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
`__________________
`
`Patent No. 8,791,154
`Issue Date: July 29, 2014
`Title: HIGH CONCENTRATION OLOPATADINE
`OPHTHALMIC COMPOSITION
`__________________
`
`Inter Partes Review No. 2016-00544
`__________________
`
`
`MOTION FOR PRO HAC VICE ADMISSION
`PURSUANT TO 37 C.F.R § 42.10(c)
`
`
`Patent 8,791,154
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`
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`ARGENTUM PHARMACEUTICALS LLC
`Petitioner
`
`v.
`
`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
`__________________
`
`
`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 Adam L. Perlman 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
`2
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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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`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. Perlman
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`(Ex. 2001) submitted herewith, Patent Owner requests the pro hac vice admission
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`of Adam L. Perlman 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. Perlman is an experienced litigation attorney. Mr. Perlman has
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`more than sixteen (16) years of patent litigation experience. Ex. 2001
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`¶ 1.
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`3. Mr. Perlman has established familiarity with the subject matter at
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`issue in this proceeding. As detailed below, Mr. Perlman is lead trial
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`counsel to Patent Owner’s related proceeding in which the ’154 patent
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`is at issue. Ex. 2001 ¶ 10.
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`4. Mr. Perlman is a member in good standing of the bars of the State of
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`Maryland and the District of Columbia. Ex. 2001 ¶ 3.
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`5. Mr. Perlman has never been suspended or disbarred from practice
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`before any court or administrative body. Ex. 2001 ¶ 4.
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`6.
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`No court or administrative body has ever denied Mr. Perlman’s
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`application for admission to practice before it. Ex. 2001 ¶ 5.
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`4
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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. Perlman. Ex. 2001 ¶ 6.
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`8. Mr. Perlman 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. 2001 ¶ 7.
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`9. Mr. Perlman understands that he will be subject to the USPTO Code
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`of 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. 2001 ¶ 8.
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`10. Mr. Perlman has applied to appear pro hac vice in eight other
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`proceedings before the Office in the last three (3) years: (1) Apotex
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`Corp. v. Alcon Research Ltd., IPR2013-00428, challenging U.S.
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`Patent No. 8,268,299; (2) Apotex Corp. v. Alcon Research Ltd.,
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`IPR2013-00429, challenging U.S. Patent No. 8,323,630; (3) Apotex
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`Corp. v. Alcon Research Ltd., IPR2013-00430, challenging U.S.
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`Patent No. 8,388,941; (4) Accord Healthcare Inc. et al. v. Daiichi
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`Sankyo Co. et al., IPR2015-00864, challenging U.S. Patent
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`No. 8,404,703; (5) Accord Healthcare Inc. et al. v. Daiichi Sankyo
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`Co. et al., IPR2015-00865, challenging U.S. Patent No. 8,569,325;
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`(6) Neptune Generics, LLC v. Eli Lilly & Company, IPR2016-00237,
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`5
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`Case IPR 2016-00544
`Patent 8,791,154
`challenging U.S. Patent No. 7,772,209; (7) Neptune Generics, LLC v.
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`Eli Lilly & Company, IPR2016-00240, challenging U.S. Patent No.
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`7,772,209; and (8) Sandoz Inc. v. Eli Lilly & Company, IPR2016-
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`00318, challenging U.S. Patent No. 7,772,209. Ex. 2001 ¶ 9.
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`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
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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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`facts contained herein, as supported by Mr. Perlman’s affidavit, good cause exists
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`to admit Mr. Perlman pro hac vice in this proceeding.
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`As set forth in his affidavit, Mr. Perlman is an experienced litigator with
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`more than sixteen (16) years of patent litigation experience. Ex. 2001 ¶ 1.
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`Moreover, Mr. Perlman has established familiarity with the subject matter at issue
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`in the proceeding, as he represents Patent Owner in federal district court litigation
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`concerning the patent at issue here. Mr. Perlman is currently lead counsel for
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`Patent Owner in litigation against other generic pharmaceutical companies, in the
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`U.S. District Court for the District of Delaware in which the same patent is at
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`6
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`Case IPR 2016-00544
`Patent 8,791,154
`issue: 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. Perlman 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. Perlman’s knowledge of the subject matter at issue in
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`this proceeding, Patent Owner has a substantial need for Mr. Perlman’s pro hac
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`vice admission and his involvement in the continued prosecution of this
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`proceeding.
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`V. CONCLUSION
`For the foregoing reasons, Patent Owner respectfully requests that Mr.
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`Perlman 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 2, 2016
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`7
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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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`Case IPR 2016-00544
`Patent 8,791,154
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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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`
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`Admission Pursuant to 37 C.F.R. § 42.10(c) was served on August 2, 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 2, 2016
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`9
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