Paper No. ___
`Date Filed: April 3, 2017
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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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`WOCKHARDT BIO AG,
`Petitioner,
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`v.
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`JANSSEN ONCOLOGY, INC.,
`Patent Owner.
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`________________
`Case IPR2016-01582
`Patent 8,822,438
`________________
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`JANSSEN ONCOLOGY, INC.’S MOTION FOR PRO HAC VICE
`ADMISSION OF ALYSSA B. MONSEN
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`Date Filed: April 3, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`WOCKHARDT BIO AG,
`Petitioner,
`
`v.
`
`JANSSEN ONCOLOGY, INC.,
`Patent Owner.
`
`________________
`Case IPR2016-01582
`Patent 8,822,438
`________________
`
`
`JANSSEN ONCOLOGY, INC.’S MOTION FOR PRO HAC VICE
`ADMISSION OF ALYSSA B. MONSEN
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`IPR2016-01582
`Patent No. 8,822,438 B2
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`Pursuant to 37 C.F.R. § 42.10(c) and the Board’s August 16, 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 5), Patent Owner Janssen Oncology, Inc. (“Janssen”) respectfully
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`requests the pro hac vice admission of attorney Alyssa B. Monsen in this
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`proceeding. Janssen has conferred with counsel for Petitioner, and Petitioner does
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`not oppose this motion.
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`I.
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`Statement of Facts Showing Good Cause for the Board to Recognize
`Alyssa B. Monsen 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 Alyssa B.
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`Monsen in Support of Motion to Appear Pro Hac Vice (“Monsen Decl.,” Exhibit
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`2169), the facts here establish good cause for the Board to recognize Alyssa B.
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`Monsen pro hac vice in this proceeding.
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`2
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`IPR2016-01582
`Patent No. 8,822,438 B2
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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. Monsen is a member in good standing of the State Bar of New
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`York (Bar No. 5082326). See Exhibit 2169, ¶ 2.
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`3. Ms. Monsen has never been suspended or disbarred from practice
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`before any court or administrative body. See Exhibit 2169, ¶ 3.
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`4. None of Ms. Monsen’s applications for admission to practice before
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`any court or administrative body have ever been denied. See Exhibit 2169, ¶ 4.
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`5. Ms. Monsen 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 2169,
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`¶ 5.
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`6. Ms. Monsen 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 2169, ¶ 6.
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`7. Ms. Monsen 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 2169, ¶ 7.
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`8. Ms. Monsen has applied to appear pro hac vice before the Patent Trial
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`and Appeal Board once in the last three years in IPR2016-00286. See Exhibit
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`2169, ¶ 8. Ms. Monsen was granted pro hac vice admission by the Board in
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`3
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`IPR2016-01582
`Patent No. 8,822,438 B2
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`IPR2016-00286, which is directed to the same patent that is at issue in the instant
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`proceeding. See Exhibit 2169, ¶ 8.
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`9. Ms. Monsen has been a practicing attorney for almost 5 years and has
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`been involved in several patent cases. She is presently counsel for Janssen in a
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`pending patent litigation involving the patent under review in this proceeding, U.S.
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`Patent No. 8,822,438 (the “’438 patent”). This case is captioned BTG Int’l Ltd., et
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`al. v. Actavis Labs. FL, Inc., et al., C.A. No. 2:15-cv-05909-KM-JBC (D.N.J.). As
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`part of this litigation, Ms. Monsen has studied and analyzed the ’438 patent and
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`has become very familiar with its subject matter. She is also familiar with prior art
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`asserted in this IPR proceeding, conception and reduction to practice of the
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`inventions claimed in the ’438 patent, and claim construction of various claim
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`terms. See Exhibit 2169, ¶ 9.
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`In view of Ms. Monsen’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 district
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`court litigation mentioned above, Janssen has a significant need for Ms. Monsen’s
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`pro hac vice admission and her involvement in the continued prosecution of this
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`proceeding. In addition, pro hac vice admission of Ms. Monsen will enable
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`Janssen to avoid unnecessary expense and duplication of work between this
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`proceeding and the related district court litigations. See 77 Fed. Reg. 48,612,
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`48,661 (Aug. 14, 2012) (Office’s comment on final rule discussing concerns about
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`4
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`
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`IPR2016-01582
`Patent No. 8,822,438 B2
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`efficiency and costs where an entity has already engaged counsel for parallel
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`district court litigation).
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`II.
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`Conclusion
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`For the foregoing reasons, Janssen respectfully requests that the Board admit
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`Ms. Monsen pro hac vice in this proceeding.
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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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`Date: April 3, 2017
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`IPR2016-01582
`Patent No. 8,822,438 B2
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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 Alyssa B. Monsen was
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`served on counsel of record on April 3, 2017 by filing this document through the
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`End-to-End System, as well as delivering a copy via electronic mail to counsel of
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`record for the Petitioner at the following addresses:
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`Dennies Varughese - dvarughe-PTAB@skgf.com
`Deborah A. Sterling - dsterlin-PTAB@skgf.com
`Christopher M. Gallo - cgallo-PTAB@skgf.com
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`Respectfully submitted,
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`Date: April 3, 2017
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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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