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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 ALEXANDER S. ZOLAN
`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 Alexander S. Zolan in
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`this 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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`
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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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`
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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 Authorizing Order at 2. Pursuant to that Order,
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`Alcon hereby files a motion for pro hac vice admission of Alexander S. Zolan.
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`III. STATEMENT OF FACTS
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`Based on the following facts, and supported by the Declaration of Mr. Zolan
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`(Ex. 2002) submitted herewith, Alcon requests the pro hac vice admission of
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`Alexander S. Zolan 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. Zolan has established familiarity with the subject matter at issue
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`in this proceeding. As detailed below, Mr. Zolan has been trial
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`counsel to Alcon in various related proceedings in which the claims of
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`the ’299 patent were at issue. (Ex. 2002 ¶ 10.) Mr. Zolan has worked
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`directly with Alcon’s expert witnesses on the matters at issue in this
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`proceeding. (Id.)
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`3. Mr. Zolan is a member in good standing of the bars of New York and
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`the District of Columbia. (Ex. 2002 ¶ 3.)
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`Case IPR2017-01053
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`Patent 8,268,299
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`4. Mr. Zolan has never been suspended or disbarred from practice before
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`any court or administrative body. (Ex. 2002 ¶ 4.)
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`5.
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`No court or administrative body has ever denied Mr. Zolan’s
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`application for admission to practice before it. (Ex. 2002 ¶ 5.)
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`6.
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`No court or administrative body has ever imposed sanctions or
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`contempt citations on Mr. Zolan. (Ex. 2002 ¶ 6.)
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`7. Mr. Zolan 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. 2002 ¶ 7.)
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`8. Mr. Zolan understands that he will be subject to the USPTO Code of
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`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. 2002 ¶ 8.)
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`9. Mr. Zolan has not applied to appear pro hac vice in any proceedings
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`before the Office in the last three (3) years. (Ex. 2002 ¶ 9.)
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`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION OF
`MR. ZOLAN 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,
`4
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`Case IPR2017-01053
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`Patent 8,268,299
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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. Zolan’s declaration, good cause exists
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`to admit Mr. Zolan pro hac vice in this proceeding.
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`As set forth in his declaration, Mr. Zolan has established familiarity with the
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`subject matter at issue in the proceeding. Mr. Zolan represented Alcon in federal
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`district court litigation concerning the claims of the ’299 patent at issue here. Mr.
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`Zolan was counsel for Alcon in litigation against other generic pharmaceutical
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`companies in the U.S. District Court for the District of Delaware in which the ’299
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`patent was at issue: Alcon Research, Ltd. v. Mylan Pharmaceuticals Inc. & Mylan
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`Inc., No. 1:13-cv-01332 (SLR); Alcon Research, Ltd. v. Wockhardt Ltd.,
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`Wockhardt Bio AG, & Wockhardt USA, LLC, No. 1:13-cv-02040 (SLR); and Alcon
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`Research, Ltd. v. Watson Laboratories, Inc. et al., No. 1:14-cv-00647 (SLR). In
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`addition, Mr. Zolan worked with the fact and expert witnesses in those district
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`court cases.
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`Mr. Zolan thus has experience litigating the precise subject matter raised in
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`Petitioner’s inter partes petition. As trial counsel for Alcon, Mr. Zolan was
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`actively involved in all aspects of its district court litigation, including Alcon’s
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`factual investigation and development concerning the claims of the ’299 patent
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`being challenged in this proceeding. In view of Mr. Zolan’s knowledge of the
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`precise subject matter at issue in this proceeding, and in view of the
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`Case IPR2017-01053
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`Patent 8,268,299
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`interrelatedness of this proceeding and the district court litigation, admission of
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`Mr. Zolan pro hac vice will avoid unnecessary expense and duplication of work for
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`Alcon between this and the district court proceedings identified above. See 77 Fed.
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`Reg. 48,680, 48,720 (Aug. 14, 2012) (Office’s comment on final rule discussing
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`concerns about efficiency and costs where a patent owner has already engaged
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`counsel for parallel district court litigation). In addition, admission of Mr. Zolan
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`pro hac vice will enable him to participate in drafting the declarations and
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`defending the depositions of the Alcon witnesses with whom he has already
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`worked. For these reasons, Alcon has a substantial need for Mr. Zolan’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. Zolan 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,
`
`/David M. Krinsky/
`David M. Krinsky
`Reg. No. 72,339
`Lead Counsel for
`Patent Owner
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`Case IPR2017-01053
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`Patent 8,268,299
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`Williams & Connolly LLP
`725 Twelfth Street NW
`Washington, D.C. 20005
`202-434-5338 (Telephone)
`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 ALEXANDER S.
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`ZOLAN PURSUANT TO 37 C.F.R. § 42.10(c)” was served on October 16, 2017,
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`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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