Paper No. ___
`Date Filed: Aug. 19, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`AMERIGEN PHARMACEUTICALS LIMITED
`Petitioner,
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`v.
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`JANSSEN ONCOLOGY, INC.,
`Patent Owner.
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`________________
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`Case IPR2016-00286
`Patent 8,822,438 B2
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`JANSSEN ONCOLOGY, INC.’S MOTION FOR PRO HAC VICE
`ADMISSION OF S. ISAAC OLSON
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`Date Filed: Aug. 19, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`________________
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`AMERIGEN PHARMACEUTICALS LIMITED
`Petitioner,
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`v.
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`JANSSEN ONCOLOGY, INC.,
`Patent Owner.
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`________________
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`Case IPR2016-00286
`Patent 8,822,438 B2
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`________________
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`JANSSEN ONCOLOGY, INC.’S MOTION FOR PRO HAC VICE
`ADMISSION OF S. ISAAC OLSON
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`IPR2016-00286
`Patent No. 8,822,438 B2
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`Pursuant to 37 C.F.R. § 42.10(c) and the Board’s December 10, 2015 Notice
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`of Filing Date Accorded to Petition and Time for Filing Patent Owner Preliminary
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`Response (Paper 4), Patent Owner Janssen Oncology, Inc. (“Janssen”) respectfully
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`requests the pro hac vice admission of attorney S. Isaac Olson in this proceeding.
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`Patent Owner has conferred with counsel for Amerigen Pharmaceuticals Limited
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`(“Petitioner”), and Petitioner does not oppose this motion.
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`I.
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`Statement of Facts Showing Good Cause for the Board to Recognize S.
`Isaac Olson Pro Hac Vice in this Proceeding
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`The Board may recognize counsel pro hac vice during an inter partes review
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`proceeding upon a showing of good cause, “subject to the condition that lead
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`counsel be a registered practitioner and to any other conditions as the Board may
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`impose.” 37 C.F.R. § 42.10(c). 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 experienced
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`litigating attorney and has an established familiarity with the subject matter at issue
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`in the proceeding.” Id.
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`As set forth below and in the accompanying Declaration of S. Isaac Olson in
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`Support of Motion to Appear Pro Hac Vice (“Olson Decl.,” Exhibit 2027), the facts
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`here establish good cause for the Board to recognize S. Isaac Olson pro hac vice in
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`this proceeding.
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`2
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`IPR2016-00286
`Patent No. 8,822,438 B2
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`1. Lead Counsel, Dianne Elderkin, is a registered practitioner (Reg. No.
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`28,598).
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`2. Mr. Olson is a member in good standing of the State Bar of New York
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`(Bar No. 4625190). See Exhibit 2027, ¶ 2.
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`3. Mr. Olson has never been suspended or disbarred from practice before
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`any court or administrative body. See Exhibit 2027, ¶ 3.
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`4. None of Mr. Olson’s applications for admission to practice before any
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`court or administrative body have ever been denied. See Exhibit 2027, ¶ 4.
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`5. Mr. Olson has not been sanctioned nor has he had a contempt citation
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`imposed on him by any court or administrative body. See Exhibit 2027, ¶ 5.
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`6. Mr. Olson has declared that he has read and will comply with the
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`Office Patent Trial Practice Guide and the Board’s Rules of Practice for Trial set
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`forth in part 42 of 37 C.F.R. See Exhibit 2027, ¶ 6.
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`7. Mr. Olson has acknowledged and agrees that he will be subject to the
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`USPTO Rules of Professional Conduct set forth in 37 C.F.R. § 11.101 et. seq. and
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`disciplinary jurisdiction under 37 C.F.R. § 11.19(a). See Exhibit 2027, ¶ 7.
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`8. Mr. Olson has not applied to appear pro hac vice before the Patent
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`Trial and Appeal Board in the last three years. See Exhibit 2027, ¶ 8.
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`9. Mr. Olson has been a practicing attorney for almost 9 years and has
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`been involved in numerous patent cases. He is presently counsel for Janssen in
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`3
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`IPR2016-00286
`Patent No. 8,822,438 B2
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`pending patent litigations involving the patent under review in this proceeding,
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`U.S. Patent No. 8,822,438 (the “’438 patent”). These cases are captioned BTG
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`Int’l Ltd., et al. v. Actavis Labs. FL, Inc., et al., C.A. No. 2:15-cv-05909-KM-JBC
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`(D.N.J.) and Janssen Biotech, Inc., et al. v. Mylan Pharm. Inc., et al., C.A. No.
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`1:15-cv-00130-IMK (N.D. W. Va.). As part of these litigations, Mr. Olson has
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`studied and analyzed the ’438 patent and has become very familiar with its subject
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`matter. He is also familiar with prior art asserted in this IPR proceeding,
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`conception and reduction to practice of the inventions claimed in the ’438 patent,
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`and claim construction of various claim terms. See Exhibit 2027, ¶ 9.
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`In view of Mr. Olson’s knowledge of the subject matter at issue in this
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`proceeding, and in view of the interrelatedness of this proceeding and the two
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`district court litigations mentioned above, Janssen has a substantial need for Mr.
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`Olson’s pro hac vice admission and his involvement in the continued prosecution
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`of this proceeding. In addition, pro hac vice admission of Mr. Olson will enable
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`Janssen to avoid unnecessary expense and duplication of work between this
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`proceeding and the related district court litigations. See 77 Fed. Reg. 48,612,
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`48,661 (Aug. 14, 2012) (Office’s comment on final rule discussing concerns about
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`efficiency and costs where an entity has already engaged counsel for parallel
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`district court litigation).
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`4
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`IPR2016-00286
`Patent No. 8,822,438 B2
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`II.
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`Conclusion
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`For the foregoing reasons, Patent Owner Janssen respectfully requests that
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`the Board admit S. Isaac Olson pro hac vice in this proceeding.
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`Date: August 19, 2016
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`Respectfully submitted,
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`/Dianne B. Elderkin/
`Dianne B. Elderkin
`Registration No. 28,598
`Counsel for Patent Owner
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`5
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`IPR2016-00286
`Patent No. 8,822,438 B2
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Janssen
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`Oncology, Inc.’s Motion for Pro Hac Vice Admission of S. Isaac Olson was served
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`on counsel of record on August 19, 2016 by filing this document through the End-
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`to-End System, as well as delivering a copy via electronic mail to counsel of record
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`for the Petitioner at the following addresses:
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`William Hare
`Gabriela Materassi
`McNeeley Hare & War LLP
`bill@miplaw.com
`materassi@miplaw.com
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`Respectfully submitted,
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`By: /Dianne B. Elderkin/
`Dianne B. Elderkin
`Registration No. 28,598
`Counsel for Patent Owner
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`Date: August 19, 2016
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`6
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