UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`J KYLE BASS and ERICH SPANGENBERG
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`Petitioner
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`v.
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`FRESENIUS KABI USA, LLC.
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`Patent Owner
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`Case No. IPR2016-00254
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`Patent No. 8,476,010 B2
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`PATENT OWNER’S MOTION FOR PRO HAC VICE ADMISSION OF
`DARYL L. WIESEN UNDER 37 C.F.R. § 42.10(c)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`J KYLE BASS and ERICH SPANGENBERG
`
`Petitioner
`
`v.
`
`FRESENIUS KABI USA, LLC.
`
`Patent Owner
`
`Case No. IPR2016-00254
`
`Patent No. 8,476,010 B2
`
`PATENT OWNER’S MOTION FOR PRO HAC VICE ADMISSION OF
`DARYL L. WIESEN UNDER 37 C.F.R. § 42.10(c)
`
`
`
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`Case No. IPR2016-00254
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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 December 10, 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 Fresenius Kabi USA, LLC. respectfully
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`requests that the Board allow Daryl L. Wiesen to appear pro hac vice on its behalf
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`in this proceeding. Petitioner consents to 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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`Wiesen pro hac vice in this proceeding. In particular, Patent Owner’s lead counsel
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`is a registered practitioner, and Mr. Wiesen is an experienced litigating attorney
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`having an established familiarity with the subject matter at issue 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. Wiesen pro hac vice; and is being filed concurrently with
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`Exhibit 2033, the Declaration of Daryl L. Wiesen in Support of Patent Owner’s
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`Motion for Pro Hac Vice Admission of Daryl L. Wiesen (“Wiesen Decl.”), all in
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`accordance with the “Order Authorizing Motion for Pro Hac Vice Admission” in
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`
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`1
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`
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`Case No. IPR2016-00254
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`Unified Patents, Inc. v. Parallel Iron, LLC, IPR2013-00639, Paper 7 at 3 (P.T.A.B.
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`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. Eleanor M. Yost, lead counsel for Patent Owner Fresenius Kabi USA,
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`LLC.in this proceeding, is a registered practitioner holding Registration No.
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`58,013.
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`3. As set forth in the Wiesen Decl., Mr. Wiesen is an experienced litigating
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`attorney. Specifically, Mr. Wiesen has nearly 20 years 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. (Wiesen
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`Decl., ¶¶ 2-3). Mr. Wiesen also has over five yearsof experience litigating cases
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`2
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`Case No. IPR2016-00254
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`on behalf of the Patent Owner, both generally and in litigations related Diprivan.
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`(Wiesen Decl., ¶¶ 5-7).
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`4. Mr. Wiesen also has an established familiarity with the precise subject
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`matter at issue in this proceeding. Patent Owner was recently involved in district
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`court litigation involving U.S. Patent No. 8,476,010 B2 (“the ’010 patent”), the
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`patent at issue in this proceeding, in Fresenius Kabi USA, LLC.. v. Watson
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`Laboratories Inc. et al., Civil Action No. 1:14-cv-00161RGA (D.Del.), Fresenius
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`Kabi USA, LLC. v. Dr. Reddy’s Laboratories Ltd. et al., Civil Action No. 1:14-
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`cv-00160-RGA (D.Del.), Fresenius Kabi USA, LLC. v. Emcure Pharmaceuticals
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`Inc. et al., Civil Action No. 14-cv-5584 (DNJ), Fresenius Kabi USA, LLC.. v.
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`Mylan Laboratories. et al., Civil Action No. 1:14-cv-1438-RGA (D.Del.),
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`Fresenius Kabi USA, LLC. v. Claris Life Sciences Ltd. et al., Civil Action No.
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`1:14-cv-07953 (DNJ) and Fresenius Kabi USA, LLC v. B. Braun Medical Inc.
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`Civil Action No. 1:16-cv-00250 (D.Del.). Mr. Wiesen was also involved in
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`district court litigation involving other patents concerning Diprivan in Fresenius
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`Kabi USA LLC v. Dr. Reddy's Laboratories Ltd. et al., Civil Action No. 1:13-cv-
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`00925-RGA (D.Del.) Mr. Wiesen was litigation counsel for Fresenius Kabi USA
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`LLC. in these litigations. In the course of this representation, he has developed a
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`strong familiarity with the ’010 patent, its prosecution history, the general subject
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`matter to which the ’010 patent is directed, and the prior art references relied
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`3
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`Case No. IPR2016-00254
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`upon by Petitioner in support of its invalidity grounds in this proceeding.
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`(Wiesen Decl., ¶ 8). Additionally, Mr. Wiesen has thoroughly reviewed the
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`Petition and accompanying Exhibits submitted in this proceeding. (Id.).
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`5. Mr. Wiesen 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. (Wiesen Decl., ¶¶ 3, 4, 6-8, 9-
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`13).
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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 Daryl L. Wiesen to appear pro hac vice on its behalf in this proceeding.
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`Dated: August 4, 2016
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`Respectfully submitted,
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`
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`/ Eleanor M. Yost /
`(Reg. No. 58,013)
`901 New York Avenue NW
`Washington, DC 20001
`Tel: 202-346-4000
`Fax: 202-346-4444
`eyost@goodwinprocter.com
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`Counsel for Patent Owner Fresenius Kabi
`USA, LLC.
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`4
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`CERTIFICATION OF SERVICE
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`The undersigned hereby certifies that PATENT OWNER’S MOTION FOR
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`PRO HAC VICE ADMISSION OF DARYL L. WIESEN UNDER 37 C.F.R. §
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`42.10(c), was served electronically via e-mail on August 4, 2016 on the following:
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`Dr. Gregory J. Gonsalves
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`gonsalves@gonsalveslawfirm.com
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`Christopher Casieri
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`chris@miplaw.com
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`Dated: August 4, 2016
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`/Eleanor M. Yost/
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`Eleanor M. Yost
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