Paper No. ____
`Date Filed: February 1, 2017
`
`Filed On Behalf Of:
`
`Aventis Pharma S.A.
`
`By:
`
`Dominick A. Conde
`dconde@fchs.com
`(212) 218-2100
`
`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
`U.S. Patent No. 8,927,592
`________________
`
`PATENT OWNER’S MOTION FOR PRO HAC VICE ADMISSION OF
`JOSHUA I. ROTHMAN UNDER 37 C.F.R. § 42.10
`
`
`Date Filed: February 1, 2017
`
`Filed On Behalf Of:
`
`Aventis Pharma S.A.
`
`By:
`
`Dominick A. Conde
`dconde@fchs.com
`(212) 218-2100
`
`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
`U.S. Patent No. 8,927,592
`________________
`
`PATENT OWNER’S MOTION FOR PRO HAC VICE ADMISSION OF
`JOSHUA I. ROTHMAN UNDER 37 C.F.R. § 42.10
`
`
`
`I.
`
`RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. § 42.10(c), Patent Owner Aventis Pharma S.A.
`
`(hereinafter, “Aventis”) respectfully requests the pro hac vice admission of Joshua
`
`I. Rothman in this proceeding.
`
`This motion is being filed more than twenty one (21) days after service of
`
`the Petition. Petitioner does not oppose the motion.
`
`II.
`
`THE GOVERNING LAW, RULES, AND PRECEDENT
`
`37 C.F.R. § 42.10(c) concerns motions for pro hac vice admission and states
`
`as follows:
`
`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.
`
`1
`
`
`
`The Board has stated that motions for pro hac vice admission under 37
`
`C.F.R. § 42.10(c) should be filed in accordance with the “Order – Authorizing
`
`Motion for Pro Hac Vice Admission” entered in Case IPR2013-00639 (Paper 7)
`
`(Representative Opinion).
`
`In that Order, the Board stated that motions for pro hac vice admission must
`
`“[c]ontain a statement of facts showing there is good cause for the Board to
`
`recognize counsel pro hac vice during the proceeding,” and must “[b]e
`
`accompanied by an affidavit or declaration of the individual seeking to appear
`
`attesting to the following:
`
`i.
`
`Membership in good standing of the Bar of at least one
`
`State or the District of Columbia;
`
`ii.
`
`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;
`
`v.
`
`The individual seeking to appear has read and will
`
`comply with the Office Patent Trial Practice Guide and
`
`2
`
`
`
`the Board’s Rules of Practice for Trials set forth in part
`
`42 of 37 C.F.R.;
`
`vi.
`
`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.”
`
`III.
`
`STATEMENT OF MATERIAL FACTS
`
`Based on the following facts, which are supported by the Declaration of Mr.
`
`Joshua I. Rothman (Exh. 2254) filed concurrently with this motion, Patent Owner
`
`requests that Joshua I. Rothman be admitted pro hac vice in this proceeding:
`
`1.
`
`Patent Owner’s lead counsel, Dominick A. Conde, is a registered
`
`practitioner (Reg. No. 33,856).
`
`2.
`
`Mr. Rothman is a partner at the law firm of Fitzpatrick, Cella, Harper
`
`& Scinto. (Exh. 2254 at ¶ 3.)
`
`3
`
`
`
`3.
`
`Mr. Rothman is an experienced patent litigation attorney. Mr.
`
`Rothman has been a patent litigation attorney for more than 17 years.
`
`(Id. at ¶ 4.) Mr. Rothman has been litigating patent cases during this
`
`entire time period and has been involved in numerous cases involving
`
`patent validity and infringement in District Courts across the country
`
`as well as at the Federal Circuit. (Id.) He has extensive experience in
`
`bench trials. (Id.)
`
`4.
`
`Mr. Rothman is a member in good standing of the bar of the State of
`
`New York. He is also admitted to the bars of the United States
`
`District Court for the Southern and Eastern Districts of New York,
`
`the United States Court of Appeals for the Federal Circuit, and the
`
`Supreme Court of the United States. (Id. at ¶ 5.)
`
`5.
`
`Mr. Rothman has never been suspended or disbarred from practice
`
`before any court or administrative body. (Id.)
`
`6.
`
`No application of Mr. Rothman for admission to practice before any
`
`court or administrative body has ever been denied. (Id. at ¶ 6.)
`
`7.
`
`No sanctions or contempt citations have ever been imposed against
`
`Mr. Rothman by any court or administrative body. (Id. at ¶ 7.)
`
`4
`
`
`
`8.
`
`Mr. Rothman 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. (Id. at ¶ 8.)
`
`9.
`
`Mr. Rothman understands that he will be subject to the Office’s 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). (Id. at ¶ 9.)
`
`10.
`
`This is Mr. Rothman’s first application to appear pro hac vice in a
`
`proceeding before the Office. (Id. at ¶ 10.)
`
`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION OF
`MR. ROTHMAN 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, Dominick A. Conde, is a registered
`
`practitioner. Based on the facts set forth in this motion, as supported by Mr.
`
`Rothman’s Declaration (Exh. 2254), there is good cause to admit Mr. Rothman pro
`
`hac vice in this proceeding.
`
`Mr. Rothman has an established familiarity with the subject matter at issue
`
`in this proceeding. (Exh. 2254 at ¶¶ 11-12.) He is familiar with the patent-at-
`
`issue, U.S. Patent 8,927,592 (“the ’592 patent”), and the technology at issue. (Id.
`
`at 11.) Mr. Rothman has extensive knowledge of the assertions regarding the
`5
`
`
`
`invalidity of the patent. (Id.) He has also engaged in extensive substantive
`
`discussions with experts concerning issues relevant to this proceeding. (Id.)
`
`Additionally, Mr. Rothman has served as counsel for Patent Owner in
`
`several co-pending lawsuits in which the ’592 patent is asserted. (Id. at 12.) One
`
`of those lawsuits is against Petitioner. (Id.)
`
`Thus, Mr. Rothman has an established familiarity with the subject matter at
`
`issue in this proceeding as well as significant litigation experience and expertise.
`
`For these reasons, good cause exists to admit Mr. Rothman pro hac vice in this
`
`proceeding.
`
`6
`
`
`
`February 1, 2017
`
`Respectfully submitted,
`
`/Dominick A. Conde/
`
`Dominick A. Conde (Reg. No. 33,856)
`FITZPATRICK, CELLA, HARPER & SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`Tel: (212) 218-2100
`
`7
`
`
`
`CERTIFICATE OF SERVICE
`
`I certify that a copy of the Patent Owner’s Motion For Pro Hac Vice
`
`Admission of Joshua I. Rothman Under 37 C.F.R. § 42.10 was served on February
`
`1, 2017 by causing it to be sent by email to counsel for Petitioner at the following
`
`email addresses:
`
`sparmelee@wsgr.com
`
`mrosato@wsgr.com
`
`jmills@wsgr.com
`
`February 1, 2017
`
`Respectfully submitted,
`
`/Dominick A. Conde/
`Dominick A. Conde (Reg. No. 33,856)
`FITZPATRICK, CELLA, HARPER & SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`Tel: (212) 218-2100
`
`8
`
`
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