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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`COALITION FOR AFFORDABLE DRUGS VIII, LLC
`Petitioner,
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`v.
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`THE TRUSTEES OF THE UNIVERSITY OF PENNSYLVANIA
`Patent Owner
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`______________
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`Case: IPR2015-01835
`Patent No. 8,618,135
`______________
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`PATENT OWNER’S MOTION FOR PRO HAC VICE ADMISSION OF
`NICHOLAS K. MITROKOSTAS 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 September 8, 2015
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`(Paper No. 3), authorizing the parties to file motions for pro hac vice admission
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`under 37 C.F.R. § 42.10(c), Patent Owner The Trustees of the University of
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`Pennsylvania respectfully requests that the Board allow Nicholas K. Mitrokostas to
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`appear pro hac vice on its behalf in this proceeding. Petitioner has stated that it
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`will not oppose this motion.
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`II. REASONS THE REQUESTED RELIEF SHOULD BE GRANTED
`As set forth in the Statement of Material Facts below, and as required by 37
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`C.F.R. § 42.10(c), Patent Owner has demonstrated good cause to admit Mr.
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`Mitrokostas pro hac vice in this proceeding. In particular, Patent Owner’s lead
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`counsel is a registered practitioner, and Mr. Mitrokostas is an experienced
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`litigating attorney having an established familiarity with the subject matter at issue
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`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. Mitrokostas pro hac vice; and is being filed concurrently
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`with Exhibit 2017, the Declaration of Nicholas K. Mitrokostas in Support of Patent
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`Owner’s Motion for Pro Hac Vice Admission of Nicholas K. Mitrokostas
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`1
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`(“Mitrokostas Decl.”), all in accordance with the “Order Authorizing Motion for
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`Pro Hac Vice Admission” in Unified Patents, Inc. v. Parallel Iron, LLC, IPR2013-
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`00639, Paper 7 at 3 (P.T.A.B. Oct. 15, 2013).
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`III. STATEMENT OF MATERIAL FACTS
`1. 37 C.F.R. § 42.10(c) provides that “[t]he Board may recognize counsel pro
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`hac vice during a proceeding upon a showing of good cause, subject to the
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`condition that lead counsel be a registered practitioner and to any other
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`conditions as the 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 who is not a
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`registered practitioner may be granted upon showing that counsel is an
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`experienced litigating attorney and has an established familiarity with the subject
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`matter at issue in the proceeding.”
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`2. William G. James, lead counsel for Patent Owner Trustees of the University
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`of Pennsylvania in this proceeding, is a registered practitioner holding
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`Registration No. 55,931.
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`3. As set forth in the Mitrokostas Decl., Mr. Mitrokostas is an experienced
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`litigating attorney. Specifically, Mr. Mitrokostas has over a decade of experience
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`representing clients in patent litigations, primarily in the chemical arts, in United
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`States district courts and the Court of Appeals for the Federal Circuit.
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`2
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`(Mitrokostas Decl., ¶¶ 2, 3, 5). Mr. Mitrokostas has also been admitted pro hac
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`vice by the Office in three prior pharmaceutical matters. (Mitrokostas Decl., ¶ 4).
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`4. Mr. Mitrokostas also has an established familiarity with the precise subject
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`matter at issue in this proceeding. Mr. Mitrokostas has developed a strong
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`familiarity with the ’135 patent, its prosecution history, the general subject matter
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`to which the ’135 patent is directed, and the prior art references relied upon by
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`Petitioner in support of its invalidity grounds in this proceeding. (Mitrokostas
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`Decl., ¶ 6). Additionally, Mr. Mitrokostas has thoroughly reviewed the Petition
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`and accompanying Exhibits submitted in this proceeding. (Id.).
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`5. Mr. Mitrokostas has attested to the each of the requirements set forth in
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`paragraph 2(b)(i)-(viii) of the “Order Authorizing Motion for Pro Hac Vice
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`Admission” in Case IPR2013-00639, Paper 7 at 3. (Mitrokostas Decl., ¶¶ 3-11).
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`IV. CONCLUSION
`In view of the foregoing, Patent Owner 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 Nicholas K. Mitrokostas to appear pro hac vice on its behalf in this
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`3
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`proceeding.
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`Dated: May 5, 2016
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`Respectfully submitted,
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`/William G. James/
`William G, James (Reg. No. 55,931)
`Goodwin Procter LLP
`901 New York Avenue NW
`Washington, DC 20001
`Tel: 202-346-4046
`Fax: 202-346-4444
`wjames@goodwinprocter.com
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`Counsel for Patent Owner Trustees of the
`University of Pennsylvania
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`4
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`CERTIFICATION OF SERVICE
`The undersigned hereby certifies that “PATENT OWNER’S MOTION
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`FOR PRO HAC VICE ADMISSION OF NICHOLAS K. MITROKOSTAS
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`UNDER 37 C.F.R. § 42.10(c)” and “EXHIBIT 2017- DECLARATION OF
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`NICHOLAS K. MITROKOSTAS IN SUPPORT OF PATENT OWNER’S
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`MOTION FOR PRO HAC VICE ADMISSION OF NICHOLAS K.
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`MITROKOSTAS UNDER 37 C.F.R. § 42.10(c)” were served electronically via
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`e-mail on May 5, 2016 on the following:
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`Dr. Gregory Gonsalves
`2216 Beacon Lane
`Falls Church, Virginia 22043
`(571) 419-7252
`gonsalves@gonsalveslawfirm.com
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`Christopher Casieri
`McNeely, Hare & War LLP
`12 Roszel Road, Suite C104
`Princeton, NJ 08540
`(609) 731-3668
`chris@miplaw.com
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`Counsel for Petitioner Coalition
`for Affordable Drugs VIII, LLC
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`Dated: May 5, 2016
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`/April E. Weisbruch/
`April E. Weisbruch