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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 CHRISTOPHER J. MANDERNACH
`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 Christopher J.
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`Mandernach in 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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`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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`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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`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 Authorizing Order at 2. Pursuant to that Order,
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`Alcon hereby files a motion for pro hac vice admission of Christopher J.
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`Mandernach.
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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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`Mandernach (Ex. 2003) submitted herewith, Alcon requests the pro hac vice
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`admission of Christopher J. Mandernach 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. Mandernach has established familiarity with the subject matter at
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`issue in this proceeding. As detailed below, Mr. Mandernach has
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`been trial counsel to Alcon in various related proceedings in which the
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`claims of the ’299 patent were at issue. (Ex. 2003 ¶ 10.)
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`3. Mr. Mandernach is a member in good standing of the bars of
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`Minnesota and the District of Columbia. (Ex. 2003 ¶ 3.)
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`4. Mr. Mandernach has never been suspended or disbarred from practice
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`before any court or administrative body. (Ex. 2003 ¶ 4.)
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`5.
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`No court or administrative body has ever denied Mr. Mandernach’s
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`application for admission to practice before it. (Ex. 2003 ¶ 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. Mandernach. (Ex. 2003 ¶ 6.)
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`7. Mr. Mandernach 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
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`part 42 of 37 C.F.R. (Ex. 2003 ¶ 7.)
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`8. Mr. Mandernach understands that he will be subject to the USPTO
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`Code of Professional Responsibility set forth in 37 C.F.R. §§ 11.101
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`et seq. and will be subject to disciplinary jurisdiction under 37 C.F.R.
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`§ 11.19(a). (Ex. 2003 ¶ 8.)
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`9. Mr. Mandernach has applied to appear pro hac vice in one (1)
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`proceeding before the Office in the last three (3) years: Argentum
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`Pharmaceuticals LLC v. Alcon Research, Ltd., IPR2016-00544,
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`challenging U.S. Patent No. 8,791,154. (Ex. 2003 ¶ 9.)
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`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION OF
`MR. MANDERNACH 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. Mandernach’s declaration, good cause
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`exists to admit Mr. Mandernach pro hac vice in this proceeding.
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`As set forth in his declaration, Mr. Mandernach has established familiarity
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`with the subject matter at issue in the proceeding. Mr. Mandernach represented
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`Alcon in federal district court litigation concerning the claims of the ’299 patent at
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`issue here. Mr. Mandernach was counsel for Alcon in litigation against other
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`generic pharmaceutical companies in the U.S. District Court for the District of
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`Delaware in which the ’299 patent was at issue: Alcon Research, Ltd. v. Mylan
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`Pharmaceuticals Inc. et al., No. 1:13-cv-01332 (SLR); Alcon Research, Ltd. v.
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`Wockhardt Ltd. et al., No. 1:13-cv-02040 (SLR); Alcon Research, Ltd. v. Micro
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`Labs Ltd. et al., No. 1:14-cv-00014 (SLR); and Alcon Research, Ltd. v. Watson
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`Laboratories, Inc. et al., No. 1:14-cv-00647 (SLR). In addition, Mr. Mandernach
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`previously represented Alcon before the Patent Trial and Appeal Board in Apotex
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`Corp. v. Alcon Research, Ltd., IPR2013-00428, which challenged the same patent
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`at issue here.
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`Mr. Mandernach thus has experience litigating the precise subject matter
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`raised in Petitioner’s inter partes petition. As trial counsel for Alcon, Mr.
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`Patent 8,268,299
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`Mandernach was actively involved in all aspects of its district court litigation,
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`including Alcon’s factual investigation and development concerning the claims of
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`the ’299 patent being challenged in this proceeding. In view of Mr. Mandernach’s
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`knowledge of the precise subject matter at issue in this proceeding, and in view of
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`the interrelatedness of this proceeding and the district court litigation, admission of
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`Mr. Mandernach pro hac vice will avoid unnecessary expense and duplication of
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`work for Alcon between this and the district court proceedings identified above.
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`See 77 Fed. Reg. 48,680, 48,720 (Aug. 14, 2012) (Office’s comment on final rule
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`discussing concerns about efficiency and costs where a patent owner has already
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`engaged counsel for parallel district court litigation). In addition, admission of Mr.
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`Mandernach’s pro hac vice will enable him to participate in drafting the
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`declarations and defending the depositions of the Alcon witnesses with whom he
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`has already worked. For these reasons, Alcon has a substantial need for Mr.
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`Mandernach’s pro hac vice admission and his involvement in the continued
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`prosecution of this proceeding.
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`V. CONCLUSION
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`For the foregoing reasons, Alcon respectfully requests that Mr. Mandernach
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`be 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 24, 2017
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`Respectfully submitted,
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`Case IPR2017-01053
`Patent 8,268,299
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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)
`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 CHRISTOPHER J.
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`MANDERNACH PURSUANT TO 37 C.F.R. § 42.10(c)” was served on October
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`24, 2017, via electronic mail upon the following attorneys of record for the
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`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 24, 2017
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