UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`COALITION FOR AFFORDABLE DRUGS VIII, LLC
`Petitioner,
`
`v.
`
`THE TRUSTEES OF THE UNIVERSITY OF PENNSYLVANIA
`Patent Owner
`
`______________
`
`Case: IPR2015-01836
`Patent No. 7,932,268
`______________
`
`
`
`PATENT OWNER’S MOTION FOR PRO HAC VICE ADMISSION OF
`KEVIN S. PRUSSIA UNDER 37 C.F.R. § 42.10(c)
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`COALITION FOR AFFORDABLE DRUGS VIII, LLC
`Petitioner,
`
`v.
`
`THE TRUSTEES OF THE UNIVERSITY OF PENNSYLVANIA
`Patent Owner
`
`______________
`
`Case: IPR2015-01836
`Patent No. 7,932,268
`______________
`
`
`
`PATENT OWNER’S MOTION FOR PRO HAC VICE ADMISSION OF
`KEVIN S. PRUSSIA 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 September 8, 2015
`
`(Paper No. 3), authorizing the parties to file motions for pro hac vice admission
`
`under 37 C.F.R. § 42.10(c), Patent Owner The Trustees of the University of
`
`Pennsylvania respectfully requests that the Board allow Kevin S. Prussia to appear
`
`pro hac vice on its behalf in this proceeding. Petitioner has stated that it will not
`
`oppose this motion.
`
`II. REASONS THE REQUESTED RELIEF SHOULD BE GRANTED
`As set forth in the Statement of Material Facts below, and as required by 37
`
`C.F.R. § 42.10(c), Patent Owner has demonstrated good cause to admit Mr. Prussia
`
`pro hac vice in this proceeding. In particular, Patent Owner’s lead counsel is a
`
`registered practitioner, and Mr. Prussia 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 Mr. Prussia pro hac vice; and is being filed concurrently with
`
`Exhibit 2308, the Declaration of Kevin S. Prussia in Support of Patent Owner’s
`
`Motion for Pro Hac Vice Admission of Kevin S. Prussia (“Prussia Decl.”), all in
`
`accordance with the “Order Authorizing Motion for Pro Hac Vice Admission” in
`
`
`
`
`1
`
`
`
`
`
`Unified Patents, Inc. v. Parallel Iron, LLC, IPR2013-00639, Paper 7 at 3 (P.T.A.B.
`
`Oct. 15, 2013).
`
`III. STATEMENT OF MATERIAL FACTS
`1. 37 C.F.R. § 42.10(c) provides that “[t]he 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. William G. James, lead counsel for Patent Owner Trustees of the University
`
`of Pennsylvania in this proceeding, is a registered practitioner holding
`
`Registration No. 55,931.
`
`3. As set forth in the Prussia Decl., Mr. Prussia is an experienced litigating
`
`attorney. Specifically, Mr. Prussia has over 10 years of experience representing
`
`clients in patent litigations, in United States district courts and the Court of
`
`Appeals for the Federal Circuit. (Prussia Decl., ¶¶ 2, 3). Mr. Prussia has also
`
`been admitted pro hac vice by the Office in 7 prior matters. (Prussia Decl., ¶ 4).
`
`
`
`
`2
`
`
`
`
`
`4. Mr. Prussia also has an established familiarity with the precise subject
`
`matter at issue in this proceeding. Mr. Prussia has developed a strong familiarity
`
`with the ’268 patent, its prosecution history, the general subject matter to which
`
`the ’268 patent is directed, and the prior art references relied upon by Petitioner
`
`in support of its invalidity grounds in this proceeding. (Prussia Decl., ¶ 5).
`
`Additionally, Mr. Prussia has thoroughly reviewed the Petition and
`
`accompanying Exhibits submitted in this proceeding. (Id.).
`
`5. Mr. Prussia has attested to the each of the requirements set forth in
`
`paragraph 2(b)(i)-(viii) of the “Order Authorizing Motion for Pro Hac Vice
`
`Admission” in Case IPR2013-00639, Paper 7 at 3. (Prussia Decl., ¶¶ 3-10).
`
`IV. CONCLUSION
`In view of the foregoing, Patent Owner respectfully submits that the
`
`requirements of 37 C.F.R. § 42.10(c) have been satisfied, and requests an Order
`
`permitting Kevin S. Prussia to appear pro hac vice on its behalf in this proceeding.
`
`
`
`
`
`
`
`
`3
`
`
`
`
`
`Dated: November 21, 2016
`
`Respectfully submitted,
`
`/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
`
`Counsel for Patent Owner Trustees of the
`University of Pennsylvania
`
`
`
`
`4
`
`
`
`
`
`
`
`
`
`CERTIFICATION OF SERVICE
`The undersigned hereby certifies that “PATENT OWNER’S MOTION
`
`FOR PRO HAC VICE ADMISSION OF KEVIN S. PRUSSIA UNDER 37
`
`C.F.R. § 42.10(c)” and “EXHIBIT 2308- DECLARATION OF KEVIN S.
`
`PRUSSIA IN SUPPORT OF PATENT OWNER’S MOTION FOR PRO HAC
`
`VICE ADMISSION OF KEVIN S. PRUSSIA UNDER 37 C.F.R. § 42.10(c)”
`
`were served electronically via e-mail on November 21, 2016 on the following:
`
`Dr. Gregory Gonsalves
`2216 Beacon Lane
`Falls Church, Virginia 22043
`(571) 419-7252
`gonsalves@gonsalveslawfirm.com
`
`Christopher Casieri
`McNeely, Hare & War LLP
`12 Roszel Road, Suite C104
`Princeton, NJ 08540
`(609) 731-3668
`chris@miplaw.com
`
`Counsel for Petitioner Coalition
`for Affordable Drugs VIII, LLC
`
`
`
`Dated: November 21, 2016
`
`
`/Russell W. Warnick/
`Russell W. Warnick
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