UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`MYLAN PHARMACEUTICALS INC., TEVA PHARMACEUTICALS USA,
`INC., and AKORN INC., 1
`Petitioners,
`
`v.
`
`ALLERGAN, INC.,
`Patent Owner.
`_____________
`
`Case IPR2016-01127 (8,685,930 B2)
`Case IPR2016-01128 (8,629,111 B2)
`Case IPR2016-01129 (8,642,556 B2)
`Case IPR2016-01130 (8,633,162 B2)
`Case IPR2016-01131 (8,648,048 B2)
`Case IPR2016-01132 (9,248,191 B2)
`_____________
`
`PATENT OWNER SAINT REGIS MOHAWK TRIBE’S
`MOTION FOR PRO HAC VICE ADMISSION OF
`MARSHA K. SCHMIDT UNDER 37 C.F.R. § 42.10(c)
`
`
`
`
`
`
` 1
`
` Cases IPR2017-00576 and IPR2017-00594, IPR2017-00578 and IPR2017- 00596,
`IPR2017-00579 and IPR2017-00598, IPR2017-00583 and IPR2017- 00599,
`IPR2017-00585 and IPR2017-00600, and IPR2017-00586 and IPR2017-00601, have
`respectively been joined with the captioned proceedings. The word-for-word
`identical paper is filed in each proceeding identified in the caption pursuant to the
`Board’s Scheduling Order (Paper 10).
`
`1
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`MYLAN PHARMACEUTICALS INC., TEVA PHARMACEUTICALS USA,
`INC., and AKORN INC., 1
`Petitioners,
`
`v.
`
`ALLERGAN, INC.,
`Patent Owner.
`_____________
`
`Case IPR2016-01127 (8,685,930 B2)
`Case IPR2016-01128 (8,629,111 B2)
`Case IPR2016-01129 (8,642,556 B2)
`Case IPR2016-01130 (8,633,162 B2)
`Case IPR2016-01131 (8,648,048 B2)
`Case IPR2016-01132 (9,248,191 B2)
`_____________
`
`PATENT OWNER SAINT REGIS MOHAWK TRIBE’S
`MOTION FOR PRO HAC VICE ADMISSION OF
`MARSHA K. SCHMIDT UNDER 37 C.F.R. § 42.10(c)
`
`
`
`
`
`
` 1
`
` Cases IPR2017-00576 and IPR2017-00594, IPR2017-00578 and IPR2017- 00596,
`IPR2017-00579 and IPR2017-00598, IPR2017-00583 and IPR2017- 00599,
`IPR2017-00585 and IPR2017-00600, and IPR2017-00586 and IPR2017-00601, have
`respectively been joined with the captioned proceedings. The word-for-word
`identical paper is filed in each proceeding identified in the caption pursuant to the
`Board’s Scheduling Order (Paper 10).
`
`1
`
`
`
`
`I. RELIEF REQUESTED
`Under 37 C.F.R. § 42.10(c), Patent Owner, Saint Regis Mohawk Tribe,
`
`respectfully request the pro hac vice admission of Marsha K. Schmidt in these
`
`proceedings.
`
`II. GOVERNING LAWS, RULES, AND PRECEDENT
`Section 42.10(c) 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.
`As stated in the "Order Authorizing Motion for Pro Hac Vice Admission"
`
`entered in Case IPR2013-00010 (MPT) (Paper 6) ("Motorola Order"), any motion
`
`for pro hac vice admission under 37 C.F.R. § 42.10(c) must be filed “no sooner
`
`than (21) days after service of the petition.
`
`III. STATEMENT OF FACTS
`Based on the following facts, and supported by the Declaration of Marsha K.
`
`Schmidt submitted herewith, Saint Regis Mohawk Tribe requests the pro hac vice
`
`admission of Marsha K. Schmidt in this proceeding.
`
`2
`
`
`
`1. Patent Owner Saint Regis Mohawk Tribe’s lead counsel, Alfonso Chan, is a
`
`registered practitioner (Reg. No. 45,964).
`
`2. In addition, Allergan, Inc.’s lead counsel, Dorothy Whelan, is a registered
`
`practitioner (Reg. No. 33,814).
`
`3. Marsha Schmidt is an attorney with expertise in Indian law, practicing in
`
`Washington, D.C. Declaration of M. Schmidt, ¶ 3.
`
`4. Ms. Schmidt is an experienced attorney who has been litigating Indian law
`
`cases for over 30 years. Declaration of M. Schmidt, ¶ 3
`
`5. Ms. Schmidt is an expert in tribal sovereign immunity which is the subject
`
`matter at issue in this proceeding. Ms. Schmidt has represented the Saint Regis
`
`Mohawk Tribe and many other tribes in the course of her career on Indian law issues
`
`including sovereign immunity. Id. at ¶¶ 11-12.
`
`6. Ms. Schmidt is a member in good standing of the District of Columbia Bar. Id.
`
`at ¶ 4.
`
`7. Ms. Schmidt has never been suspended or disbarred from practice before any
`
`court or administrative body. Id. at ¶ 5.
`
`8. No application of Ms. Schmidt for admission to practice before any court or
`
`administrative body has ever been denied. Id. at ¶ 6.
`
`9. No sanctions or contempt citations have ever been imposed against Ms.
`
`Schmidt by any court or administrative body. Id. at ¶ 7.
`
`3
`
`
`
`10. Ms. Schmidt has read and will comply with the Office Patent Trial Practice
`
`Guide and the Board’s Rules of Practice for Trials set forth in 37 C.F.R. § 42. Id. at ¶
`
`8.
`
`11. Ms. Schmidt understands that she will be subject to the USPTO Code of
`
`Professional Responsibility set forth in 37 C.F.R. §§ 10.20 et seq. and disciplinary
`
`jurisdiction under 37 C.F.R. § 11.19(a). Id. at ¶ 9.
`
`12. Ms. Schmidt has not applied to appear pro hac vice in any other proceedings
`
`before the Office in the last three years. Id. at ¶ 10.
`
`13. This motion was filed more than 21 days after service of the Petition in this
`
`proceeding.
`
`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION OF MS
`SCHMIDT 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, Alfonso Chan, is a registered practitioner.
`
`Based on the facts contained herein, as supported by Ms. Schmidt’s Declaration,
`
`good cause exists to admit Ms. Schmidt pro hac vice in this proceeding.
`
`Ms. Schmidt has unique knowledge of the law on tribal sovereign immunity.
`
`Ms. Schmidt has represented the Patent Owner Saint Regis Mohawk Tribe for over
`
`20 years in various proceedings and the Patent Owner, Saint Regis Mohawk Tribe,
`
`4
`
`
`
`has a substantial need for Mr. Evans’s pro hac vice admission and her involvement
`
`in the briefing and oral arguments concerning that issue.
`
`V. CONCLUSION
`For the foregoing reasons as well as the reasons contained in the attached
`
`affidavit, Patent Owner Saint Regis Mohawk Tribe respectfully requests admission
`
`of Marsha K. Schmidt as counsel pro hac vice in this proceeding.
`
`Dated: September 22, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
` /Alfonso Chan/
`Alfonso Chan, Reg. No. 45,964
`achan@shorechan.com
`
`
`SHORE CHAN DEPUMPO LLP
`901 Main Street, Suite 3300
`Dallas, TX 75201
`214-593-9110
`
`5
`
`
`
`CERTIFICATE OF SERVICE
`
`This is to certify that I caused to be served true and correct copies of the Saint
`
`Regis Mohawk Tribe’s Motion For Pro Hac Vice Admission of Marsha K.
`
`Schmidt Under 37 C.F.R. § 42.10(c) on September 22, 2017 to the Petitioner at
`
`the correspondence address of the Petitioners as follows:
`
`Steven W. Parmelee
`Michael T. Rosato
`Jad A. Mills
`Wendy L. Devine
`Douglas H. Carsten
`Richard Torczon
`WILSON SONSINI GOODRICH & ROSATI
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104-7036
`Email: sparmelee@wsgr.com
`Email: mrosato@wsgr.com
`Email: jmills@wsgr.com
`Email: wdevine@wsgr.com
`Email: dcarsten@wsgr.com
`Email: rtorczon@wsgr.com
`
`Brandon M. White
`Perkins Coie LLP
`700 13th Street NW
`Washington, DC 20005
`Email: bmwhite@perkinscoie.com
`Attorneys for Mylan Pharmaceuticals Inc.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`6
`
`Michael Dzwonczyk
`Azadeh Kokabi
`Travis Ribar
`Sheila Blackston
`SUGHRUE MION, PLLC
`2100 Pennsylvania Ave., NW
`Washington, DC 20037
`Email: mdzwonczyk@sughrue.com
`Email: akokabi@sughrue.com
`Email: tribar@sughrue.com
`Attorneys for Akorn Inc.
`
`Gary Speier
`Mark Schuman
`CARLSON, CASPERS VANDERBURGE,
`LINDQUIST & SCHUMAN, P.A.
`225 South Sixth Street, Suite 4200
`Minneapolis, MN 55402
`Email: gspeier@carlsoncaspers.com
`Email:
`mschuman@carlsoncaspers.com
`Attorneys for Teva Pharmaceuticals
`USA, Inc.
`
`
`
` /Alfonso Chan/
`Alfonso Chan, Reg. No. 45,964
`Phone: 214-593-9110
`
`
`
`
`
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