Case IPR 2016-00318
`Patent 7,772,209
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`SANDOZ INC.,
`Petitioner,
`
`v.
`
`ELI LILLY & COMPANY,
`Patent Owner.
`__________________
`
`Case No: IPR2016-00318
`Patent No. 7,772,209
`__________________
`
`MOTION FOR PRO HAC VICE ADMISSION
`PURSUANT TO 37 C.F.R. § 42.10(C)
`
`
`Patent 7,772,209
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`SANDOZ INC.,
`Petitioner,
`
`v.
`
`ELI LILLY & COMPANY,
`Patent Owner.
`__________________
`
`Case No: IPR2016-00318
`Patent No. 7,772,209
`__________________
`
`MOTION FOR PRO HAC VICE ADMISSION
`PURSUANT TO 37 C.F.R. § 42.10(C)
`
`
`
`Case IPR 2016-00318
`Patent 7,772,209
`
`I.
`
`RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. § 42.10(c) and the Board’s Notice of Filing Date
`
`Accorded to Petition and Time for Filing Patent Owner Preliminary Response,
`
`which authorizes the parties to file motions for pro hac vice admission, Paper 3 at
`
`2, Patent Owner Eli Lilly & Company submits the following motion for admission
`
`pro hac vice of Adam L. Perlman of Williams & Connolly LLP, 725 Twelfth
`
`Street, N.W., Washington, DC 20005 in the above-captioned matter.
`
`II. GOVERNING LAW, RULES, AND PRECEDENT
`The Board is authorized to recognize counsel pro hac vice pursuant to 37
`
`C.F.R. § 42.10(c), which provides that:
`
`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 counsel is an experienced litigating attorney
`and has an established familiarity with the subject matter
`at issue in the proceeding.
`
`The Unified Patents Order requires that a pro hac vice motion “[c]ontain a
`
`statement of facts showing there is good cause for the Board to recognize counsel
`
`pro hac vice during the proceeding.” Order – Authorizing Motion for Pro Hac
`2
`
`
`
`Case IPR 2016-00318
`Patent 7,772,209
`Vice Admission – 37 C.F.R. § 42.10, IPR2013-00639, Paper 7 at 3. A motion for
`
`pro hac vice admission should also be accompanied by an affidavit of the
`
`individual seeking to appear attesting to the following:
`
`i.
`
`ii.
`
`iii.
`
`iv.
`
`Membership in good standing of the Bar of at least one State or the
`District of Columbia;
`No suspensions or disbarments from practice before any court or
`administrative body;
`No application for admission to practice before any court or
`administrative body ever denied;
`No sanctions or contempt citations imposed by any court or
`administrative body;
`The individual seeking to appear 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.;
`The individual will be subject to the USPTO Rules of Professional
`Conduct set forth in 37 C.F.R. §§ 11.101 et. seq. and disciplinary
`jurisdiction under 37 C.F.R. § 11.19(a);
`vii. All other proceedings before the Office for which 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.
`
`v.
`
`vi.
`
`Order – Authorizing Motion for Pro Hac Vice Admission – 37 C.F.R. § 42.10,
`
`IPR2013-00639, Paper 7 at 3.
`
`3
`
`
`
`Case IPR 2016-00318
`Patent 7,772,209
`
`III.
`
`STATEMENT OF FACTS
`
`Based on the following facts, and supported by the Affidavit of Mr. Perlman
`
`(Ex. 2018) submitted herewith, Patent Owner requests the pro hac vice admission
`
`of Adam L. Perlman in this proceeding:
`
`1.
`
`Patent Owner’s lead counsel, Dov P. Grossman (Reg. No. 72,525),
`
`and back-up counsel, David M. Krinsky (Reg. No. 72,339) and James
`
`P. Leeds (Reg. No. 35,241), are registered practitioners before the
`
`Board.
`
`2.
`
`Mr. Perlman is an experienced litigation attorney. Mr. Perlman has
`
`more than sixteen (16) years of patent litigation experience. Ex. 2018
`
`¶ 1.
`
`3.
`
`Mr. Perlman has established familiarity with the subject matter at
`
`issue in this proceeding. As detailed below, Mr. Perlman is lead trial
`
`counsel to Patent Owner’s related proceedings in which the ’209
`
`patent is at issue. Ex. 2018 ¶ 10.
`
`4.
`
`Mr. Perlman is a member in good standing of the bars of the State of
`
`Maryland and the District of Columbia. Ex. 2018 ¶ 3.
`
`5.
`
`Mr. Perlman has never been suspended or disbarred from practice
`
`before any court or administrative body. Ex. 2018 ¶ 4.
`
`4
`
`
`
`Case IPR 2016-00318
`Patent 7,772,209
`No court or administrative body has ever denied Mr. Perlman’s
`
`6.
`
`application for admission to practice before it. Ex. 2018 ¶ 5.
`
`7.
`
`No court or administrative body has ever imposed sanctions or
`
`contempt citations on Mr. Perlman. Ex. 2018 ¶ 6.
`
`8.
`
`Mr. Perlman 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. Ex. 2018 ¶ 7.
`
`9.
`
`Mr. Perlman understands that he will be subject to the USPTO Code
`
`of Professional Responsibility set forth in 37 C.F.R. §§ 11.101 et seq.
`
`and will be subject to disciplinary jurisdiction under 37 C.F.R.
`
`§ 11.19(a). Ex. 2018 ¶ 8.
`
`10. Mr. Perlman is concurrently seeking pro hac vice admission in the
`
`petitioner’s other inter partes challenge to the ’209 patent, captioned
`
`IPR2016-00240, and in the inter partes challenge to the ’209 patent
`
`filed by Sandoz Inc., captioned IPR2016-00318. Ex. 2018 ¶ 9. Mr.
`
`Perlman has applied to appear pro hac vice in five other proceedings
`
`before the Office in the last three (3) years: (1) Apotex Corp. v. Alcon
`
`Research Ltd., IPR2013-00428, challenging U.S. Patent No.
`
`8,268,299; (2) Apotex Corp. v. Alcon Research Ltd., IPR2013-00429,
`
`challenging U.S. Patent No. 8,323,630; (3) Apotex Corp. v. Alcon
`
`5
`
`
`
`Case IPR 2016-00318
`Patent 7,772,209
`Research Ltd., IPR2013-00430, challenging U.S. Patent No.
`
`8,388,941; (4) Accord Healthcare Inc. et al. v. Daiichi Sankyo Co. et
`
`al., IPR2015-00864, challenging U.S. Patent No. 8,404,703; and (5)
`
`Accord Healthcare Inc. et al. v. Daiichi Sankyo Co. et al., IPR2015-
`
`00865, challenging U.S. Patent No. 8,569,325. Ex. 2018 ¶ 9.
`
`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE
`ADMISSION OF MR. PERLMAN 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). Patent Owner’s lead counsel, Dov P. Grossman, and back-up counsel,
`
`David M. Krinsky and James P. Leeds, are registered practitioners before the
`
`Board. Based on the facts contained herein, as supported by Mr. Perlman’s
`
`affidavit, good cause exists to admit Mr. Perlman pro hac vice in this proceeding.
`
`As set forth in his affidavit, Mr. Perlman is an experienced litigator with
`
`more than sixteen (16) years of patent litigation experience. Ex. 2018 ¶ 1.
`
`Moreover, Mr. Perlman has established familiarity with the subject matter at issue
`
`in the proceeding, as he represents Patent Owner in federal district and appellate
`
`court litigation concerning the patent at issue here. Mr. Perlman is currently lead
`
`counsel for Patent Owner in litigation against other generic pharmaceutical
`
`companies, in the U.S. District Court for the Southern District of Indiana in which
`
`6
`
`
`
`Case IPR 2016-00318
`Patent 7,772,209
`the same patent is at issue: Eli Lilly v. Teva Parenteral Medicines et al., C.A. No.
`
`10-1376-TWP-DKL (S.D. Ind.), on appeal to the Federal Circuit in Case No. 15-
`
`2067; Eli Lilly v. Accord Healthcare Inc. USA et al., C.A. No. 12-86-TWP-DKL
`
`(S.D. Ind.); Eli Lilly v. Sun Pharm. Indus. Ltd. et al., C.A. 13-1469-TWP-DKL
`
`(S.D. Ind.); Eli Lilly v. Glenmark Generics Inc., USA et al., C.A. 14-104-TWP-
`
`DKL (S.D. Ind.); Eli Lilly et al. v. Nang Kuang Pharm. Co. et al., C.A. 14-1647-
`
`TWP-DKL (S.D. Ind.); Eli Lilly v. Dr. Reddy’s Labs., Ltd. et al., C.A. 16-308-
`
`TWP-DKL (S.D. Ind.); Eli Lilly v. Biocon Ltd., C.A. 16-469-TWP-DKL (S.D.
`
`Ind.). Ex. 2018 ¶ 10.
`
`Moreover, admission of Mr. Perlman pro hac vice will avoid unnecessary
`
`expense and duplication of work for Patent Owner between this and the district
`
`court proceedings identified above. See 77 Fed. Reg. 48,680, 48,720 (Aug. 14,
`
`2012) (Office’s comment on final rule discussing concerns about efficiency and
`
`costs where a patent owner has already engaged counsel for parallel district court
`
`litigation). In view of Mr. Perlman’s knowledge of the subject matter at issue in
`
`this proceeding, Patent Owner has a substantial need for Mr. Perlman’s pro hac
`
`vice admission and his involvement in the continued prosecution of this
`
`proceeding.
`
`7
`
`
`
`Case IPR 2016-00318
`Patent 7,772,209
`
`V.
`
`CONCLUSION
`
`For the foregoing reasons, Patent Owner respectfully requests that Mr.
`
`Perlman be admitted pro hac vice in this proceeding.
`
`The Patent Trial and Appeal Board is hereby authorized to charge any fees
`
`associated with this filing to Deposit Account No. 506403.
`
`Date: July 8, 2016
`
`Respectfully submitted,
`
`/Dov P. Grossman/
`Dov P. Grossman
`Reg. No. 72,525
`Lead Counsel for
`Patent Owner
`
`Williams & Connolly LLP
`725 Twelfth Street, N.W.
`Washington, D.C. 20005
`202-434-5812 (Telephone)
`202-434-5029 (Facsimile)
`dgrossman@wc.com
`
`8
`
`
`
`Case IPR 2016-00318
`Patent 7,772,209
`
`CERTIFICATE OF SERVICE
`(37 C.F.R. § 42.6(e))
`
`The undersigned hereby certifies that the foregoing Motion for Pro Hac Vice
`
`Admission Pursuant to 37 C.F.R. § 42.10(c) was served on July 8, 2016 by
`
`delivering a copy via electronic mail on the following attorneys of record for the
`
`Petitioner:
`
`Ralph J. Gabric
`Reg. No. 34,167
`rgabric@brinksgilson.com
`
`Laura Lydigsen
`Pro hac vice
`llydigsen@brinksgilson.com
`
`Brinks Gilson & Lione
`455 Cityfront Plaza Drive
`Suite 3600 NBC Tower
`Chicago, IL 60611-5599
`T: 312-321-4200; F: 312-321-4299
`
`Bryan T. Richardson, Ph.D.
`Reg. No. 70,572
`brichardson@brinksgilson.com
`
`Brinks Gilson & Lione
`4721 Emperor Blvd.
`Suite 220
`Durham, NC 27703-8580
`T: 919-998-5700; F: 919-998-5701
`
`Date: July 8, 2016
`
`/Dov P. Grossman/
`Dov P. Grossman
`Reg. No. 72,525
`Lead Counsel for Patent Owner
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
