Paper No. ____
`Date Filed: February 23, 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
`WILLIAM E. SOLANDER UNDER 37 C.F.R. § 42.10
`
`
`Date Filed: February 23, 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
`WILLIAM E. SOLANDER 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
`
`William E. Solander 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.
`
`William E. Solander (Exh. 2255) filed concurrently with this motion, Patent Owner
`
`requests that William E. Solander 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. Solander is a partner at the law firm of Fitzpatrick, Cella, Harper
`
`& Scinto. (Exh. 2255 at ¶ 3.)
`
`3
`
`
`
`3.
`
`Mr. Solander is an experienced patent litigation attorney. Mr.
`
`Solander has been a patent litigation attorney for more than twenty
`
`years. (Id. at ¶ 4.) Mr. Solander 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. Solander is a member in good standing of the bar of the State of
`
`New York. He is also admitted to the United States District Court
`
`for the Southern District of New York and the United States Court
`
`of Appeals for the Federal Circuit. (Id. at ¶ 5.)
`
`5.
`
`Mr. Solander has never been suspended or disbarred from practice
`
`before any court or administrative body. (Id.)
`
`6.
`
`No application of Mr. Solander 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. Solander by any court or administrative body. (Id. at ¶ 7.)
`
`8.
`
`Mr. Solander 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 the C.F.R. (Id. at ¶ 8.)
`
`4
`
`
`
`9.
`
`Mr. Solander 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. Mr. Solander has applied to appear and was admitted pro hac vice in
`
`three other proceedings before the Office in the last three years:
`
`IPR2014-00652, IPR2014-00654, IPR2014-00656. Although Mr.
`
`Solander was designated as back-up counsel requiring pro hac vice
`
`admission on mandatory notices in the following cases, he did not
`
`apply to appear pro hac vice in these proceedings: IPR2015-00522,
`
`IPR2015-00524, IPR2015-00525, IPR2015-00526, IPR2015-00529,
`
`IPR2015-00884, IPR2015-00888, IPR2015-00889, IPR2015-00891,
`
`IPR2015-00893, and IPR2016-00627. (Id. at ¶ 10.)
`
`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION OF
`MR. SOLANDER 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.
`
`Solander’s Declaration (Exh. 2255), there is good cause to admit Mr. Solander pro
`
`hac vice in this proceeding.
`
`5
`
`
`
`Mr. Solander has an established familiarity with the subject matter at issue in
`
`this proceeding. (Exh. 2255 at ¶¶ 11-15.) He has been involved consistently and
`
`substantively in this matter since its inception in March 2016. (Id. at ¶ 11.) He
`
`has read in detail and understands the Petition and the challenged patent, U.S.
`
`Patent 8,927,592 (“the ’592 patent”). (Id.) Additionally, Mr. Solander has engaged
`
`in extensive strategic and substantive discussions regarding this proceeding with
`
`Dominick A. Conde, who is the lead counsel for Patent Owner in this proceeding,
`
`as well as Daniel J. Minion and Whitney L. Meier, who are designated as back-up
`
`counsel for Patent Owner. (Id. at ¶ 12.) Mr. Solander has engaged in extensive
`
`substantive discussions with experts concerning issues relevant to this proceeding.
`
`(Id.) Since March 11, 2015, he has served as counsel for Patent Owner in several
`
`lawsuits in which the ’592 patent is asserted. (Id. at ¶¶ 13-14.) One of those
`
`lawsuits is against Petitioner. (Id. at ¶ 13.)
`
`Thus, Mr. Solander 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. Solander pro hac vice in this
`
`proceeding.
`
`6
`
`
`
`February 23, 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 William E. Solander Under 37 C.F.R. § 42.10 was served on
`
`February 23, 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
`
`mreed@wsgr.com
`
`namjadi@wsgr.com
`
`wdevine@wsgr.com
`
`February 23, 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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