Paper No. 11
`Filed: March 27, 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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`FAMY CARE LIMITED,
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`Petitioner,
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`v.
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`ALLERGAN, INC.,
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`Patent Owner.
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`Case IPR2017-00567
`Patent 8,629,111
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`PETITIONER’S MOTION FOR PRO HAC VICE
`ADMISSION OF PETER J. CURTIN AS BACK-UP COUNSEL
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`Filed: March 27, 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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`FAMY CARE LIMITED,
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`Petitioner,
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`v.
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`ALLERGAN, INC.,
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`Patent Owner.
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`Case IPR2017-00567
`Patent 8,629,111
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`PETITIONER’S MOTION FOR PRO HAC VICE
`ADMISSION OF PETER J. CURTIN AS BACK-UP COUNSEL
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`Pursuant to 37 C.F.R. § 42.10(c), and the Board’s Notice of Filing Date
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`Accorded to Petition and Time for Filing Patent Owner Preliminary Response,
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`which authorizes the parties to file motions for pro hac vice admission, Paper 6 at 2,
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`Petitioner Famy Care Limited (“Famy Care”) hereby respectfully requests that the
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`Board grant admission pro hac vice to Mr. Peter J. Curtin to act as back-up counsel
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`in this proceeding.
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`I.
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`GOVERNING LAW, RULES, AND PRECEDENT
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`37 C.F.R. § 42.10(c) states that:
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`“The Board may recognize counsel pro hac vice during a proceeding
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`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
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`Board may impose. For example, where the lead counsel is a registered
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`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
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`experienced litigating attorney and has an established familiarity with
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`the subject matter at issue in the proceeding.”
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`The Unified Patents Order requires that a pro hac vice motion “[c]ontain a
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`statement of facts showing there is good cause for the Board to recognize counsel
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`pro hac vice during the proceeding.” Order – Authorizing Motion for Pro Hac Vice
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`Admission – 37 C.F.R. §42.10, IPR2013-00639, Paper 7 at 3. A motion for pro hac
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`1
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`vice admission should also be accompanied by an affidavit of the individual seeking
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`to appear attesting to the following:
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`i. Membership in good standing of the Bar of at least one State or
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`the District of Columbia;
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`ii. No suspensions or disbarments from practice before any court or
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`administrative body;
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`iii. No application for admission to practice before any court or
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`administrative body ever denied;
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`iv. No sanctions or contempt citations imposed by any court or
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`administrative body;
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`v.
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`The individual seeking to appear has read and will comply with
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`the Office Patent Trial Practice Guide and the Board’s Rules of
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`Practice for Trials set forth in part 42 of 37 C.F.R.;
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`vi. The individual will be subject to the USPTO Rules of
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`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);
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`vii. All other proceedings before the Office for which the individual
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`has applied to appear pro hac vice in the last three (3) years; and
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`viii. Familiarity with the subject matter at issue in the proceeding.
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`Order – Authorizing Motion for Pro Hac Vice Admission – 37 C.F.R. § 42.10,
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`2
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`IPR2013-00639, Paper 7 at 3.
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`II.
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`STATEMENT OF FACTS
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`As explained and attested to in the accompanying Declaration of Peter J.
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`Curtin (attached as Exhibit 1034), Mr. Curtin is a Member in good standing with the
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`Bar of the District of Columbia and is admitted to practice in the District of
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`Columbia Court of Appeals, the U.S. Court of Appeals for the Federal Circuit, the
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`U.S. Court of Appeals for the Fourth Circuit, the U.S. District Court for the District
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`of Columbia, the U.S. District Court for the District of Maryland, and the U.S.
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`District Court for the Eastern District of Wisconsin. (Ex. 1034 at ¶ 3).
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`Mr. Curtin has never been disbarred or suspended from practice before any
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`court or administrative body. (Id. at ¶ 4). Mr. Curtin has never had any sanctions or
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`contempt citations imposed on him from any court or administrative body. (Id.). Mr.
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`Curtin has never been denied any application for admission to practice before any
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`court or administrative body. (Id.).
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`Famy Care’s lead counsel for this proceeding, Ms. Deanne M. Mazzochi, is a
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`registered patent practitioner. (Id. at ¶ 5). Famy Care seeks the admission of Mr.
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`Curtin as back-up counsel.
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`Mr. Curtin has established deep familiarity with the specific subject matter at
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`issue in this proceeding. (Id. ¶ 6). Mr. Curtin is counsel for Famy Care in Allergan,
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`Inc. v. Teva Pharms. USA, Inc., Case No. 2: 15-cv-1455 WCB (E.D. Tex.), the
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`3
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`litigation relating to the patent at issue here. (Id.). Mr. Curtin has reviewed and
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`analyzed the Petition and supporting materials, has reviewed and analyzed U.S.
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`Patent No. 8,629,111 (‘111 Patent) and its prosecution history, and has reviewed
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`related IPR petitions, including those filed by Famy Care on related patents and
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`those filed by other parties on the ‘111 Patent. (Id. at ¶ 7). Mr. Curtin has an
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`established familiarity of the subject matter at issue in this inter partes review. (Id.
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`at ¶¶ 6-7). Mr. Curtin is an experienced patent litigation attorney with specific
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`experience serving as counsel in cases related to pharmaceutical patents. (Id. at ¶ 6).
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`As a result of his work in those cases, Mr. Curtin has gained expertise with regard to
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`inventions in the field of pharmaceuticals.
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`Finally, Mr. Curtin 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 set forth in 37 C.F.R. §
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`42 et. seq., and has agreed to be subject to the USPTO Rules of Professional
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`Responsibility set forth in 37 C.F.R. 11.101 et. seq., and disciplinary jurisdiction
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`under 37 C.F.R. 11.19(a). (Id. at ¶¶ 8-9).
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`III.
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`STATEMENT OF RELIEF REQUESTED
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`For the foregoing reasons, Petitioner respectfully requests that the Board
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`grant admission pro hac vice to Mr. Curtin as back-up counsel.
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`4
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`Dated: March 27, 2017
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`Respectfully submitted,
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`/Deanne M. Mazzochi/
`Deanne M. Mazzochi (Reg. No. 50,158)
`dmazzochi@rmmslegal.com
`RAKOCZY MOLINO MAZZOCHI SIWIK LLP
`6 West Hubbard Street, Suite 500
`Chicago, Illinois 60654
`Telephone: (312) 222-6305
`Facsimile: (312) 222-6325
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`5
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I certify that I caused to be served on the
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`counsel for Patent Owner a true and correct copy of the foregoing Petitioner’s
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`Motion for Pro Hac Vice Admission of Peter J. Curtin as Back- Up Counsel, by
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`electronic means on March 27, 2017 at the following addresses of record:
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`Dorothy P. Whelan (Reg. No. 33,814)
`3200 RBC Plaza 60 South Sixth
`Street Minneapolis, MN 55402
`Tel: (612) 337-2509
`Email: IPR13351-0008IPB@fr.com
`Fax: (612) 288-9696
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`Michael Kane, Reg. (No. 39,722)
`3200 RBC Plaza 60 South Sixth
`Street Minneapolis, MN 55402
`Tel: (612) 337-2502
`Email: PTABInbound@fr.com
`Fax: (612) 288-9696
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`Dated: March 27, 2017
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`Respectfully submitted,
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`/Deanne M. Mazzochi/
`Deanne M. Mazzochi (Reg. No. 50,158)
`dmazzochi@rmmslegal.com
`RAKOCZY MOLINO MAZZOCHI SIWIK LLP
`6 West Hubbard Street, Suite 500
`Chicago, Illinois 60654
`Telephone: (312) 222-6305
`Facsimile: (312) 222-6325
`Lead Counsel for Petitioner
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`6
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