`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`ALKERMES PHARMA IRELAND LTD.
`and ALKERMES, INC.,
`Petitioners,
`
`v.
`
`OTSUKA PHARMACEUTICAL CO., LTD.,
`Patent Owner
`
`______________
`
`Case: IPR2017-00287
`Patent No. 9,125,939 B2
`______________
`
`PETITIONERS’ MOTION FOR PRO HAC VICE ADMISSION OF
`NICHOLAS K. MITROKOSTAS UNDER 37 C.F.R. § 42.10(c)
`
`
`
`
`
`
`
`
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`Pursuant to the Board’s “Notice of Filing Date Accorded to Petition and
`
`Time for Filing Patent Owner Preliminary Response,” dated November 29, 2016
`
`(Paper No. 4), authorizing the parties to file motions for pro hac vice admission
`
`under 37 C.F.R. § 42.10(c), Petitioners Alkermes Pharma Ireland Ltd. and
`
`Alkermes, Inc. (collectively, “Petitioners”) respectfully request that the Board
`
`allow Nicholas K. Mitrokostas to appear pro hac vice on their behalf in this
`
`proceeding.
`
`II. REASONS THE REQUESTED RELIEF SHOULD BE GRANTED
`As set forth in the Statement of Material Facts below, and as required by 37
`
`C.F.R. § 42.10(c), Petitioners have demonstrated good cause to admit Mr.
`
`Mitrokostas pro hac vice in this proceeding. In particular, Petitioners’ lead counsel
`
`is a registered practitioner, and Mr. Mitrokostas is an experienced litigating
`
`attorney having an established familiarity with the subject matter at issue in this
`
`proceeding.
`
`Furthermore, this motion is being filed more than twenty one days after
`
`service of the petition, includes a statement of facts showing good cause for the
`
`Board to recognize Mr. Mitrokostas pro hac vice, and is being filed concurrently
`
`with Exhibit 1077, the Declaration of Nicholas K. Mitrokostas in Support of
`
`Petitioners’ Motion for Pro Hac Vice Admission (“Mitrokostas Decl.”), all in
`
`
`
`
`1
`
`
`
`
`
`accordance with the “Order Authorizing Motion for Pro Hac Vice Admission” in
`
`Unified Patents, Inc. v. Parallel Iron, LLC, IPR2013-00639, Paper 7 at 3 (P.T.A.B.
`
`Oct. 15, 2013).
`
`III. STATEMENT OF MATERIAL FACTS
`37 C.F.R. § 42.10(c) provides that “[t]he 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.”
`
`Theresa C. Kavanaugh, lead counsel for Petitioners in this proceeding, is a
`
`registered practitioner holding Registration No. 50,356.
`
`As set forth in the Mitrokostas Decl., Mr. Mitrokostas is an experienced
`
`litigating attorney. Specifically, Mr. Mitrokostas has over a decade of experience
`
`representing clients in patent litigations, primarily in the chemical and
`
`pharmaceutical arts, in United States District Courts and the Court of Appeals for
`
`the Federal Circuit. (Mitrokostas Decl., ¶¶ 2, 3, 5). Mr. Mitrokostas has also been
`
`
`
`
`2
`
`
`
`
`
`admitted pro hac vice by the Office in five prior pharmaceutical matters.
`
`(Mitrokostas Decl., ¶ 4).
`
`Mr. Mitrokostas also has an established familiarity with the precise subject
`
`matter at issue in this proceeding. Mr. Mitrokostas has developed a strong
`
`familiarity with the ’939 patent, its prosecution history, the general subject matter
`
`to which the ’939 patent is directed, and the prior art references relied upon by
`
`Petitioner in support of its invalidity grounds in this proceeding. (Mitrokostas
`
`Decl., ¶ 6). Additionally, Mr. Mitrokostas has thoroughly reviewed the Petition
`
`and accompanying Exhibits submitted in this proceeding. (Id.).
`
`Mr. Mitrokostas has attested to the each of the requirements set forth in
`
`paragraph 2(b)(i)-(viii) of the “Order Authorizing Motion for Pro Hac Vice
`
`Admission” in Case IPR2013-00639, Paper 7 at 3. (Mitrokostas Decl., ¶¶ 3-11).
`
`IV. CONCLUSION
`In view of the foregoing, Petitioners respectfully submit that the
`
`requirements of 37 C.F.R. § 42.10(c) have been satisfied, and request an Order
`
`permitting Nicholas K. Mitrokostas to appear pro hac vice on their behalf in this
`
`proceeding.
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`
`
`
`
`Dated: January 31, 2017
`
`Respectfully submitted,
`
`/Theresa C. Kavanaugh/
`Theresa C. Kavanaugh (Reg. No. 50,356)
`Goodwin Procter LLP
`100 Northern Avenue
`Boston, MA 02210
`Tel: 617-570-1000
`Fax: 617-523-1231
`tkavanaugh@goodwinlaw.com
`
`Counsel for Petitioners Alkermes Pharma
`Ireland Ltd. and Alkermes, Inc.
`
`
`
`
`4
`
`
`
`CERTIFICATION OF SERVICE
`
`The undersigned hereby certifies that “PETITIONERS’ MOTION FOR
`
`PRO HAC VICE ADMISSION OF NICHOLAS K. MITROKOSTAS UNDER
`
`37 C.F.R. § 42.10(c),” “EXHIBIT 1077- DECLARATION OF NICHOLAS K.
`
`MITROKOSTAS IN SUPPORT OF PETITIONERS’ MOTION FOR PRO
`
`HAC VICE ADMISSION OF NICHOLAS K. MITROKOSTAS UNDER 37
`
`C.F.R. § 42.10(c)” and PETITIONERS’ UPDATED EXHIBIT LIST were
`
`served electronically via e-mail on January 31, 2017, on the following:
`
`Erin M. Sommers
`James B. Monroe
`Finnegan, Henderson, Farabow,
`erin.sommers@finnegan.com
`james.monroe@finnegan.com
`
`Counsel for Patent Owner
`Otsuka Pharmaceutical Co. Ltd.
`
`Dated: January 31, 2017
`
`/Sarah Fink/
`Sarah Fink (Reg. No. 64,886)
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
