Case IPR 2016-00544
`Patent 8,791,154
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
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`ARGENTUM PHARMACEUTICALS LLC
`Petitioner
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`v.
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`ALCON RESEARCH, LTD
`Patent Owner
`__________________
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`Patent No. 8,791,154
`Issue Date: July 29, 2014
`Title: HIGH CONCENTRATION OLOPATADINE
`OPHTHALMIC COMPOSITION
`__________________
`
`Inter Partes Review No. 2016-00544
`__________________
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`MOTION FOR PRO HAC VICE ADMISSION
`PURSUANT TO 37 C.F.R § 42.10(c)
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`Patent 8,791,154
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
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`ARGENTUM PHARMACEUTICALS LLC
`Petitioner
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`v.
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`ALCON RESEARCH, LTD
`Patent Owner
`__________________
`
`Patent No. 8,791,154
`Issue Date: July 29, 2014
`Title: HIGH CONCENTRATION OLOPATADINE
`OPHTHALMIC COMPOSITION
`__________________
`
`Inter Partes Review No. 2016-00544
`__________________
`
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`MOTION FOR PRO HAC VICE ADMISSION
`PURSUANT TO 37 C.F.R § 42.10(c)
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`
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`Case IPR 2016-00544
`Patent 8,791,154
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`RELIEF REQUESTED
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`I.
`Pursuant to 37 C.F.R. § 42.10(c) and the Board’s Notice of Filing Date
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`Accorded to Petition and Time for Filing Patent Owner Preliminary Response,
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`which authorizes the parties to file motions for pro hac vice admission, Paper 4 at
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`2, Patent Owner Alcon Research, Ltd., submits the following motion for admission
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`pro hac vice of Thomas H. L. Selby of Williams & Connolly LLP, 725 Twelfth
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`Street, N.W., Washington, DC 20005 in the above-captioned matter.
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`II. GOVERNING LAW, RULES, AND PRECEDENT
`The Board is authorized to recognize counsel pro hac vice pursuant to 37
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`C.F.R. § 42.10(c), which provides 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 counsel is an experienced litigating attorney
`and has an established familiarity with the subject matter
`at issue in the proceeding.
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`
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`The Unified Patents Order requires that a pro hac vice motion “[c]ontain a
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`statement of facts showing there is good cause for the Board to recognize counsel
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`pro hac vice during the proceeding.” Order – Authorizing Motion for Pro Hac
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`Case IPR 2016-00544
`Patent 8,791,154
`Vice Admission – 37 C.F.R. § 42.10, IPR2013-00639, Paper 7 at 3. A motion for
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`pro hac vice admission should also be accompanied by an affidavit of the
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`individual seeking to appear attesting to the following:
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`ii.
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`i. 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;
`iii. No application for admission to practice before any court or
`administrative body ever denied;
`iv. 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.
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`Order – Authorizing Motion for Pro Hac Vice Admission – 37 C.F.R. § 42.10,
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`v.
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`vi.
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`IPR2013-00639, Paper 7 at 3.
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`Case IPR 2016-00544
`Patent 8,791,154
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`III. STATEMENT OF FACTS
`Based on the following facts, and supported by the Affidavit of Mr. Selby
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`(Ex. 2003) submitted herewith, Patent Owner requests the pro hac vice admission
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`of Thomas H. L. Selby in this proceeding:
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`1.
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`Patent Owner’s lead counsel, David M. Krinsky (Reg. No. 72,339),
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`and back-up counsel, Thomas S. Fletcher (Reg. No. 72,383), are
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`registered practitioners before the Board.
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`2. Mr. Selby is an experienced litigation attorney. Mr. Selby has more
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`than sixteen (16) years of patent litigation experience. Ex. 2003 ¶ 1.
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`3. Mr. Selby has established familiarity with the subject matter at issue
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`in this proceeding. As detailed below, Mr. Selby is trial counsel to
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`Patent Owner’s related proceeding in which the ’154 patent is at issue.
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`Ex. 2003 ¶ 10.
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`4. Mr. Selby is a member in good standing of the bars of the State of
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`Texas and the District of Columbia. Ex. 2003 ¶ 3.
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`5. Mr. Selby has never been suspended or disbarred from practice before
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`any court or administrative body. Ex. 2003 ¶ 4.
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`6.
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`No court or administrative body has ever denied Mr. Selby’s
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`application for admission to practice before it. Ex. 2003 ¶ 5.
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`Case IPR 2016-00544
`Patent 8,791,154
`No court or administrative body has ever imposed sanctions or
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`7.
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`contempt citations on Mr. Selby. Ex. 2003 ¶ 6.
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`8. Mr. Selby 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
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`part 42 of 37 C.F.R. Ex. 2003 ¶ 7.
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`9. Mr. Selby understands that he will be subject to the USPTO Code of
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`Professional Responsibility set forth in 37 C.F.R. §§ 11.101 et seq.
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`and will be subject to disciplinary jurisdiction under 37 C.F.R.
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`§ 11.19(a). Ex. 2003 ¶ 8.
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`10. Mr. Selby has applied to appear pro hac vice in two other proceedings
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`before the Office in the last three (3) years: (1) Patent Interference
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`No. 105,838; and (2) Apotex, Inc. v. Wyeth LLC, IPR2014-00115,
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`challenging U.S. Patent No. 7,879,828. Ex. 2003 ¶ 9.
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`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE
`ADMISSION OF MR. SELBY IN THIS PROCEEDING
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`The Board may recognize counsel pro hac vice during a proceeding upon a
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`showing of good cause, subject to the condition that lead counsel be a registered
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`practitioner and to any other conditions as the Board may impose. 37 C.F.R.
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`§ 42.10(c). Patent Owner’s lead counsel, David M. Krinsky, and back-up counsel,
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`Thomas S. Fletcher, are registered practitioners before the Board. Based on the
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`Case IPR 2016-00544
`Patent 8,791,154
`facts contained herein, as supported by Mr. Selby’s affidavit, good cause exists to
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`admit Mr. Selby pro hac vice in this proceeding.
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`As set forth in his affidavit, Mr. Selby is an experienced litigator with more
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`than sixteen (16) years of patent litigation experience. Ex. 2003 ¶ 1. Moreover,
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`Mr. Selby has established familiarity with the subject matter at issue in the
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`proceeding, as he represents Patent Owner in federal district court litigation
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`concerning the patent at issue here. Mr. Selby is currently counsel for Patent
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`Owner in litigation against other generic pharmaceutical companies, in the U.S.
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`District Court for the District of Delaware in which the same patent is at issue:
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`Alcon Research, Ltd. v. Watson Laboratories, Inc., Lupin Ltd, and Lupin
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`Pharmaceuticals, Inc., Civil Action No. 15-1159-SLR-SRF (D. Del.).
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`Moreover, admission of Mr. Selby pro hac vice will avoid unnecessary
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`expense and duplication of work for Patent Owner between this and the district
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`court proceedings identified above. See 77 Fed. Reg. 48,680, 48,720 (Aug. 14,
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`2012) (Office’s comment on final rule discussing concerns about efficiency and
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`costs where a patent owner has already engaged counsel for parallel district court
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`litigation). In view of Mr. Selby’s knowledge of the subject matter at issue in this
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`proceeding, Patent Owner has a substantial need for Mr. Selby’s pro hac vice
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`admission and his involvement in the continued prosecution of this proceeding.
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`Case IPR 2016-00544
`Patent 8,791,154
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`V. CONCLUSION
`For the foregoing reasons, Patent Owner respectfully requests that Mr. Selby
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`be admitted pro hac vice in this proceeding.
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`The Patent Trial and Appeal Board is hereby authorized to charge any fees
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`associated with this filing to Deposit Account No. 010682.
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`Date: August 25, 2016
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`Respectfully submitted,
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`/David M. Krinsky/
`David M. Krinsky
`Reg. No. 72,339
`Lead Counsel for
`Patent Owner
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`Williams & Connolly LLP
`725 Twelfth Street, N.W.
`Washington, D.C. 20005
`202-434-5338 (Telephone)
`202-434-5029 (Facsimile)
`dkrinsky@wc.com
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`Case IPR 2016-00544
`Patent 8,791,154
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`CERTIFICATE OF SERVICE
`(37 C.F.R. § 42.6(e))
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`The undersigned hereby certifies that the foregoing Motion for Pro Hac Vice
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`Admission Pursuant to 37 C.F.R. § 42.10(c) was served on August 25, 2016 by
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`delivering a copy via electronic mail on the following attorneys of record for the
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`Petitioner:
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`Michael R. Houston, Ph.D. (Reg. No. 58,486)
`Joseph P. Meara, Ph.D. (Reg. No. 44,932)
`Foley & Lardner LLP, 3000 K St. N.W., Suite 600
`Washington, D.C. 20008
`jmeara-PGP@foley.com
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`/David M. Krinsky/
`David M. Krinsky
`Reg. No. 72,339
`Lead Counsel for Patent Owner
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`Date: August 25, 2016
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