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`Paper No. 38
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`Filed: October 27, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`NEPTUNE GENERICS, LLC,
`APOTEX INC., APOTEX CORP.,
`TEVA PHARMACEUTICALS USA, INC.,
`and FRESENIUS KABI USA, LLC,
`
`PETITIONERS,
`
`V.
`
`ELI LILLY & COMPANY,
`
`PATENT OWNER.
`
`___________________
`
`Case IPR2016-002371
`Patent 7,772,209
`___________________
`
`
`PETITIONER’S UNOPPOSED MOTION FOR PRO HAC VICE
`ADMISSION OF MIEKE K. MALMBERG AS BACK-UP COUNSEL
`
`
`1 Cases IPR2016-01190 and IPR2016-01341 have been joined with the instant
`proceeding.
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`
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`Pursuant to 37 C.F.R. § 42.10(c), Neptune Generics, LLC (“Neptune”)
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`hereby respectfully requests that the Board grant admission pro hac vice to Ms.
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`Mieke K. Malmberg to act as back-up counsel in this proceeding.
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`I.
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`INTRODUCTION AND BACKGROUND
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`Counsel for Neptune consulted with counsel for Patent Owner, Eli Lilly &
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`Company (“Lilly”), and Lilly agreed it would not oppose the present motion for
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`pro hac vice admission of Ms. Malmberg.
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`On June 3, 2016, the Patent Trial and Appeal Board (the “Board”) instituted
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`inter partes review of Lilly’s U.S. Patent No. 7,772,209. (See Paper 13.) The
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`Board had previously authorized the parties to file motions for pro hac vice
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`admission under 37 C.F.R. § 42.10(c). (See Paper 3 at 2.) Therefore, the present
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`motion is proper at this time.
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`II.
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`STATEMENT OF FACTS SHOWING GOOD CAUSE FOR THE
`PRESENT MOTION
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`37 C.F.R. § 42.10(c) states that:
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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
`who is not a registered practitioner may be granted upon showing that
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`
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`1
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`
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`counsel is an experienced litigating attorney and has an established
`familiarity with the subject matter at issue in the proceeding.”
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`As explained and attested to in the accompanying Declaration of Mieke K.
`
`Malmberg, Ms. Malmberg has an established familiarity of the subject matter at
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`issue in this inter partes review. (Ex. 1040 ¶¶ 10-13.) Ms. Malmberg is an
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`experienced patent litigation attorney with specific experience serving as counsel
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`in cases related to pharmaceutical patents. (Id. ¶ 9.) As a result of her work in those
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`cases, Ms. Malmberg has gained expertise with regard to inventions in the field of
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`pharmaceuticals.
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`Ms. Malmberg is a Member in good standing with the Texas State Bar (2013)
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`(Bar No. 24086334), and the California State Bar (2000) (Bar No. 209992) and is
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`admitted to practice in the U.S. Courts of Appeals for the Federal Circuit, U.S.
`
`Courts of Appeals for the Ninth Circuit, U.S. District Court of Central District of
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`California, U.S. District Court of Southern District of California, U.S. District
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`Court of the Northern District of California, and the U.S. District Court of the
`
`Eastern District of California. (Id. ¶ 1.)
`
`Ms. Malmberg applied to appear pro hac vice before the Office in four other
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`proceedings (four of which are related) within the last three years. On October 12,
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`2016, she applied to appear pro hac vice in Coalition for Affordable Drugs
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`(Adroca) LLC v. Acorda Therapeutics, Inc., IPR2015-01850; IPR2015-01853;
`2
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`
`
`
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`IPR2015-01857; and IPR2015-01858, and those applications are pending. (Ex.
`
`1040 ¶ 2.) Concurrently with this motion, Petitioner is also filing a motion for pro
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`hac vice admission for Ms. Malmberg in IPR2016-00240.
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`Ms. Malmberg has never been disbarred or suspended from practice before
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`any court or administrative body. (Id. ¶ 3.)
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`Ms. Malmberg has never had any sanctions or contempt citations imposed on
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`him from any court or administrative body. (Id. ¶ 4.)
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`Ms. Malmberg has never been denied any application for admission to
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`practice before any court or administrative body. (Id. ¶ 5.)
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`Neptune’s lead counsel for this proceeding, Ms. Sarah Spires, is a registered
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`patent practitioner. (Id. ¶ 8.) Neptune seeks the admission of Ms. Malmberg as
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`back-up counsel.
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`Ms. Malmberg has established deep familiarity with the specific subject
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`matter at issue in this proceeding. (Id. ¶¶ 10-13.) Ms. Malmberg has reviewed and
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`analyzed the Petition and supporting materials, has reviewed and analyzed U.S.
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`Patent No. 7,772,209 (’209 Patent) as well as its prosecution history, and has
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`reviewed and analyzed the Patent Owner Preliminary Response and the Decision
`
`regarding the Institution of Inter Partes Review. (Id. ¶¶ 11-13.)
`
`
`
`3
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`
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`Finally, Ms. Malmberg has read and will comply with the Office Patent Trial
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`Practice Guide and the Board’s Rules of Practice for Trials set forth in 37 C.F.R. §
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`42 et. seq., and has agreed to be subject to the USPTO Rules of Professional
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`Responsibility set forth in 37 C.F.R. 11.101 et. seq., and disciplinary jurisdiction
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`under 37 C.F.R. 11.19(a). (Ex. 1040 ¶¶ 6-7.)
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`III. STATEMENT OF RELIEF REQUESTED
`For the foregoing reasons, Petitioner respectfully requests that the Board
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`grant admission pro hac vice to Ms. Malmberg as back-up counsel.
`
`
`
`
`
`
`
`4
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`
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`October 27, 2016
`
`
`
`
`
`
`
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`Respectfully Submitted,
`
`/Sarah E. Spires/
`Sarah E. Spires (Reg. No. 61,501)
`SKIERMONT DERBY LLP
`2200 Ross Ave., Ste. 4800W
`Dallas, Texas 75201
`P: 214-978-6600/F: 214-978-6601
`Lead Counsel for Petitioner
`
`Dr. Parvathi Kota (Reg. No. 65,122)
`SKIERMONT DERBY LLP
`2200 Ross Ave., Ste. 4800W
`Dallas, Texas 75201
`P: 214-978-6600/F: 214-978-6621
`Back-Up Counsel for Petitioner
`
`
`
`5
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`
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I certify that I caused to be served on the
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`counsel for Patent Owner a true and correct copy of the foregoing Petitioner’s
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`Unopposed Motion for Pro Hac Vice Admission of Mieke K. Malmberg as Back-
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`Up Counsel, by electronic means on October 27, 2016 at the following addresses
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`of record:
`
`Dov P. Grossman (Reg. No. 72,525)
`WILLIAMS & CONNOLLY LLP
`725 Twelfth St. NW
`Washington, DC 20005
`Direct Phone: 202-434-5812
`Facsimile: 202-434-5029
`dgrossman@wc.com
`Lead Counsel for Patent Owner
`
`Adam L. Perlman (pro hac vice)
`WILLIAMS & CONNOLLY LLP
`725 Twelfth St. NW
`Washington, DC 20005
`Direct Phone: 202-434-5244
`Facsimile: 202-434-5029
`aperlman@wc.com
`Back-Up Counsel for Patent Owner
`
`John C. Demeter (Reg. No. 30,167)
`ELI LILLY AND COMPANY
`Lilly Corporate Center
`Indianapolis, IN 46285
`Direct Phone: 317-276-3785
`Facsimile: 317-276-3861
`Demeter_john_c@lilly.com
`Back-Up Counsel for Patent Owner
`
`
`
`
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`David M. Krinsky (Reg. No. 72,339)
`WILLIAMS & CONNOLLY LLP
`725 Twelfth St. NW
`Washington, DC 20005
`Direct Phone: 202-434-5338
`Facsimile: 202-480-8302
`dkrinsky@wc.com
`Back-Up Counsel for Patent Owner
`
`James P. Leeds (Reg. No. 35,241)
`ELI LILLY AND COMPANY
`Lilly Corporate Center
`Indianapolis, IN 46285
`Direct Phone: 317-276-1667
`Facsimile: 317-277-6534
`leeds_james@lilly.com
`Back-Up Counsel for Patent Owner
`
`John D. Polivick (Reg. No. 57,926)
`RAKOCZY MOLINO
`MAZZOCHI SIWIK LLP
`6 West Hubbard Street, Suite 500
`Chicago, Illinois 60654
`Tel: 312-527-2157
`Fax: 312-527-4205
`jpolivick@rmmslegal.com
`Lead Counsel for Petitioner Apotex
`
`
`
`
`
`Deanne M. Mazzochi (Reg. No. 50,158)
`RAKOCZY MOLINO
`MAZZOCHI SIWIK LLP
`6 West Hubbard Street, Suite 500
`Chicago, Illinois 60654
`Tel: 312-527-2157
`Fax: 312-527-4205
`dmazzochi@rmmslegal.com
`Back-Up Counsel for Petitioner Apotex
`
`Gary J. Speier (Reg. No. 45,458)
`CARLSON, CASPERS, VANDENBURGH,
`LINDQUIST AND SCHUMAN
`225 South Sixth Street, Suite 4200
`Minneapolis, MN 55402
`Tel: 612-436-9600
`Fax: 612-436-9605
`gspeier@carlsoncaspers.com
`Lead Counsel for Petitioner Teva
`
`Cynthia Lambert Hardman
`(Reg. No. 45,458)
`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
`chardman@goodwinprocter.com
`Back-Up Counsel for Petitioner Teva
`
`Dated: October 27, 2016
`
`
`
`
`
`
`
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`Patrick C. Kilgore (Reg. No. 69,131)
`RAKOCZY MOLINO
`MAZZOCHI SIWIK LLP
`6 West Hubbard Street, Suite 500
`Chicago, Illinois 60654
`Tel: 312-527-2157
`Fax: 312-527-4205
`pkilgore@rmmslegal.com
`Back-Up Counsel for Petitioner Apotex
`
`Mark D. Schuman (Reg. No. 31,197)
`CARLSON, CASPERS, VANDENBURGH,
`LINDQUIST AND SCHUMAN
`225 South Sixth Street, Suite 4200
`Minneapolis, MN 55402
`Tel: 612-436-9600
`Fax: 612-436-9605
`mschuman@carlsoncaspers.com
`Back-Up Counsel for Petitioner Teva
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`
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`Respectfully Submitted,
`
`/Sarah E. Spires/
`Sarah E. Spires (Reg. No. 61,501)
`
`Lead Counsel for Petitioner
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`
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