Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 8
`Entered: July 18, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TORRENT PHARMACEUTICALS LIMITED
`Petitioner
`
`v.
`
`NOVARTIS AG AND MITSUBISHI PHARMA CORP.,
`Patent Owners
`_______________
`
`Case IPR2014-00784
`Patent 8,324,283
`_______________
`
`
`
`Before LORA M. GREEN, MICHELLE R. OSINSKI, and
`CHRISTOPHER M. KAISER, Administrative Patent Judges.
`
`GREEN, Administrative Patent Judge.
`
`ORDER
`Novartis’ Motion for Admission Pro Hac Vice of
`Robert W. Trenchard
`37 C.F.R. § 42.10
`
`
`
`
`
`
`
`Apotex v. Novartis
`IPR2017-00854
`NOVARTIS 2002
`
`

`

`Case IPR2014-00784
`Patent 8,324,283
`
`
`Patent Owner, Novartis AG, (“Patent Owner”), timely filed a Motion for
`
`Admission Pro Hac Vice of Robert W. Trenchard pursuant to 37 C.F.R. § 42.10(c)
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`(Paper 6), accompanied by a Declaration of Robert W. Trenchard in support of the
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`Motion (Ex. 2001). Petitioner has not filed an opposition to the Motion. For the
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`reasons provided below, Patent Owner’s Motion is granted.
`
`
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`As set forth in § 42.10(c), we may recognize counsel pro hac vice during
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`a proceeding upon a showing of good cause, subject to the condition that lead
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`counsel be a registered practitioner. In its Motion, Patent Owner asserts that
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`there is good cause for Mr. Trenchard’s pro hac vice admission because:
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`(1) Mr. Trenchard is an experienced litigation attorney and has experience as a
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`patent litigation attorney; and (2) Mr. Trenchard has an established familiarity with
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`the subject matter at issue in the instant proceeding. Paper 6, at 2, 3. In addition,
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`Mr. Trenchard is familiar with U.S. Patent No. 8,324,283 which is the subject
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`matter of this proceeding, its prosecution history, and the prior art references that
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`are the subject of this proceeding. He has also met with certain inventors of the
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`patent and certain authors of the asserted prior art references. In support of the
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`Motion, Mr. Trenchard attests to these facts in his Declaration. Exhibit 2001,
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`¶¶ 4-5, 9-10.
`
`
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`Based on the facts set forth above, we conclude that Mr. Trenchard
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`has sufficient legal and technical qualifications to represent Patent Owner in
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`this proceeding and that the criteria for pro hac vice admission are satisfied.
`
`See Unified Patents, Inc. v. Parallel Iron, LLC, Case IPR2013-00639 (PTAB
`
`Oct. 15, 2013) (Paper 7) (expanded panel), slip. op. at 3. Accordingly, Patent
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`Owner has established good cause for Mr. Trenchard’s pro hac vice admission.
`
`Mr. Trenchard will be permitted to appear pro hac vice in the instant proceeding as
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`back-up counsel only. See 37 C.F.R. § 42.10(c).
`
` 2
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`

`

`Case IPR2014-00784
`Patent 8,324,283
`
`
`
`
`
`
`For the foregoing reasons, it is
`
`ORDERED that Patent Owner’s Motion for Admission Pro Hac Vice of
`
`Robert W. Trenchard for the instant proceeding is granted; Mr. Trenchard is
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`authorized to represent Patent Owner as back-up counsel in the instant proceeding;
`
`
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`FURTHER ORDERED that Patent Owner is to continue to have a registered
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`practitioner as lead counsel in the instant proceeding;
`
`
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`FURTHER ORDERED that Mr. Trenchard is to comply with the Office
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`Patent Trial Practice Guide and the Board’s Rules of Practice for Trials, as set forth
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`in Title 37, Part 42 of the Code of Federal Regulations; and
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`
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`FURTHER ORDERED that Mr. Trenchard is to be subject to the Office’s
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`disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and the USPTO Rules of
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`Professional Conduct set forth in 37 C.F.R. §§ 11.101-11.901.
`
`
`For PETITIONER:
`
`Michael Levy
`mlevy@kenyon.com
`
`Huiya Wu
`hwu@kenyon.com
`
`
`
`For PATENT OWNER:
`
`Jane Love
`Jane.love@wilmerhale.com
`
`
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