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`Paper No. ___
`Filed: August 17, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________________________
`
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`MYLAN TECHNOLOGIES, INC.,
`Petitioner,
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`v.
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`MONOSOL RX, LLC,
`Patent Owner.
`
`_____________________________
`
`Case IPR2017-00200
`Patent 8,603,514 B2
`_____________________________
`
`PETITIONER MYLAN TECHNOLOGIES, INC.’S MOTION FOR PRO
`HAC VICE ADMISSION UNDER 37 C.F.R. § 42.10(c)
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`Pursuant to 37 C.F.R. § 42.10(c), Petitioner Mylan Technologies, Inc.
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`(“Petitioner”) respectfully requests that the Board recognize Tung-On Kong and
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`Elham F. Steiner as counsel pro hac vice in this proceeding. Petitioner seeks the
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`counsel of Tung-On Kong and Elham F. Steiner due to their experience in life
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`sciences-related patent matters and particularly due to their familiarity with the
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`substantive and technical issues involved in this proceeding. This Motion is
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`authorized by the Notice of Filing Date Accorded to Petition and Time for Filing
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`Patent Owner Preliminary Response (Paper No. 3).
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`I.
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`STATEMENT OF FACTS
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`Mr. Kong and Ms. Steiner are patent litigation attorneys with experience
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`representing clients in multiple jurisdictions, including United States District
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`Courts and the Federal Circuit Court of Appeals. Mr. Kong and Ms. Steiner have
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`experience in all stages of litigation, from preliminary injunction through trial and
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`appeal, and across a wide range of technologies, including pharmaceutical drugs,
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`formulations, and dosages. Petitioner provides Mr. Kong and Ms. Steiner’s
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`respective pertinent biographical background appended hereto in further support of
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`this Motion.
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`Mr. Kong and Ms. Steiner also have particular experience and familiarity
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`with the substantive and technical issues involved in this inter partes review
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`proceeding. In a related matter involving the U.S. Patent No. 8,603,514, Mr. Kong
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`1
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`and Ms. Steiner represent Petitioner in consolidated litigation currently pending in
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`the District of Delaware. See Indivior, Inc. et al. v. Mylan Technologies Inc. et al.,
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`No. 15-cv-1016-RGA. In addition, Mr. Kong and Ms. Steiner have been involved
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`in numerous patent cases in United States District Courts involving pharmaceutical
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`patents.
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`Mr. Kong and Ms. Steiner have also performed a detailed review of U.S.
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`Patent No. 8,603,514, the parties’ submissions in the present Inter Partes Review
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`proceeding, and the Board’s Decision instituting Inter Partes Reviw of U.S. Patent
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`No. 8,603,514. Additionally, Mr. Kong and Ms. Steiner have served essential roles
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`in this Inter Partes Review proceeding, including working with the present Lead
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`Counsel to prepare Petitioner’s Petition. Mr. Kong and Ms. Steiner thus have a
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`detailed understanding of U.S. Patent No. 8,603,514 and the substantive and
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`technical issues involved in this proceeding.
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`Through Mr. Kong and Ms. Steiner’s representation in these and related
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`matters, Petitioner has developed a particular relationship with Mr. Kong and Ms.
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`Steiner, which Petitioner desires to continue with Mr. Kong and Ms. Steiner for the
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`purpose of this IPR proceeding. Accordingly, Petitioner respectfully requests that
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`the Board grant this Motion.
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`2
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`II. DECLARATIONS OF INDIVIDUALS SEEKING TO APPEAR
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`This Motion for Pro Hac Vice Admission is accompanied by a Declaration
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`of Tung-On Kong (Ex. 1028) and Declaration of Elham F. Steiner (Ex. 1029). In
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`their declarations, Mr. Kong and Ms. Steiner attest to each of the listed items
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`required by the Order Authorizing Motion for Pro Hac Vice Admission in Unified
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`Patents Inc. v. Parallel Iron, LLC, IPR2013-00639, Paper 7.
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`III.
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`CONCLUSION
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`For the foregoing reasons, Petitioner respectfully requests that the Board
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`admit Tung-On Kong and Elham F. Steiner as counsel Pro Hac Vice in this
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`proceeding.
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`Dated: August 17, 2017
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`Respectfully submitted,
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`/ Steven W. Parmelee /
` Steven W. Parmelee
` Reg. No. 31,990
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`3
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`Exhibit No
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`List of Exhibits
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`Description
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`
`
`1001
`
`1002
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`1003
`
`1004
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`1005
`
`1006
`
`1007
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`1008
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`1009
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`1010
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`1011
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`
`
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`U.S. Patent No. 8,603,514 to Yang et al.
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`Declaration of Graham Buckton, Ph.D.
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`Curriculum Vitae of Graham Buckton, Ph.D.
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`File history of U.S. Patent No. 8,603,514.
`
`Ilango et al., In-Vitro studies on Buccal strips of Glibenclamide
`using Chitosan, 59 Indian J. Pharm. Sci. 232-235 (1997).
`
`WO2000/42992 to Chen et al.
`
`Declaration of B. Arlie Bogue, Dated: March 13, 2013;
`Reexamination Control No. 95/002,170.
`
`Frankman et al., Clinical evaluation of C-Film, a vaginal
`contraceptive, 3 J. Int. Med. Res. 292-96 (1975).
`
`U.S. Patent No. 5,595,980 to Brode et al.
`
`Roddy et al., A controlled trial of nonoxynol 9 film to reduce
`male-to-female transmission of sexually transmitted
`diseases, 339 N. Engl. J. Med. 504-10 (1998).
`
`
`
`U.S. Patent No. 4,569,837 to Suzuki et al.
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`4
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`
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`Exhibit No
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`Description
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`
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`1012
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`1013
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`1014
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`1015
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`1016
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`1017
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`1018
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`1019
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`1020
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`1021
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`1022
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`1023
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`
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`U.S. Patent No. 6,159,498 to Tapolsky et al.
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`Yamamura et al., Oral mucosal adhesive film containing local
`anesthetics: in vitro and clinical evaluation. 43 J. Biomed.
`Mater. Res. 313-317 (1998).
`
`U.S. Patent No. 4,713,243 to Schiraldi et al.
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`U.S. Patent No. 4,568,535 to Loesche et al.
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`U.S. Patent No. 3,797,494 to Zaffaroni et al.
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`U.S. Patent No. 4,249,531 to Heller et al.
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`U.S. Patent No. 5,506,049 to Swei et al.
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`U.S. Patent No. 7,067,116 to Bess et al.
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`U.S. Patent No. 4,849,246 to Schmidt et al.
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`European Patent No. 0241178 to Higashi et al.
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`The United States Pharmacopeia: 20th Revision and the National
`Formulary, Fifteenth Edition. Rockville, Md: United States
`Pharmacopeial Convention, Inc., 1979.
`Reckitt Benckiser Pharmaceuticals Inc. v. Watson Laboratories,
`Inc. and Reckitt Benckiser Pharmaceuticals Inc. v. Par
`Pharmaceutical, Inc., C.A. No. 13-1674 and C.A. No. 14-
`422, District of Delaware, D.I. 446.
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`5
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`Exhibit No
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`1024
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`1025
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`1026
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`1027
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`1028
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`1029
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`Description
`Reckitt Benckiser Pharmaceuticals Inc. v. Watson Laboratories,
`Inc. and Reckitt Benckiser Pharmaceuticals Inc. v. Par
`Pharmaceutical, Inc., C.A. No. 13-1674 and C.A. No. 14-
`422, District of Delaware, D.I. 156.
`Reckitt Benckiser Pharmaceuticals Inc. v Teva Pharmaceuticals
`USA, Inc. and Reckitt Benckiser Pharmaceuticals Inc. v. Par
`Pharmaceutical, Inc., C.A. No. 14-1451 and C.A. No. 14-
`1573, District of Delaware, D.I. 175.
`
`Complaint; Indivior Inc. et al v. Mylan Technologies, Inc. et al.,
`No. 1:15-CV-00209, Northern District of West Virginia.
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`Complaint; Indivior Inc. et al v. Mylan Technologies, Inc. et al.,
`No. 1:15-cv-01016, District of Delaware.
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`Declaration of Tung-On Kong in support of Petitioner’s Motion
`for Pro Hac Vice Admission
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`Declaration of Elham F. Steiner in support of Petitioner’s Motion
`for Pro Hac Vice Admission
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`6
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`CERTIFICATE OF SERVICE
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`
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`This is to certify that I caused to be served true and correct copies of the
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`foregoing Petitioner Mylan Technologies Inc.’s Motion for Pro Hac Vice
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`Admission Under 37 C.F.R. § 42.10(c) and corresponding Exhibits 1028 and 1029,
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`on this 17th day of August, 2017, on the Patent Owner at the correspondence
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`address of the Patent Owner as follows:
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`Harold Fox
`STEPTOE & JOHNSON LLP
`1330 Connecticut Avenue, NW
`Washington, DC 20036-1795
`Email: hfox@steptoe.com
`Email: 514MIPR@steptoe.com
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`
`John L. Abramic
`STEPTOE & JOHNSON LLP
`115 South LaSalle Street, Suite 3100
`Chicago, IL 60603
`Email: jabramic@steptoe.com
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`Charanjit Brahma
`TROUTMAN SANDERS
`580 California Street, Suite 1100
`San Francisco, CA 94104
`Email:
`charanjit.brahma@troutmansanders.com
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`Dustin B. Weeks
`TROUTMAN SANDERS
`600 Peachtree Street, NE, Suite 5200
`Atlanta, GA 30308
`Email:
`dustin.weeks@troutmansanders.com
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`Dated: August 17, 2017
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`Respectfully submitted,
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`/ Steven W. Parmelee /
` Steven W. Parmelee, Lead Counsel
` Reg. No. 31,990
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`7
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