Trials @uspto.gov
`571-272-7822
`
`
`Paper 41
` Entered: March 1, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MYLAN LABORATORIES LIMITED,
`Petitioner,
`
`v.
`
`AVENTIS PHARMA S.A.,
`Patent Owner.
`____________
`
`Case IPR2016-00712
`Patent 8,927,592 B2
`
`____________
`
`Before BRIAN P. MURPHY, TINA E. HULSE, and
`CHRISTOPHER M. KAISER, Administrative Patent Judges.
`
`MURPHY, Administrative Patent Judge.
`
`
`
`DECISION
`Patent Owner’s Motion for Pro Hac Vice Admission of
`William E. Solander
`37 C.F.R. § 42.10
`
`
`
`
`
`
`
`571-272-7822
`
`
`Paper 41
` Entered: March 1, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MYLAN LABORATORIES LIMITED,
`Petitioner,
`
`v.
`
`AVENTIS PHARMA S.A.,
`Patent Owner.
`____________
`
`Case IPR2016-00712
`Patent 8,927,592 B2
`
`____________
`
`Before BRIAN P. MURPHY, TINA E. HULSE, and
`CHRISTOPHER M. KAISER, Administrative Patent Judges.
`
`MURPHY, Administrative Patent Judge.
`
`
`
`DECISION
`Patent Owner’s Motion for Pro Hac Vice Admission of
`William E. Solander
`37 C.F.R. § 42.10
`
`
`
`
`
`
`
`
`IPR2016-00712
`Patent 8,927,592 B2
`
`
`
`
`
`
`On February 23, 2017, Patent Owner filed a motion for pro hac vice
`admission of William E. Solander. Paper 38 (“Motion” or “Mot.”). A
`“Declaration In Support Of Patent Owner’s Motion For Pro Hac Vice
`Admission Of William E. Solander Under 37 C.F.R. § 42.10” was submitted
`with the Motion. Ex. 2255 (“Declaration”). Petitioner does not oppose the
`Motion. Mot. 1. For the reasons discussed below, Patent Owner’s Motion is
`granted.
`The Board may recognize counsel pro hac vice during a proceeding
`upon a showing of good cause, subject to the condition that lead counsel is a
`registered practitioner. 37 C.F.R. § 42.10(c). If lead counsel is a registered
`practitioner, a non-registered practitioner may be permitted to appear pro
`hac vice “upon showing that counsel is an experienced litigating attorney
`and has an established familiarity with the subject matter at issue in the
`proceeding.” Id. In authorizing motions for pro hac vice admission, the
`Board requires a statement of facts showing there is good cause to recognize
`counsel pro hac vice, and an affidavit or declaration of the individual
`seeking to appear in this proceeding. See Paper 4, 2 (citing Unified Patents,
`Inc. v. Parallel Iron, LLC, Case IPR2013-00639 (PTAB Oct. 15, 2013)
`(Paper 7) (representative “Order – Authorizing Motion for Pro Hac Vice
`Admission”)).
`In this proceeding, lead counsel for Patent Owner is Mr. Dominick A.
`Conde, a registered practitioner. Mot. 3. In the Motion, Patent Owner
`asserts there is good cause for Mr. Solander to be admitted pro hac vice
`because: (1) Mr. Solander is an experienced litigation attorney who has
`litigated patent cases in District Courts across the country and the Federal
`
`
`
`2
`
`
`
`
`
`IPR2016-00712
`Patent 8,927,592 B2
`
`
`
`Circuit; (2) Mr. Solander has an established familiarity with the relevant
`technology and U.S. Patent No. 8,927,592; and (3) Mr. Solander has served
`as counsel for Patent Owner in several lawsuits in which U.S. Patent No.
`8,927,592 was asserted. Id. at 4–6. In the Declaration, Mr. Solander attests
`that he is a member in good standing of the bar of the State of New York.
`Declaration ¶ 5. Mr. Solander attests that he has never been suspended,
`disbarred, sanctioned, or cited for contempt by any court or administrative
`body, and that he has never had an application for admission to practice
`denied anywhere. Id. ¶¶ 5–7. Mr. Solander attests that he is familiar with
`the subject matter at issue in this proceeding based on his work as counsel in
`the several related lawsuits referenced above. Id. ¶¶ 11–13.
`Mr. Solander further states (1) that he has read and will comply with
`the Board’s Rules of Practice for Trials as set forth in Part 42 of Title 37,
`Code of Federal Regulations, as well as the Office Patent Trial Practice
`Guide, and (2) that he agrees to be subject to the USPTO Code of
`Professional Responsibility as set forth in 37 C.F.R. §§ 11.101 et seq., and
`disciplinary jurisdiction under 37 C.F.R. § 11.19(a). Id. ¶¶ 8–9.
`Patent Owner has established good cause for admission of Mr.
`Solander, pro hac vice. Mr. Solander will be permitted to appear pro hac
`vice in this proceeding as back-up counsel only. 37 C.F.R. § 42.10(c).
`It is
`ORDERED that Patent Owner’s Motion for pro hac vice admission of
`William E. Solander is granted; Mr. Solander is authorized to act as back-up
`counsel in the instant proceedings only;
`
`
`
`3
`
`
`
`IPR2016-00712
`Patent 8,927,592 B2
`
`
`
`
`
`
`FURTHER ORDERED that Patent Owner shall continue to have a
`registered practitioner represent it as lead counsel for the instant proceeding;
`FURTHER ORDERED that Mr. Solander shall comply with the
`Office Patent Trial Practice Guide and the Board’s Rules of Practice for
`Trials, as set forth in Part 42 of Title 37, Code of Federal Regulations; and
`FURTHER ORDERED that Mr. Solander is subject to the Office’s
`disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and the USPTO Rules
`of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`
`
`4
`
`
`
`
`
`
`
`IPR2016-00712
`Patent 8,927,592 B2
`
`
`FOR PETITIONER:
`Steven W. Parmelee
`Michael T. Rosato
`Jad A. Mills
`Matthew R. Reed
`Wendy L. Devine
`Nellie J. Amjadi
`WILSON SONSINI GOODRICH & ROSATI
`sparmelee@wsgr.com
`mrosato@wsgr.com
`jmills@wsgr.com
`mreed@wsgr.com
`wdevine@wsgr.com
`namjadi@wsgr.com
`
`FOR PATENT OWNER:
`
`Dominic A. Conde
`Whitney L. Meier
`Joshua I. Rothman
`Daniel J. Minion
`Whitney L. Meier
`William E. Solander
`FITZPATRICK CELLA HARPER & SCINTO
`dconde@fchs.com
`wmeier@fchs.com
`jrothman@fchs.com
`dminion@fchs.com
`wmeier@fchs.com
`wsolander@fchs.com
`
`
`
`5
`
`
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