Paper No. ____
`Date filed: October 20, 2016
`
`
`
`
`
`
`Filed On Behalf Of:
`Novartis AG
`
`By:
`Nicholas N. Kallas
`NKallas@fchs.com
`ZortressAfinitorIPR@fchs.com
`(212) 218-2100
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`PAR PHARMACEUTICAL, INC.,
`
`Petitioner,
`
`v.
`
`NOVARTIS AG,
`
`Patent Owner.
`
`
`
`Case IPR2016-00084
`
`Patent No. 5,665,772
`
`
`
`
`
`
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`CORRECTED PATENT OWNER NOVARTIS’S MOTION
`FOR PRO HAC VICE ADMISSION OF CHARLOTTE JACOBSEN
`UNDER 37 C.F.R. § 42.10
`
`
`
`
`Date filed: October 20, 2016
`
`
`
`
`
`
`Filed On Behalf Of:
`Novartis AG
`
`By:
`Nicholas N. Kallas
`NKallas@fchs.com
`ZortressAfinitorIPR@fchs.com
`(212) 218-2100
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`PAR PHARMACEUTICAL, INC.,
`
`Petitioner,
`
`v.
`
`NOVARTIS AG,
`
`Patent Owner.
`
`
`
`Case IPR2016-00084
`
`Patent No. 5,665,772
`
`
`
`
`
`
`
`CORRECTED PATENT OWNER NOVARTIS’S MOTION
`FOR PRO HAC VICE ADMISSION OF CHARLOTTE JACOBSEN
`UNDER 37 C.F.R. § 42.10
`
`
`
`
`
`I.
`
`RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. § 42.10(c), Patent Owner Novartis AG respectfully
`
`requests the pro hac vice admission of Charlotte Jacobsen in this proceeding.
`
`This motion is being filed more than twenty one (21) days after service of
`
`the Petition. Petitioner has indicated that it does not oppose this motion.
`
`II. THE GOVERNING LAW, RULES, AND PRECEDENT
`
`37 C.F.R. § 42.10(c) concerns motions for pro hac vice admission and states
`
`as follows:
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`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
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`who is not a registered practitioner may be granted upon
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`showing that counsel is an experienced litigating attorney
`
`and has an established familiarity with the subject matter
`
`at issue in the proceeding.
`
`The Board has stated that motions for pro hac vice admission under 37
`
`C.F.R. § 42.10(c) must be filed in accordance with the “Order – Authorizing
`
`
`
`1
`
`
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`Motion for Pro Hac Vice Admission” entered in Case IPR2013-00639 (Paper 7)
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`(Representative Order).
`
`In that Order, the Board stated that motions for pro hac vice admission must
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`“[c]ontain a statement of facts showing there is good cause for the Board to
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`recognize counsel pro hac vice during the proceeding,” and must “[b]e
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`accompanied by an affidavit or declaration of the individual seeking to appear
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`attesting to the following:”
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`i. Membership in good standing of the Bar of at least
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`one State or the District of Columbia;
`
`ii.
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`No suspensions or disbarments from practice
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`before any court or administrative body;
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`iii. No application for admission to practice before
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`any court or administrative body ever denied;
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`iv. No sanctions or contempt citations imposed by any
`
`court or administrative body;
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`v.
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`The individual seeking to appear has read and will
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`comply with the Office Patent Trial Practice Guide
`
`and the Board’s Rules of Practice for Trials set
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`forth in part 42 of 37 C.F.R.;
`
`
`
`2
`
`
`
`vi.
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`The individual will be subject to the USPTO Rules
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`of Professional Conduct set forth in 37 C.F.R.
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`§§ 11.101 et seq. and disciplinary jurisdiction
`
`under 37 C.F.R. § 11.19(a);
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`vii. All other proceedings before the Office for which
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`the individual has applied to appear pro hac vice in
`
`the last three (3) years; and
`
`viii. Familiarity with the subject matter at issue in the
`
`proceeding.
`
`III. STATEMENT OF MATERIAL FACTS
`
`Based on the following facts, which are supported by the Declaration of Ms.
`
`Charlotte Jacobsen (Ex 2215) filed concurrently with this motion, Patent Owner
`
`requests that Charlotte Jacobsen be admitted pro hac vice in this proceeding:
`
`1.
`
`Patent Owner’s lead counsel, Nicholas N. Kallas, is a registered
`
`practitioner (Reg. No. 31,530).
`
`2. Ms. Jacobsen is a partner at the law firm of Fitzpatrick, Cella, Harper
`
`& Scinto. (Ex 2215 at ¶ 3.)
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`3. Ms. Jacobsen is an experienced patent litigation attorney. Ms.
`
`Jacobsen has been a patent litigation attorney for more than thirteen
`
`years and has been litigating patent cases during this entire time
`
`
`
`3
`
`
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`period. (Id. at ¶ 4.) She has been involved in inter partes review
`
`proceedings before the Board. (Id.) She has been involved in
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`numerous cases involving patent validity and infringement in both the
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`District Courts and the Federal Circuit. (Id.)
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`4. Ms. Jacobsen is a member in good standing of the State Bar of New
`
`York and the Bar of England and Wales. (Id. at ¶ 5.)
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`5. Ms. Jacobsen has never been suspended or disbarred from practice
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`before any court or administrative body. (Id.)
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`6.
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`No application of Ms. Jacobsen for admission to practice before any
`
`court or administrative body has ever been denied. (Id. at ¶ 6.)
`
`7.
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`No sanctions or contempt citations have ever been imposed against
`
`Ms. Jacobsen by any court or administrative body. (Id. at ¶ 7.)
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`8. Ms. Jacobsen has read and will comply with the Office Patent Trial
`
`Practice Guide and the Board’s Rules of Practice for Trials set forth in
`
`part 42 of 37 C.F.R. (Id. at ¶ 8.)
`
`9. Ms. Jacobsen understands that she will be subject to the Office’s
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`Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq.
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`and disciplinary jurisdiction under 37 C.F.R. § 11.19(a). (Id. at ¶ 9.)
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`10. Ms. Jacobsen has applied to appear pro hac vice in two other
`
`proceedings before the Office in the last three (3) years: Inter Partes
`
`
`
`4
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`
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`Review Nos. 2014-00549 and 2014-00550. (Id. at ¶ 10) Ms. Jacobsen
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`was admitted pro hac vice in these proceedings. (Id.)
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`11. Ms. Jacobsen has an established familiarity with the subject matter at
`
`issue in this proceeding. (Id. at ¶¶ 11-13.)
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`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION OF
`MS. JACOBSEN IN THIS PROCEEDING
`
`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. 37 C.F.R.
`
`§ 42.10(c). Petitioner’s lead counsel, Nicholas K. Kallas, is a registered
`
`practitioner (Reg. No. 31,530). Based on the facts set forth in this motion, as
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`supported by Ms. Jacobsen’s Declaration (Ex 2215), there is good cause to admit
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`Ms. Jacobsen pro hac vice in this proceeding.
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`Ms. Jacobsen has an established familiarity with the subject matter at issue
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`in this proceeding. (Ex 2215 at ¶¶ 11-13.) She has been involved consistently and
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`substantively in this matter for over the past year, and has been involved
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`consistently and substantively in District Court litigation involving the same
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`patent for over two (2) years. (Id. at ¶ 11.) Ms. Jacobsen has read in detail and
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`understands the Petition filed by Petitioner and the challenged patent, U.S.
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`Patent 5,665,772 (“the ’772 patent”). (Id. at ¶ 11.) She has also reviewed in detail
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`all the exhibits relied upon by Petitioner in this proceeding. (Id.) Additionally, Ms.
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`
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`5
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`
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`Jacobsen has engaged in extensive strategic and substantive discussions regarding
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`this proceeding with the lead counsel for Patent Owner in this proceeding. (Id. at ¶
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`12.) She has also engaged in extensive substantive discussions with experts
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`concerning issues relevant to this proceeding, and has an established familiarity
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`with the subject matter at issue in this proceeding. (Id. at ¶¶ 12-13.)
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`Thus, Ms. Jacobsen has an established familiarity with the subject matter at
`
`issue in this proceeding as well as significant litigation experience and expertise.
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`For these reasons, good cause exists to admit Ms. Jacobsen pro hac vice in this
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`
`
`Respectfully submitted,
`
`/ Nicholas N. Kallas /
`Nicholas N. Kallas
`Registration No. 31,530
`Lead Counsel for Patent Owner
`FITZPATRICK, CELLA, HARPER
`& SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`Tel. 212-218-2100
`
`proceeding.
`
`
`
`Dated: October 20, 2016
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`
`
`
`
`6
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`
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`CERTIFICATE OF SERVICE
`
`
`
`I certify that a copy of the foregoing CORRECTED PATENT OWNER
`
`NOVARTIS’S MOTION FOR PRO HAC VICE ADMISSION OF CHARLOTTE
`
`JACOBSEN UNDER 37 C.F.R. § 42.10 and Novartis Exhibit 2215 were served on
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`October 20, 2016 by causing them to be sent by email to counsel for Petitioner at
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`the following email addresses:
`
`Daniel G. Brown (daniel.brown@lw.com)
`
`Robert Steinberg (bob.steinberg@lw.com)
`
`Jonathan M. Strang (jonathan.strang@lw.com)
`
`
`
`
`
`Dated: October 20, 2016
`
`/ Nicholas N. Kallas /
`Nicholas N. Kallas
`Registration No. 31,530
`Lead Counsel for Patent Owner
`FITZPATRICK, CELLA, HARPER
`& SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`Tel. 212-218-2100
`
`
`
`
`
`FCHS_WS 12849423v3.doc
`
`7
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