`Date Filed: February 2, 2017
`
`Filed On Behalf Of:
`
`Alkermes Pharma Ireland Limited and
`Alkermes Controlled Therapeutics, Inc.
`
`By:
`
`Scott K. Reed
`sreed@fchs.com
`212-218-2100
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`LUYE PHARMA GROUP LTD., LUYE PHARMA (USA) LTD., SHANDONG
`LUYE PHARMACEUTICAL CO., LTD., and NANJING LUYE
`PHARMACEUTICAL CO., LTD.,
`Petitioners,
`v.
`ALKERMES PHARMA IRELAND LTD and ALKERMES CONTROLLED
`THERAPEUTICS, INC.,
`Patent Owners.
`________________
`
`Case IPR2016-01096
`U.S. Patent No. 6,667,061
`________________
`
`PATENT OWNERS’ MOTION FOR PRO HAC VICE ADMISSION OF
`CHRISTINA SCHWARZ UNDER 37 C.F.R. § 42.10
`
`
`
`I.
`
`RELIEF
`
`Pursuant to 37 C.F.R. § 42.10(c), Patent Owners Alkermes Pharma Ireland
`
`Limited and Alkermes Controlled Therapeutics, Inc. (hereinafter, “Alkermes”)
`
`respectfully request the pro hac vice admission of Christina Schwarz in this
`
`proceeding.
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`This motion is being filed more than twenty one (21) days after service of
`
`the Petition. Petitioners do not oppose the motion.
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`II.
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`THE GOVERNING LAW, RULES, AND PRECEDENT
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`37 C.F.R. § 42.10(c) concerns motions for pro hac vice admission and states
`
`as follows:
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`The Board may recognize counsel pro hac vice during a
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`proceeding upon a showing of good cause, subject to the
`
`condition that lead counsel be a registered practitioner
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`and to any other conditions as the Board may impose. For
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`example, where the lead counsel is a registered
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`practitioner, a motion to appear pro hac vice by counsel
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`who is not a registered practitioner may be granted upon
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`showing that counsel is an experienced litigating attorney
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`and has an established familiarity with the subject matter
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`at issue in the proceeding.
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`1
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`
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`The Board has stated that motions for pro hac vice admission under 37
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`C.F.R. § 42.10(c) should be filed in accordance with the “Order – Authorizing
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`Motion for Pro Hac Vice Admission” entered in Case IPR2013-00639 (Paper 7)
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`(Representative Opinion).
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`In that Order, the Board stated that motions for pro hac vice admission must
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`“[c]ontain a statement of facts showing there is good cause for the Board to
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`recognize counsel pro hac vice during the proceeding,” and must “[b]e
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`accompanied by an affidavit or declaration of the individual seeking to appear
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`attesting to the following:
`
`i.
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`Membership in good standing of the Bar of at least one
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`State or the District of Columbia;
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`ii.
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`No suspensions or disbarments from practice before any
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`court or administrative body;
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`iii.
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`No application for admission to practice before any court
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`or administrative body ever denied;
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`iv.
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`No sanctions or contempt citations imposed by any court
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`or administrative body;
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`v.
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`The individual seeking to appear has read and will
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`comply with the Office Patent Trial Practice Guide and
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`2
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`
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`the Board’s Rules of Practice for Trials set forth in part
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`42 of 37 C.F.R.;
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`vi.
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`The individual will be subject to the USPTO Rules of
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`Professional Conduct set forth in 37 C.F.R. §§ 11.101 et.
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`seq. and disciplinary jurisdiction under 37 C.F.R.
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`§ 11.19(a);
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`vii. All other proceedings before the Office for which the
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`individual has applied to appear pro hac vice in the last
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`three (3) years; and
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`viii. Familiarity with the subject matter at issue in the
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`proceeding.”
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`III.
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`STATEMENT OF MATERIAL FACTS
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`Based on the following facts, which are supported by the Declaration of
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`Christina Schwarz (Exh. 2011) filed concurrently with this motion, Patent Owners
`
`request that Christina Schwarz be admitted pro hac vice in this proceeding:
`
`1.
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`Patent Owners’ lead counsel, Scott K. Reed, is a registered
`
`practitioner (Reg. No. 32,433).
`
`2.
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`Ms. Schwarz is a partner at the law firm of Fitzpatrick, Cella, Harper
`
`& Scinto. (Exh. 2011 at ¶ 3.)
`
`3
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`
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`3.
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`Ms. Schwarz is an experienced patent litigation attorney. Ms.
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`Schwarz has been a patent litigation attorney for more than nine years.
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`(Id. at ¶ 4.) Ms. Schwarz has been litigating patent cases during this
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`entire time period and has been involved in numerous cases involving
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`patent validity and infringement in District Courts across the country
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`and the Federal Circuit. (Id.) She has extensive experience in bench
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`trials. (Id.)
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`4.
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`Ms. Schwarz is a member in good standing of the bar of the State of
`
`New York and the Province of Ontario. (Id. at ¶ 5.)
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`5.
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`Ms. Schwarz has never been suspended or disbarred from practice
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`before any court or administrative body. (Id.)
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`6.
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`No application of Ms. Schwarz for admission to practice before any
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`court or administrative body has ever been denied. (Id. at ¶ 6.)
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`7.
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`No sanctions or contempt citations have ever been imposed against
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`Ms. Schwarz by any court or administrative body. (Id. at ¶ 7.)
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`8.
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`Ms. Schwarz has read and will comply with the Office Patent Trial
`
`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. (Id. at ¶ 8.)
`
`4
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`
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`9.
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`Ms. Schwarz understands that she will be subject to the Office’s Rules
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`of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and
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`disciplinary jurisdiction under 37 C.F.R. § 11.19(a). (Id. at ¶ 9.)
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`10. Ms. Schwarz has applied to appear and was admitted pro hac vice
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`in three other proceedings before the Office in the last three years:
`
`IPR2013-00534, IPR2013-00537, IPR2016-00084. (Id. at ¶ 10.)
`
`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION OF
`MS. SCHWARZ 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 Owners’ lead counsel, Scott K. Reed, is a registered
`
`practitioner. Based on the facts set forth in this motion, as supported by Ms.
`
`Schwarz’s Declaration (Exh. 2011), there is good cause to admit Ms. Schwarz pro
`
`hac vice in this proceeding.
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`Ms. Schwarz has an established familiarity with the subject matter at issue in
`
`this proceeding. (Exh. 2011 at ¶¶ 11-13.) She has been involved consistently and
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`substantively in this matter since its inception in May 2016. (Id. at ¶ 11.) She
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`has read in detail and understands the Petition and the challenged patent, U.S.
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`Patent No. 6,667,016 (“the ’061 patent”). (Id.) She has also reviewed in detail all
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`the exhibits relied upon by Petitioners in this proceeding. (Id.) Additionally, Ms.
`5
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`
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`Schwarz has engaged in extensive strategic and substantive discussions regarding
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`this proceeding with Scott K. Reed, who is the lead counsel for Patent Owners;
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`Justin Oliver, who is designated as back-up counsel for Patent Owners; and Ha
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`Kung Wong, Melinda R. Roberts, and Una Fan, who are concurrently seeking pro
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`hac vice admission to appear in this proceeding. (Id. at ¶ 12.)
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`Thus, Ms. Schwarz has an established familiarity with the subject matter at
`
`issue in this proceeding as well as significant litigation experience and expertise.
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`For these reasons, good cause exists to admit Ms. Schwarz pro hac vice in this
`
`proceeding.
`
`February 2, 2017
`
`Respectfully submitted,
`
`/Scott K. Reed/
`Scott K. Reed (Reg. No. 32,433)
`FITZPATRICK, CELLA, HARPER & SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`Tel: (212) 218-2100
`
`Counsel for Patent Owners
`
`6
`
`
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`CERTIFICATE OF SERVICE
`
`I certify that a copy of the Patent Owners’ Motion For Pro Hac Vice
`
`Admission of Christina Schwarz Under 37 C.F.R. § 42.10 was served on February
`
`2, 2017 by causing it to be sent by email to counsel for Petitioners at the following
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`email address, who consented to electronic service at these addresses in its
`
`Petition:
`
`wmentlik.ipr@lernerdavid.com
`
`pkochanski@lernerdavid.com
`
`tvanbuskirk@lernerdavid.com
`
`nvaleyko@lernerdavid.com
`
`February 2, 2017
`
`Respectfully submitted,
`
`/Scott K. Reed/
`Scott K. Reed (Reg. No. 32,433)
`FITZPATRICK, CELLA, HARPER & SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`Tel: (212) 218-2100
`
`Counsel for Patent Owners
`
`7
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`