`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`————————————————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`————————————————
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner
`
`v.
`
`GENENTECH, INC. AND CITY OF HOPE,
`Patent Owners
`
`————————————————
`
`Case IPR2016-00710
`Patent 6,331,415
`
`————————————————
`
`MYLAN PHARMACEUTICAL INC.’S UNOPPOSED
`MOTION FOR PRO HAC VICE ADMISSION OF
`HEINZ J. SALMEN PURSUANT TO 37 C.F.R. § 42.10(C)
`
`
`
`
`
`
`
`I.
`
`RELIEF REQUESTED.
`
`Pursuant to 37 C.F.R. §42.10(c) and the Board’s “Order Authorizing Motion
`
`for Pro Hac Vice Admission – 37 C.F.R. §42.10,” in Case IPR2013-00639, Paper
`
`7, entered October 15, 2013, incorporated by Paper 4 in the present case, Petitioner
`
`Mylan Pharmaceuticals, Inc. (“Mylan”) requests that the Board admit Heinz J.
`
`Salmen pro hac vice in this proceeding. Counsel for Mylan have met and
`
`conferred with counsel for Patent Owner, and Patent Owner does not oppose this
`
`motion.
`
`II.
`
`STATEMENT OF FACTS.
`
`Pursuant to 37 C.F.R. §42.10(c), 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.
`
`37 C.F.R. §42.10(c). The facts, supported by the attached Declaration of Heinz J.
`
`Salmen in Support of Motion for Admission Pro Hac Vice (Exhibit 1063)
`
`(“Salmen Decl.”), establish good cause to admit Mr. Salmen pro hac vice in this
`
`proceeding.
`
`
`
`
`
`
`
`1
`
`
`
`1.
`
`Lead counsel Deanne M. Mazzochi is a registered practitioner before
`
`the USPTO.
`
`2.
`
`Back-up counsel Paul J. Molino is a registered practitioner before the
`
`USPTO.
`
`3.
`
`Heinz J. Salmen is an experienced litigating attorney. Mr. Salmen has
`
`been a litigating attorney for nearly ten (10) years. (Salmen Decl. ¶ 1). Mr.
`
`Salmen has been litigating patent cases for nearly ten (10) years. (Id. ¶ 2). Mr.
`
`Salmen is a member in good standing with the Illinois State Bar, with no
`
`suspensions or disbarments from practice, nor any application for admission to
`
`practice denied, nor any sanctions or contempt citations by any court or
`
`administrative body. (Id. ¶¶ 3-6). Mr. Salmen is admitted to practice in the United
`
`States Court of Appeals for the Federal Circuit and the United States District Court
`
`for the Northern District of Illinois. (Id. ¶ 3).
`
`4. Mr. Salmen has familiarity with the subject matter at issue in this
`
`proceeding and, more specifically, he is familiar with the patent at issue in this
`
`proceeding—U.S. Patent No. 6,331,415 (“the ‘415 patent”). (Salmen Decl. ¶ 7).
`
`Mr. Salmen is advising Mylan on patent matters relating to the subject matter
`
`claimed in the patent at issue in this proceeding. (Id.). Mr. Salmen was involved
`
`in the strategy of Mylan’s Petition for Inter Partes Review (the “Petition”) and, as
`
`
`
`2
`
`
`
`a result, Mr. Salmen has become intimately familiar with the subject matter of the
`
`‘415 patent and the prior art raised in the Petition. (Id.).
`
`5. Mr. Salmen has read and will comply with the Office Patent Trial
`
`Practice Guide and the Board’s Rules for Practice for Trials set forth in part 42 of
`
`the C.F.R, and he agrees to be subject to the USPTO Code of Professional
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`Responsibility set forth in 37 C.F.R. §§11.101 et seq., and to disciplinary
`
`jurisdiction under 37 C.F.R. §11.19(a). (Salmen Decl. ¶¶ 8-9).
`
`6.
`
`In the last three (3) years, Mr. Salmen has applied, and was accepted,
`
`to appear pro hac vice in one other inter partes review proceeding: Novo Nordisk
`
`Inc. v. Nektar Therapeutics, IPR2016-01384. (Salmen Decl. ¶ 10).
`
`III. ANALYSIS.
`
`The facts contained in the Statement of Facts above, and contained in the
`
`Salmen Declaration, establish that there is good cause to admit Mr. Salmen pro hac
`
`vice in this proceeding under 37 C.F.R. §42.10(c). Lead and backup counsel are
`
`registered practitioners, Mr. Salmen is an experienced litigating attorney, and Mr.
`
`Salmen has an established familiarity with the subject matter at issue in the
`
`proceeding.
`
`IV. CONCLUSION.
`
`For the foregoing reasons, Mylan respectfully requests that the Board admit
`
`Heinz J. Salmen pro hac vice in this proceeding.
`
`
`
`3
`
`
`
`Respectfully submitted,
`
` /Deanne M. Mazzochi/
`Deanne M. Mazzochi (Reg. No. 50,158)
`dmazzochi@rmmslegal.com
`RAKOCZY MOLINO MAZZOCHI SIWIK LLP
`6 West Hubbard Street, Suite 500
`Chicago, Illinois 60654
`Telephone: (312) 222-6305
`Facsimile: (312) 222-6325
`
`
`
`Dated: February 22, 2017
`
`
`
`4
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true and correct copy of the
`
`foregoing Mylan Pharmaceuticals Inc.’s Unopposed Motion for Pro Hac Vice
`
`Admission of Heinz J. Salmen Pursuant to 37 C.F.R. § 42.10(C) was served on
`
`February 22, 2017, via electronic mail by agreement of the parties, on the
`
`following counsel of record for Patent Owners:
`
`David L. Cavanaugh
`Reg. No. 36,476
`WILMER CUTLER PICKERING HALE
` AND DORR LLP
`1875 Pennsylvania Avenue NW
`Washington, DC 20006
`David.Cavanaugh@wilmerhale.com
`Telephone: 202-663-6025
`Facsimile: 202-663-6363
`
`
`Heather M. Petruzzi
`Reg. No. 71,270
`Heather.Petruzzi@wilmerhale.com
`Adam R. Brausa
`Reg. No. 60,287
`abrausa@durietangri.com
`Jeffrey P. Kushan
`Reg. No. 43,401
`jkushan@sidley.com
`
`
`Dated: February 22, 2017
`
`
`
`
`Respectfully submitted,
`
`
` /Deanne M. Mazzochi/
`Deanne M. Mazzochi (Reg. No. 50,158)
`dmazzochi@rmmslegal.com
`RAKOCZY MOLINO MAZZOCHI SIWIK LLP
`6 West Hubbard Street, Suite 500
`Chicago, Illinois 60654
`Telephone: (312) 222-6305
`Facsimile: (312) 222-6325
`
`
`
`
`
`
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