Paper No. ___
`Filed: August 23, 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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`ACRUX DDS PTY LTD. & ACRUX LIMITED
`Petitioners,
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`v.
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`KAKEN PHARMACEUTICAL CO., LTD. and VALEANT
`PHARMACEUTICALS INTERNATIONAL, INC.,
`Patent Owner and Licensee
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`
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`Case: IPR2017-00190
`U.S. Patent No. 7,214,506
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`
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`PETITIONERS’ UNOPPOSED MOTION
`FOR PRO HAC VICE ADMISSION
`OF LISA N. PHILLIPS UNDER 37 C.F.R. § 42.10(c)
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`Filed: August 23, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`ACRUX DDS PTY LTD. & ACRUX LIMITED
`Petitioners,
`
`v.
`
`KAKEN PHARMACEUTICAL CO., LTD. and VALEANT
`PHARMACEUTICALS INTERNATIONAL, INC.,
`Patent Owner and Licensee
`
`
`
`Case: IPR2017-00190
`U.S. Patent No. 7,214,506
`
`
`
`
`PETITIONERS’ UNOPPOSED MOTION
`FOR PRO HAC VICE ADMISSION
`OF LISA N. PHILLIPS UNDER 37 C.F.R. § 42.10(c)
`
`
`
`
`
`
`
`
`
`Case IPR2017-00190
`Patent No. 7,214,506
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`I.
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`STATEMENT OF PRECISE RELIEF REQUESTED
`Pursuant to 37 C.F.R. § 42.10(c) authorizing motions for pro hac vice
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`admission of back-up counsel, Petitioners Acrux DDS Pty Ltd. and Acrux Limited
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`request that the Patent Trial and Appeal Board (the “Board”) admit Lisa N.
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`Phillips, pro hac vice in this proceeding, IPR2017-00190.
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`II. STATEMENT OF FACTS SHOWING GOOD CAUSE FOR THE
`BOARD TO RECOGNIZE BACK-UP COUNSEL PRO HAC VICE
`DURING THE PROCEEDING
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`In accordance with 37 C.F.R. § 42.10(c), the Board may recognize counsel
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`pro hac vice subject to the condition that lead counsel be a registered practitioner
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`and to any other conditions that the Board may impose. Section 42.10(c) provides,
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`inter alia, that “where the lead counsel is a registered practitioner, a motion to
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`appear pro hac vice by counsel who is not a registered practitioner may be granted
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`upon showing that counsel is an experienced litigating attorney and has an
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`established familiarity with the subject matter at issue in the proceeding.” 37
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`C.F.R. § 42.10(c). See also, Unified Patents v. Parallel Iron, IPR2013-00639,
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`Paper 7 (Oct. 15, 2013). The following facts establish good cause for the Board to
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`recognize Lisa N. Phillips, pro hac vice in this proceeding:
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`1. As a Partner with Rothwell, Figg, Ernst & Manbeck, P.C., Ms.
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`Phillips is an experienced litigator with extensive experience in pharmaceutical
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`patent litigation and with issues related to pharmaceutical matters. Phillips Decl.,
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`
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`2
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`Case IPR2017-00190
`Patent No. 7,214,506
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`¶¶ 1, 10. Ms. Phillips is a member in good standing of the Pennsylvania and
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`District of Columbia Bars. Id. at ¶¶ 2-3. Ms. Phillips has not applied to appear pro
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`hac vice before any other Board or United States Patent and Trademark Office
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`(“USPTO”) proceeding over the last three years. Id. at ¶6.
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`2. Ms. Phillips has become familiar with the issues associated with U.S.
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`Patent No. 7,214,506 (“the ’506 patent”) in this proceeding. Phillips Decl., ¶ 11.
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`She has reviewed the patent, its prosecution history, and the prior art, including the
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`asserted references. Id. In addition, she worked closely with Petitioners’ Counsel
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`of Record to draft and finalize the Petition and assisted with the preparation of Dr.
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`Walters’ expert declaration in support of the Petition. Id. She has also reviewed
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`and is familiar with the other documents filed in this proceeding. Id. She has
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`knowledge of the technical issues that are relevant to this proceeding. Id.
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`3.
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`Petitioners’ lead counsel, Mr. E. Anthony Figg, is a registered
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`practitioner and Ms. Phillips is an experienced litigation attorney having
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`established familiarity with the subject matter at issue in this proceeding. Phillips
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`Decl., ¶¶ 10-11. Petitioners wish to apply Ms. Phillips’ experience with
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`pharmaceutical matters, generally, and her knowledge of the technical issues
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`associated with the ’506 patent, specifically, in this proceeding. Therefore,
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`Petitioners respectfully submit there is good cause for the Board to recognize Ms.
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`Phillips as counsel pro hac vice during this proceeding.
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`3
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`Case IPR2017-00190
`Patent No. 7,214,506
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`4. Ms. Phillips has read and will comply with the Office Patent Trial
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`Practice Guide and the Board’s Rules of Practice for Trials, as set forth in Part 42
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`of 37 C.F.R. Phillips Decl., ¶ 8. Ms. Phillips agrees to be subject to the USPTO
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`Rules 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) and to be subject to the
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`USPTO Rules of Professional Conduct as set forth in Changes to Representation of
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`Others Before the United States Patent and Trademark Office; Final Rule, 78 Fed.
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`Reg. 20180 (Apr. 3, 2013) (effective May 3, 2013). Id. at ¶ 9.
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`5.
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`This Motion for Pro Hac Vice Admission is supported by the attached
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`Declaration of Ms. Phillips.
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`6. Counsel for Patent Owner does not oppose Ms. Phillips appearing pro
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`hac vice during this proceeding.
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`III. CONCLUSION
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`For the foregoing reasons, Petitioners respectfully request the Board admit
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`Lisa N. Phillips as pro hac vice counsel in this proceeding.
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`
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`Date: August 23, 2017
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`Respectfully submitted,
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`By: /Aydin H. Harston/
`E. Anthony Figg, Reg. No. 27,195
`Aydin H. Harston, Reg. No. 65,249
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`607 14th St., N.W., Suite 800
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`4
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`
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`Case IPR2017-00190
`Patent No. 7,214,506
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`Washington, DC 20005
`Phone: 202-783-6040
`Fax: 202-783-6031
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`Counsel for Petitioners
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`5
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`Case IPR2017-00190
`Patent No. 7,214,506
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a copy of the foregoing UNOPPOSED
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`MOTION FOR PRO HAC VICE ADMISSION OF LISA N. PHILLIPS
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`UNDER 37 C.F.R. § 42.10(c) was served electronically via email on August 23,
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`2017, in its entirety on the following:
`
`John D. Livingstone
`john.livingstone@finnegan.com
`KakenIPR@finnegan.com
`Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.
`271 17th Street, NW, Suite 1400
`Atlanta, GA 30363-6209
`
`Naoki Yoshida
`naoki.yoshida@finnegan.com
`Anthony Hartman
`anthony.hartmann@finnegan.com
`Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.
`901 New York Ave., NW
`Washington, DC 20001-4413
`
`Toan P. Vo
`toan.vo@bausch.com
`Valeant Pharmaceuticals North America LLC
`1400 N. Goodman Street
`Rochester, New York 14609
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`By: /Aydin H. Harston/
`E. Anthony Figg, Reg. No. 27,195
`Aydin H. Harston, Reg. No. 65,249
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`607 14th St., N.W., Suite 800
`Washington, DC 20005
`Phone: 202-783-6040 Fax: 202-783-6031
`Counsel for Petitioners
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`6
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