familiarity with the
`
`subject matter at issue in the proceeding.” 37 C.F.R. § 42.10(c).
`
`This application satisfies the requirements of Section 42.10(c):
`
`1.
`
`Lead counsel, David G. Conlin, the undersigned, is a registered
`
`Practitioner. Back up counsel, Kathleen B. Carr, is a registered Practitioner.
`
`2.
`
`Pro Hac Vice Applicant, Mr. Thomas H. Wintner, is an experienced
`
`litigator and has an established familiarity with the subject matter at issue in this
`
`proceeding, as shown in his accompanying Declaration dated October13, 2015
`
`(“Wintner Decl.”), Exhibit 2001. That declaration shows that Mr. Wintner
`
`possesses a legal and technical background directly related to the subject matter of
`
`this proceeding, including undergraduate and graduate degrees in chemistry and
`
`2
`
`
`
`bioorganic chemistry, respectively. Wintner Decl. ¶ 4. He is also directly familiar
`
`with U.S. Patent No. 5,856,336 (“the ‘336 patent”), its prosecution history, the
`
`prior art references that are the subject of this inter partes review proceeding, and
`
`the FDA-approved drug product (Livalo®) for which the ‘336 patent is listed in the
`
`Orange Book. Id. ¶¶ 5-7. Mr. Wintner is trial counsel in the co-pending district
`
`court litigation involving Patent Owner NCI and the Petitioners Sawai USA Inc.
`
`and Sawai Pharmaceutical Co., Ltd (“Sawai”). That litigation involves the ‘336
`
`patent, and Mr. Wintner has been actively involved in all aspects of the case,
`
`including investigating and analyzing infringement and validity issues raised by
`
`Sawai in connection with that litigation. Mr. Wintner has experience and expertise
`
`relevant to this proceeding. Id. ¶ 8. Mr. Wintner was substantially involved with
`
`the preparation of the Patent Owner’s Preliminary Response in connection with
`
`this IPR 2015-01648 proceeding.
`
`3.
`
`Mr. Wintner is a member in good standing of the Bar of the
`
`Commonwealth of Massachusetts. Id. ¶ 2. He is admitted to practice before the
`
`Supreme Court of the United States, the United States Courts of Appeals for the
`
`Federal, First, Fourth, Sixth, and Ninth Circuits, and the United States District
`
`Court for the District of Massachusetts. Id.
`
`3
`
`
`
`4.
`
`In his declaration, Mr. Wintner also attests to each of the items
`
`referenced in the “Order – Authorizing Motion for Pro Hac Vice Admission – 37
`
`C.F.R. § 42.10” in IPR2013-00639 (Paper No. 7).
`
`For the foregoing reasons, Patent Owner Nissan Chemical Industries, Ltd.
`
`respectfully requests that the Board admit Thomas H. Wintner pro hac vice in this
`
`proceeding.
`
`Respectfully submitted,
`
`NISSAN CHEMICAL INDUSTRIES,
`LTD.,
`
`By its attorneys,
`
`/David G. Conlin/
`David G. Conlin, Reg. No. 27,026
`Kathleen B. Carr, Reg. No.41,658
`Mintz, Levin, Cohn, Ferris, Glovsky
`and Popeo, P.C.
`One Financial Center
`Boston, MA 02111
`617-542-6000
`617-542-2241 fax
`DGConlin@mintz.com
`KBCarr@mintz.com
`
`Dated: October 13, 2015
`
`4
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Motion of
`
`Nissan Chemical Industries, Ltd., for Pro Hac Vice Admission of Thomas H.
`
`Wintner was served on October 13, 2015 by sending a copy by overnight courier
`
`and by email to:
`
`Kenneth J. Burchfiel
`Travis B. Ribar
`Chidambaram S. Iyer
`Michael R. Dzwonczyk
`Azy S. Kokabi
`SUGHRUE MION, PLLC
`2100 Pennsylvania Ave., NW
`Washington, DC 20037
`kburchfiel@sughrue.com
`tribar@sughrue.com
`ciyer@sughrue.com
`mdzwonczyk@sughrue.com
`akokabi@sughrue.com
`
`/David G. Conlin/
`David G. Conlin
`Reg. No. 27,026
`
`5
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