Paper No. ___
`Date Filed: Oct. 12, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`________________
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`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`v.
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`JANSSEN ONCOLOGY, INC.,
`Patent Owner.
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`________________
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`Case IPR2016-01332
`Patent 8,822,438
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`________________
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`JANSSEN ONCOLOGY, INC.’S MOTION FOR PRO HAC VICE
`ADMISSION OF BINDU DONOVAN
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`Date Filed: Oct. 12, 2016
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`v.
`
`JANSSEN ONCOLOGY, INC.,
`Patent Owner.
`
`________________
`
`Case IPR2016-01332
`Patent 8,822,438
`
`________________
`
`
`JANSSEN ONCOLOGY, INC.’S MOTION FOR PRO HAC VICE
`ADMISSION OF BINDU DONOVAN
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`IPR2016-01332
`Patent No. 8,822,438
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`Pursuant to 37 C.F.R. § 42.10(c) and the Board’s July 12, 2016 Notice of
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`Filing Date Accorded to Petition and Time for Filing Patent Owner Preliminary
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`Response (Paper 4), Patent Owner Janssen Oncology, Inc. (“Janssen”) respectfully
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`requests the pro hac vice admission of attorney Bindu Donovan in this proceeding.
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`Patent Owner has conferred with counsel for Mylan Pharmaceuticals Inc.
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`(“Petitioner”), and Petitioner does not oppose this motion.
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`I.
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`Statement of Facts Showing Good Cause for the Board to Recognize
`Bindu Donovan Pro Hac Vice in this Proceeding
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`The Board may recognize counsel pro hac vice during an inter partes review
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`proceeding upon a showing of good cause, “subject to the condition that lead
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`counsel be a registered practitioner and to any other conditions as the Board may
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`impose.” 37 C.F.R. § 42.10(c). For example, “where the lead counsel is a
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`registered practitioner, a motion to appear pro hac vice by counsel who is not a
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`registered practitioner may be granted upon showing that counsel is an experienced
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`litigating attorney and has an established familiarity with the subject matter at issue
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`in the proceeding.” Id.
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`As set forth below and in the accompanying Declaration of Bindu Donovan
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`in Support of Motion to Appear Pro Hac Vice (“Donovan Decl.,” Exhibit 2003),
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`the facts here establish good cause for the Board to recognize Bindu Donovan pro
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`hac vice in this proceeding.
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`2
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`
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`IPR2016-01332
`Patent No. 8,822,438
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`1. Lead Counsel, Dianne Elderkin, is a registered practitioner (Reg. No.
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`28,598).
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`2. Ms. Donovan is a member in good standing of the State Bar of New
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`York (Bar No. 2977981). See Exhibit 2003, ¶ 2.
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`3. Ms. Donovan has never been suspended or disbarred from practice
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`before any court or administrative body. See Exhibit 2003, ¶ 3.
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`4. None of Ms. Donovan’s applications for admission to practice before
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`any court or administrative body have ever been denied. See Exhibit 2003, ¶ 4.
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`5. Ms. Donovan has not been sanctioned nor has she had a contempt
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`citation imposed on her by any court or administrative body. See Exhibit 2003, ¶
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`5.
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`6. Ms. Donovan has declared that she has read and will comply with the
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`Office Patent Trial Practice Guide and the Board’s Rules of Practice for Trial set
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`forth in part 42 of 37 C.F.R. See Exhibit 2003, ¶ 6.
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`7. Ms. Donovan has acknowledged and agrees that she will be subject to
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`the USPTO Rules of Professional Conduct set forth in 37 C.F.R. § 11.101 et. seq.
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`and disciplinary jurisdiction under 37 C.F.R. § 11.19(a). See Exhibit 2003, ¶ 7.
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`8. Ms. Donovan has applied to appear pro hac vice before the Patent
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`Trial and Appeal Board once in the last three years. Ms. Donovan was granted pro
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`3
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`IPR2016-01332
`Patent No. 8,822,438
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`hac vice admission by the Board in IPR2016-00286, which is directed to the same
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`patent that is at issue in the instant proceeding. See Exhibit 2003, ¶ 8.
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`9. Ms. Donovan has been a practicing attorney for over 15 years and has
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`been involved in numerous patent cases. She is presently counsel for Janssen in
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`pending patent litigations involving the patent under review in this proceeding,
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`U.S. Patent No. 8,822,438 (the “’438 patent”). These cases are captioned BTG
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`Int’l Ltd., et al. v. Actavis Labs. FL, Inc., et al., C.A. No. 2:15-cv-05909-KM-JBC
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`(D.N.J.), Janssen Biotech, Inc., et al. v. Mylan Pharm. Inc., et al., C.A. No. 1:15-
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`cv-00130-IMK (N.D. W. Va.), BTG Int’l Ltd., et al. v. Amerigen Pharms., Inc., et
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`al., C.A. No. 2:16-cv-02449-LM-JBC (D.N.J.) (consolidated with C.A. No. 2:15-
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`cv-05909-KM-JBC (D.N.J.)), and BTG Int’l Ltd., et al. v. Glenmark Pharms., Inc.,
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`USA et al., C.A. No. 2:16-cv-03743-KM-JBC (D.N.J.). As part of these litigations,
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`Ms. Donovan has studied and analyzed the ’438 patent and has become very
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`familiar with its subject matter. She is also familiar with prior art asserted in this
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`IPR proceeding, conception and reduction to practice of the inventions claimed in
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`the ’438 patent, and claim construction of various claim terms. See Exhibit 2003, ¶
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`9.
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`In view of Ms. Donovan’s knowledge of the subject matter at issue in this
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`proceeding, and in view of the interrelatedness of this proceeding and the four
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`district court litigations mentioned above, Janssen has a substantial need for Ms.
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`4
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`IPR2016-01332
`Patent No. 8,822,438
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`Donovan’s pro hac vice admission and her involvement in the continued
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`prosecution of this proceeding. In addition, pro hac vice admission of Ms.
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`Donovan will enable Janssen to avoid unnecessary expense and duplication of
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`work between this proceeding and the related district court litigations. See 77 Fed.
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`Reg. 48,612, 48,661 (Aug. 14, 2012) (Office’s comment on final rule discussing
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`concerns about efficiency and costs where an entity has already engaged counsel
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`for parallel district court litigation).
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`II.
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`Conclusion
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`For the foregoing reasons, Patent Owner Janssen respectfully requests that
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`the Board admit Bindu Donovan pro hac vice in this proceeding.
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`Date: October 12, 2016
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`Respectfully submitted,
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`/Dianne B. Elderkin/
`Dianne B. Elderkin
`Registration No. 28,598
`Counsel for Patent Owner
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`5
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`IPR2016-01332
`Patent No. 8,822,438
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Janssen
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`Oncology, Inc.’s Motion for Pro Hac Vice Admission of Bindu Donovan was
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`served on counsel of record on October 12, 2016 by filing this document through
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`the End-to-End System, as well as delivering a copy via electronic mail to counsel
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`of record for the Petitioner at the following addresses:
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`Brandon M. White – bmwhite@perkinscoie.com
`Bryan D. Beel – bbeel@perkinscoie.com
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`Respectfully submitted,
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`By: /Dianne B. Elderkin/
`Dianne B. Elderkin
`Registration No. 28,598
`Counsel for Patent Owner
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`6
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`
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`Date: Oct. 12, 2016
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