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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`Case IPR2017-01053
`Patent 8,268,299
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ARGENTUM PHARMACEUTICALS LLC,
`Petitioner
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`v.
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`ALCON RESEARCH, LTD.,
`Patent Owner
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`Case IPR2017-01053
`Patent 8,268,299
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`ALCON RESEARCH, LTD.’S MOTION FOR
`PRO HAC VICE ADMISSION OF ADAM L. PERLMAN
`PURSUANT TO 37 C.F.R. § 42.10(c)
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`I.
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`RELIEF REQUESTED
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`Case IPR2017-01053
`Patent 8,268,299
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`Pursuant to 37 C.F.R. § 42.10(c), the Board’s Notice of Filing Date
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`Accorded to Petition and Time for Filing Patent Order Preliminary Response
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`(Paper 5, dated April 3, 2017) (hereinafter “Authorizing Order”), and the Board’s
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`“Order–Authorizing Motion for Pro Hac Vice Admission” in Case IPR2013-00639
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`(hereinafter “Unified Patents Order”), Patent Owner Alcon Research, Ltd.
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`(“Alcon”) respectfully requests pro hac vice admission of Adam L. Perlman in this
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`proceeding.
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`II. GOVERNING LAW, RULES, AND PRECEDENT
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`The Board is authorized to recognize counsel pro hac vice pursuant to 37
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`C.F.R. § 42.10(c), which provides that:
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`The 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.
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`The Authorizing Order requires that any motion for pro hac vice admission
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`be filed in accordance with the Unified Patents Order. See Authorizing Order at 2.
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`The Unified Patents Order requires that a pro hac vice motion “[c]ontain a
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`Case IPR2017-01053
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`Patent 8,268,299
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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.” Unified Patents Order at 3. A motion for pro
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`hac vice admission should also be accompanied by an affidavit or declaration of
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`the individuals seeking to appear attesting to the following:
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`i.
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`Membership in good standing of the Bar of at least one State or the
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`District of Columbia;
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`ii.
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`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 the
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`Office Patent Trial Practice Guide and the Board’s Rules of Practice
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`for Trials set forth in part 42 of 37 C.F.R.;
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`vi.
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`The individual will be subject to the USPTO Rules of Professional
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`Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary
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`jurisdiction under 37 C.F.R. § 11.19(a);
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`vii. All other proceedings before the Office for which the individual has
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`applied to appear pro hac vice in the last three (3) years; and
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`Case IPR2017-01053
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`Patent 8,268,299
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`viii. Familiarity with the subject matter at issue in the proceeding.
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`Unified Patents Order at 3–4.
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`In its Authorizing Order, the Board gave Alcon permission to file motions
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`for pro hac vice admission. (See Paper 5 at 2.) Pursuant to that Order, Alcon
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`hereby files a motion for pro hac vice admission of Adam L. Perlman.
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`III. STATEMENT OF FACTS
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`Based on the following facts, and supported by the Declaration of Mr.
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`Perlman (Ex. 2001) submitted herewith, Alcon requests the pro hac vice admission
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`of Adam L. Perlman in this proceeding:
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`1.
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`Alcon’s lead counsel, David M. Krinsky, and back-up counsel,
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`Christopher A. Suarez, are registered practitioners (Krinsky, Reg. No.
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`72,339); (Suarez, Reg. No. 72,553).
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`2. Mr. Perlman is an experienced litigating attorney. Mr. Perlman has
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`approximately 19 years of patent litigation experience. (Ex. 2001
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`¶ 3.)
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`3. Mr. Perlman has established familiarity with the subject matter at
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`issue in this proceeding. As detailed below, Mr. Perlman has been
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`trial counsel to Alcon in various related proceedings in which the
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`claims of the ’299 patent were at issue. (Ex. 2001 ¶ 10.)
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`Case IPR2017-01053
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`Patent 8,268,299
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`4. Mr. Perlman is a member in good standing of the bars of the State of
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`Maryland and the District of Columbia. (Ex. 2001 ¶ 3.)
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`5. Mr. Perlman has never been suspended or disbarred from practice
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`before any court or administrative body. (Ex. 2001 ¶ 4.)
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`6.
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`No court or administrative body has ever denied Mr. Perlman’s
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`application for admission to practice before it. (Ex. 2001 ¶ 5.)
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`7.
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`No court or administrative body has ever imposed sanctions or
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`contempt citations on Mr. Perlman. (Ex. 2001 ¶ 6.)
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`8. Mr. Perlman has read and will comply with the Office of Patent Trial
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`Practice Guide and the Board’s Rules of Practice for Trials set forth in
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`part 42 of 37 C.F.R. (Ex. 2001 ¶ 7.)
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`9. Mr. Perlman understands that he will be subject to the USPTO Code
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`of Professional Responsibility set forth in 37 C.F.R. §§ 11.101 et seq.
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`and will be subject to disciplinary jurisdiction under 37 C.F.R.
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`§ 11.19(a). (Ex. 2001 ¶ 8.)
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`10. Mr. Perlman has applied to appear pro hac vice in eight (8) other
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`proceedings before the Office in the last three (3) years: (1) Hospira,
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`Inc. v. Genentech, Inc., IPR2016-01837, challenging U.S. Patent No.
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`7,807,799; (2) Hospira, Inc. v. Genentech, Inc., IPR2016-01771,
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`challenging U.S. Patent No. 7,622,115; (3) Argentum
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`Case IPR2017-01053
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`Patent 8,268,299
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`Pharmaceuticals LLC v. Alcon Research, Ltd., IPR2016-00544,
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`challenging U.S. Patent No. 8,791,154; (4) Sandoz Inc. v. Eli Lilly &
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`Co., IPR2016-00318, challenging U.S. Patent No. 7,772,209; (5)
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`Neptune Generics, LLC v. Eli Lilly & Co., IPR2016-00240,
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`challenging U.S. Patent No. 7,772,209; (6) Neptune Generics, LLC v.
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`Eli Lilly & Co., IPR2016-00237, challenging U.S. Patent No.
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`7,772,209; (7) Accord Healthcare Inc. et al. v. Daiichi Sankyo Co. et
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`al., IPR2015-00865, challenging U.S. Patent No. 8,569,325; (8)
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`Accord Healthcare Inc. et al. v. Daiichi Sankyo Co. et al., IPR2015-
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`00864, challenging U.S. Patent No. 8,404,703. (Ex. 2001 ¶ 9.)
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`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION OF
`MR. PERLMAN IN THIS PROCEEDING.
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`The Board may recognize counsel pro hac vice during a proceeding upon a
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`showing of good cause, subject to the condition that lead counsel be a registered
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`practitioner and to any other conditions as the Board may impose. 37 C.F.R.
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`§ 42.10(c). Alcon’s lead counsel, David M. Krinsky, and back-up counsel,
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`Christopher A. Suarez, are registered practitioners before the Board. Based on the
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`facts contained herein, as supported by Mr. Perlman’s declaration, good cause
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`exists to admit Mr. Perlman pro hac vice in this proceeding.
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`As set forth in his declaration, Mr. Perlman is an experienced litigator with
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`approximately 19 years of patent litigation experience. (Ex. 2001 ¶ 3.) Moreover,
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`Case IPR2017-01053
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`Patent 8,268,299
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`Mr. Perlman has established familiarity with the subject matter at issue in the
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`proceeding, as he represented Alcon in federal district court litigation concerning
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`the claims of the ’299 patent at issue here. Mr. Perlman was lead trial counsel for
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`Alcon in litigation against other generic pharmaceutical companies in the U.S.
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`District Court for the District of Delaware in which the ’299 patent was at issue:
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`Alcon Research, Ltd. v. Mylan Pharmaceuticals Inc. & Mylan Inc., No. 1:13-cv-
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`01332 (SLR); Alcon Research, Ltd. v. Wockhardt Ltd., Wockhardt Bio AG, &
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`Wockhardt USA, LLC, No. 1:13-cv-02040 (SLR); Alcon Research, Ltd. v. Micro
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`Labs Ltd. & Micro Labs USA Inc., No. 1:14-cv-00014 (SLR); and Alcon Research,
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`Ltd. v. Watson Laboratories, Inc. et al., No. 1:14-cv-00647 (SLR). Mr. Perlman
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`has also previously represented Alcon before the Patent Trial and Appeal Board in
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`Apotex Corp. v. Alcon Research, Ltd., IPR2013-00428, which challenged the same
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`patent at issue here.
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`Mr. Perlman thus has extensive experience not only with patent litigation,
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`but also has experience litigating the precise subject matter raised in Petitioner’s
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`inter partes petition. Moreover, admission of Mr. Perlman pro hac vice will avoid
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`unnecessary expense and duplication of work for Alcon between this and the
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`district court proceedings identified above. See 77 Fed. Reg. 48,680, 48,720 (Aug.
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`14, 2012) (Office’s comment on final rule discussing concerns about efficiency
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`and costs where a patent owner has already engaged counsel for parallel district
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`Case IPR2017-01053
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`Patent 8,268,299
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`court litigation). As trial counsel for Alcon, Mr. Perlman was actively involved in
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`all aspects of its district court litigation, including Alcon’s factual investigation and
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`development concerning the claims of the ’299 patent being challenged in this
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`proceeding. In view of Mr. Perlman’s knowledge of the precise subject matter at
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`issue in this proceeding, and in view of the interrelatedness of this proceeding and
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`the district court litigation, Alcon has a substantial need for Mr. Perlman’s pro hac
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`vice admission and his involvement in the continued prosecution of this
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`proceeding.
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`V. CONCLUSION
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`For the foregoing reasons, Alcon respectfully requests that Mr. Perlman be
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`admitted pro hac vice in this proceeding.
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`The Patent Trial and Appeal Board is hereby authorized to charge any fees
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`associated with this filing to Deposit Account No. 010682.
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`Dated: October 16, 2017
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`Respectfully submitted,
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`/ David M. Krinsky/
`David M. Krinsky
`Reg. No. 72,339
`Lead Counsel for
`Patent Owner
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`Williams & Connolly LLP
`725 Twelfth Street NW
`Washington, D.C. 20005
`202-434-5338 (Telephone)
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`Case IPR2017-01053
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`Patent 8,268,299
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`202-434-5029 (Facsimile)
`dkrinsky@wc.com
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`Case IPR2017-01053
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`Patent 8,268,299
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`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
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`The undersigned hereby certifies that the foregoing “ALCON RESEARCH,
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`LTD.’S MOTION FOR PRO HAC VICE ADMISSION OF ADAM L.
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`PERLMAN PURSUANT TO 37 C.F.R. § 42.10(c)” was served on October 16,
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`2017, via electronic mail upon the following attorneys of record for the Petitioner:
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`Michael R. Houston
`Joseph P. Meara
`James P. McParland
`FOLEY & LARDNER LLP
`mhouston@foley.com
`jmeara-pgp@foley.com
`jmcparland@foley.com
`ARG-travatanZ@foley.com
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`Tyler C. Liu
`ARGENTUM PHARMACEUTICALS LLC
`tliu@agpharm.com
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`Respectfully submitted,
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`/David M. Krinsky/
`David M. Krinsky
`Reg. No. 72,339
`Lead Counsel for Patent Owner
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`Dated: October 16, 2017
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