UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`ACTAVIS LLC,
`Petitioner,
`
`v.
`
`ABRAXIS BIOSCIENCE, LLC,
`Patent Owner.
`
`
`Case IPR2017-01101
`Patent No. 7,820,788 B2
`
`
`PETITIONER’S UNOPPOSED MOTION FOR PRO HAC VICE
`ADMISSION OF GEORGE C. LOMBARDI, CHARLES B. KLEIN,
`KEVIN E. WARNER, AND
`EIMERIC REIG-PLESSIS UNDER 37 C.F.R. § 42.10
`
`
`
`
`
`
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`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`ACTAVIS LLC,
`Petitioner,
`
`v.
`
`ABRAXIS BIOSCIENCE, LLC,
`Patent Owner.
`
`
`Case IPR2017-01101
`Patent No. 7,820,788 B2
`
`
`PETITIONER’S UNOPPOSED MOTION FOR PRO HAC VICE
`ADMISSION OF GEORGE C. LOMBARDI, CHARLES B. KLEIN,
`KEVIN E. WARNER, AND
`EIMERIC REIG-PLESSIS UNDER 37 C.F.R. § 42.10
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-01101
`Patent No. 7,820,788 B2
`
`
`Pursuant to 37 C.F.R. § 42.10(c), and pursuant to the authorization provided
`
`by the Board in Paper No. 3 (dated April 12, 2017) (“the Notice”), Petitioner Actavis
`
`LLC (“Petitioner” or “Actavis”) submits this motion for George C. Lombardi,
`
`Charles B. Klein, Kevin E. Warner, and Eimeric Reig-Plessis to appear pro hac vice
`
`as backup counsel for Petitioner in this proceeding. Petitioner respectfully requests
`
`that the Board recognize Mr. Lombardi, Mr. Klein, Mr. Warner, and Mr. Reig-
`
`Plessis as backup counsel pro hac vice during this proceeding, and demonstrates
`
`good cause for doing so as shown below.
`
`I.
`
`TIME FOR FILING
`
`Pursuant to the authorization provided in the Notice, this motion for pro hac
`
`vice admission is being filed no sooner than twenty-one (21) days after service of
`
`the Petition.
`
`II.
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`STATEMENT OF FACTS
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`A. George C. Lombardi
`
`Pursuant to the Notice, the following statement of facts shows that good cause
`
`exists for the Board to recognize Mr. Lombardi pro hac vice.
`
`Lead counsel for this proceeding, Samuel S. Park, is a registered practitioner
`
`(Reg. No. 59,656).
`
`Mr. Lombardi is an experienced litigation attorney with 33 years of litigation
`
`experience. Ex. 1027 ¶ 8. He has been involved in numerous patent infringement
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`2
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`IPR2017-01101
`Patent No. 7,820,788 B2
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`cases in federal district courts across the country. Id. He has experience in various
`
`aspects of patent infringement matters, including jury and bench trials, Markman
`
`hearings, and summary judgment hearings. Id. He has argued in multiple patent
`
`cases in federal courts. Id.
`
`Mr. Lombardi is a member in good standing of the Illinois Bar and is admitted
`
`to practice before the United States Supreme Court, United States Court of Appeals
`
`for the Federal Circuit, United States Court of Appeals for the Fourth Circuit, United
`
`States Court of Appeals for the Seventh Circuit, United States Court for the Northern
`
`District of Illinois, United States Court for the Southern District of Illinois, United
`
`States Court for the Eastern District of Michigan, United States Court for the Eastern
`
`District of Wisconsin, and United States Court for the District of Colorado Id. ¶ 1.
`
`Mr. Lombardi has not been suspended or disbarred from practice, has never
`
`had any application for admission to practice denied, and has never had any
`
`sanctions or contempt citations imposed against him. Id. ¶¶ 2-4.
`
`Mr. Lombardi is trial counsel for Petitioner in patent litigation against Patent
`
`Owner concerning the patent challenged in the petition (Abraxis Bioscience, LLC et
`
`al. v. Actavis LLC, No. 2:16-cv-01925-JMV-MF (D.N.J.)). Id. at ¶ 8. As a result of
`
`Mr. Lombardi’s involvement as trial counsel for Petitioner in co-pending district
`
`court litigation over the involved patent, Mr. Lombardi has obtained substantial
`
`familiarity with the involved patent, the prior art, and the various issues raised in this
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`3
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`IPR2017-01101
`Patent No. 7,820,788 B2
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`proceeding. Id. Moreover, Mr. Lombardi has reviewed the involved patent, the
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`Petition, the prior art, and all other cited materials. Id. Given his extensive patent
`
`litigation experience and his familiarity with the instant Petition, the cited materials,
`
`and the patented technology, Mr. Lombardi has established familiarity with the
`
`subject matter at issue in this proceeding. Id.
`
`Mr. Lombardi has read and will comply with the Office Patent Trial Practice
`
`Guide and the Board’s Rules for Practice for Trials set forth in part 42 of the C.F.R.,
`
`and he agrees to be subject to the USPTO Rules of Professional Conduct set forth in
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`37 C.F.R. §§ 11.101 et seq., and to disciplinary jurisdiction under 37 C.F.R.
`
`§ 11.19(a). Id. ¶¶ 5-6.
`
`In the last three years, Mr. Lombardi was admitted pro hac vice in IPR2015-
`
`00864, Paper 51 (Nov. 5, 2015) and IPR2015-00865, Paper 51 (Nov. 5, 2015). Id.
`
`¶ 7. Mr. Lombardi has not applied to appear pro hac vice in the last three years in
`
`any other matter before the Board. Id.
`
`Given that Mr. Lombardi is a trusted advisor to Petitioner on matters involving
`
`the litigation of patent disputes and his familiarity with the subject matter at issue in
`
`this proceeding, Petitioner respectfully submits that it has shown good cause for the
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`Board to recognize Mr. Lombardi as counsel pro hac vice during this proceeding.
`
`4
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`IPR2017-01101
`Patent No. 7,820,788 B2
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`B. Charles B. Klein
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`Pursuant to the Notice, the following statement of facts shows that good cause
`
`exists for the Board to recognize Mr. Klein pro hac vice.
`
`Lead counsel for this proceeding, Samuel S. Park, is a registered practitioner
`
`(Reg. No. 59,656).
`
`Mr. Klein is an experienced litigation attorney with 20 years of litigation
`
`experience. Ex. 1028 ¶ 8. He has been involved in numerous patent infringement
`
`cases in federal district courts across the country. Id. He has experience in various
`
`aspects of patent infringement matters, including jury and bench trials, Markman
`
`hearings, and summary judgment hearings. Id. He has argued in multiple patent
`
`cases in federal courts. Id.
`
`Mr. Klein is a member in good standing of the District of Columbia and
`
`Virginia Bars and is admitted to practice before the United States Supreme Court,
`
`United States Court of Appeals for the Federal Circuit, United States Court of
`
`Appeals for the Third Circuit, United States Court of Appeals for the Fourth Circuit,
`
`United States Court of Appeals for the Seventh Circuit, United States Court of
`
`Appeals for the Ninth Circuit, United States Court of Appeals for the District of
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`Columbia Circuit, United States Court of Federal Claims, United States Court for
`
`the District of Arizona, United States Court for the District of Columbia, United
`
`States Court for the District of Maryland, United States Court for the Eastern District
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`5
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`IPR2017-01101
`Patent No. 7,820,788 B2
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`of Michigan, United States Court for the Eastern District of Virginia, United States
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`Court for the Western District of Virginia, United States Court for the Northern
`
`District of California, United States Court for the Southern District of New York,
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`United States Court for the Middle District of Georgia, United States Court for the
`
`District of Massachusetts, United States Court for the District of New Jersey, United
`
`States Court for the Middle District of North Carolina, United States Bankruptcy
`
`Court for the Eastern District of Virginia Alexandria Division, Supreme Court for
`
`the Commonwealth of Virginia, and the Superior Court of the District of Columbia.
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`Id. ¶ 1.
`
`Mr. Klein has not been suspended or disbarred from practice, has never had
`
`any application for admission to practice denied, and has never had any sanctions or
`
`contempt citations imposed against him. Id. ¶¶ 2-4.
`
`Mr. Klein is trial counsel for Petitioner in patent litigation against Patent
`
`Owner concerning the patent challenged in the petition (Abraxis Bioscience, LLC et
`
`al. v. Actavis LLC, No. 2:16-cv-01925-JMV-MF (D.N.J.)). Id. at ¶ 8. As a result of
`
`Mr. Klein’s involvement as trial counsel for Petitioner in co-pending district court
`
`litigation over the involved patent, Mr. Klein has obtained substantial familiarity
`
`with the involved patent, the prior art, and the various issues raised in this
`
`proceeding. Id. Moreover, Mr. Klein has reviewed the involved patent, the Petition,
`
`the prior art, and all other cited materials. Id. Given his extensive patent litigation
`
`6
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`IPR2017-01101
`Patent No. 7,820,788 B2
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`experience and his familiarity with the instant Petition, the cited materials, and the
`
`patented technology, Mr. Klein has established familiarity with the subject matter at
`
`issue in this proceeding. Id.
`
`Mr. Klein has read and will comply with the Office Patent Trial Practice Guide
`
`and the Board’s Rules for Practice for Trials set forth in part 42 of the C.F.R., and
`
`he agrees to be subject to the USPTO Rules of Professional Conduct set forth in 37
`
`C.F.R. §§ 11.101 et seq., and to disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
`
`Id. ¶¶ 5-6.
`
`In the last three years, Mr. Klein was admitted pro hac vice in IPR2014-01126,
`
`Paper 17 (Sept. 29, 2014), IPR2015-00864, Paper 51 (Nov. 5, 2015), IPR2015-
`
`00865, Paper 51 (Nov. 5, 2015), and IPR2017-01115, Paper 12 (July 18, 2017). Id.
`
`¶ 7. Mr. Klein has not applied to appear pro hac vice in the last three years in any
`
`other matter before the Board. Id.
`
`Given that Mr. Klein is a trusted advisor to Petitioner on matters involving the
`
`litigation of patent disputes and his familiarity with the subject matter at issue in this
`
`proceeding, Petitioner respectfully submits that it has shown good cause for the
`
`Board to recognize Mr. Klein as counsel pro hac vice during this proceeding.
`
`C. Kevin E. Warner
`
`Pursuant to the Notice, the following statement of facts shows that good cause
`
`exists for the Board to recognize Mr. Warner pro hac vice.
`
`7
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`IPR2017-01101
`Patent No. 7,820,788 B2
`
`
`Lead counsel for this proceeding, Samuel S. Park, is a registered practitioner
`
`(Reg. No. 59,656).
`
`Mr. Warner is an experienced litigation attorney with 13 years of litigation
`
`experience. Ex. 1029 ¶ 8. He has been involved in numerous patent infringement
`
`cases in federal district courts across the country. Id. He has experience in various
`
`aspects of patent infringement matters, including jury and bench trials, Markman
`
`hearings, and summary judgment hearings. Id.
`
`Mr. Warner is a member in good standing of the Illinois Bar and is admitted
`
`to practice before the United States Court of Appeals for the Federal Circuit, United
`
`States Court for the Central District of Illinois, United States Court for the Northern
`
`District of Illinois, and the United States Court for the Eastern District of Michigan.
`
`Id. ¶ 1.
`
`Mr. Warner has not been suspended or disbarred from practice, has never had
`
`any application for admission to practice denied, and has never had any sanctions or
`
`contempt citations imposed against him. Id. ¶¶ 2-4.
`
`Mr. Warner is trial counsel for Petitioner in patent litigation against Patent
`
`Owner concerning the patent challenged in the petition (Abraxis Bioscience, LLC et
`
`al. v. Actavis LLC, No. 2:16-cv-01925-JMV-MF (D.N.J.)). Id. at ¶ 8. As a result of
`
`Mr. Warner’s involvement as trial counsel for Petitioner in co-pending district court
`
`litigation over the involved patent, Mr. Warner has obtained substantial familiarity
`
`8
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`IPR2017-01101
`Patent No. 7,820,788 B2
`
`with the involved patent, the prior art, and the various issues raised in this
`
`proceeding. Id. Moreover, Mr. Warner has reviewed the involved patent, the
`
`Petition, the prior art, and all other cited materials. Id. Given his extensive patent
`
`litigation experience and his familiarity with the instant Petition, the cited materials,
`
`and the patented technology, Mr. Warner has established familiarity with the subject
`
`matter at issue in this proceeding. Id.
`
`Mr. Warner has read and will comply with the Office Patent Trial Practice
`
`Guide and the Board’s Rules for Practice for Trials set forth in part 42 of the C.F.R.,
`
`and he agrees to be subject to the USPTO Rules of Professional Conduct set forth in
`
`37 C.F.R. §§ 11.101 et seq., and to disciplinary jurisdiction under 37 C.F.R.
`
`§ 11.19(a). Id. ¶¶ 5-6.
`
`Mr. Warner has not applied to appear pro hac vice in the last three years in
`
`any other matter before the Board. Id.
`
`Given that Mr. Warner is a trusted advisor to Petitioner on matters involving
`
`the litigation of patent disputes and his familiarity with the subject matter at issue in
`
`this proceeding, Petitioner respectfully submits that it has shown good cause for the
`
`Board to recognize Mr. Warner as counsel pro hac vice during this proceeding.
`
`D. Eimeric Reig-Plessis
`
`Pursuant to the Notice, the following statement of facts shows that good cause
`
`exists for the Board to recognize Mr. Reig-Plessis pro hac vice.
`
`9
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`IPR2017-01101
`Patent No. 7,820,788 B2
`
`
`Lead counsel for this proceeding, Samuel S. Park, is a registered practitioner
`
`(Reg. No. 59,656).
`
`Mr. Reig-Plessis is a litigation attorney who has been involved in multiple
`
`patent infringement cases in federal district courts. Ex. 1030 ¶ 8. He has experience
`
`in various aspects of patent infringement matters and has participated in multiple
`
`patent cases in federal courts. Id.
`
`Mr. Reig-Plessis is a member in good standing of the Bars of the District of
`
`Columbia and the State of New York, and is admitted to practice in the United States
`
`Courts of Appeals for the Seventh and Federal Circuits. Id. ¶ 1.
`
`Mr. Reig-Plessis has not been suspended or disbarred from practice, has never
`
`had any application for admission to practice denied, and has never had any
`
`sanctions or contempt citations imposed against him. Id. ¶¶ 2-4.
`
`Mr. Reig-Plessis is trial counsel for Petitioner in patent litigation against
`
`Patent Owner concerning the patent challenged in the petition (Abraxis Bioscience,
`
`LLC et al. v. Actavis LLC, No. 2:16-cv-01925-JMV-MF (D.N.J.)). Id. at ¶ 8. As a
`
`result of Mr. Reig-Plessis’ involvement as trial counsel for Petitioner in co-pending
`
`district court litigation over the involved patent, Mr. Reig-Plessis has obtained
`
`substantial familiarity with the involved patent, the prior art, and the various issues
`
`raised in this proceeding. Id. Moreover, Mr. Reig-Plessis has reviewed the involved
`
`patent, the Petition, the prior art, and all other cited materials. Id. Given his
`
`10
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`IPR2017-01101
`Patent No. 7,820,788 B2
`
`extensive patent litigation experience and his familiarity with the instant Petition,
`
`the cited materials, and the patented technology, Mr. Reig-Plessis has established
`
`familiarity with the subject matter at issue in this proceeding. Id.
`
`Mr. Reig-Plessis has read and will comply with the Office Patent Trial
`
`Practice Guide and the Board’s Rules for Practice for Trials set forth in part 42 of
`
`the C.F.R., and he agrees to be subject to the USPTO Rules of Professional Conduct
`
`set forth in 37 C.F.R. §§ 11.101 et seq., and to disciplinary jurisdiction under 37
`
`C.F.R. § 11.19(a). Id. ¶¶ 5-6.
`
`In the last three years, Mr. Reig-Plessis was admitted pro hac vice in IPR2017-
`
`01115, Paper 12 (July 18, 2017). Id. ¶ 7. Mr. Reig-Plessis has not applied to appear
`
`pro hac vice in the last three years in any other matter before the Board. Id.
`
`Given that Mr. Reig-Plessis’ familiarity with the subject matter at issue in this
`
`proceeding, Petitioner respectfully submits that it has shown good cause for the
`
`Board to recognize Mr. Reig-Plessis as counsel pro hac vice during this proceeding.
`
`III. DECLARATIONS OF INDIVIDUALS SEEKING TO APPEAR
`
`This Motion is accompanied by Declarations of Mr. Lombardi, Mr. Klein,
`
`Mr. Warner, and Mr. Reig-Plessis.
`
`
`
`
`
`11
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`IPR2017-01101
`Patent No. 7,820,788 B2
`
`
`
`
`Dated: November 3, 2017
`
`WINSTON & STRAWN LLP
`1700 K Street NW
`Washington, DC 20006
`Telephone: 202-282-5000
`Fax: 202-282-5100
`Email: AbraxaneIPR@winston.com
`
`
`
`Respectfully submitted,
`
`
` /Samuel S. Park/
`Samuel S. Park
`Reg. No. 59,656
`
`Lead Counsel for Petitioner
`
`
`
`
`
`12
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`IPR2017-01101
`Patent No. 7,820,788 B2
`
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), I certify that, on November
`
`3, 2017, I caused to be served true and correct copies of the foregoing
`
`“PETITIONER’S UNOPPOSED MOTION FOR PRO HAC VICE ADMISSION
`
`OF CHARLES B. KLEIN, KEVIN E. WARNER, AND EIMERIC REIG-PLESSIS
`
`UNDER 37 C.F.R. § 42.10” by electronic mail on the following attorneys:
`
`Lead Counsel:
`J. Patrick Elsevier, Ph.D. (Reg. No. 44,668)
`Jones Day
`4655 Executive Drive, Suite 1500
`San Diego, CA 92121-3134
`Tel: (858) 314-1200
`Fax: (844) 345-3178
`jpelsevier@jonesday.com
`
`Backup Counsel:
`Anthony M. Insogna (Reg. No. 35,203)
`aminsogna@jonesday.com
`
`Cary Miller, Ph.D. (Reg. No. 54,708)
`cmiller@jonesday.com
`
`Lisamarie LoGiudice, Ph.D. (Reg. No. 71,047)
`llogiudice@jonesday.com
`
`F. Dominic Cerrito (Reg. No. 38,100)
`nickcerrito@quinnemanuel.com
`
`Frank C. Calvosa (Reg. No. 69,064)
`frankcalvosa@quinnemanuel.com
`
`Andrew S. Chalson (pro hac vice)
`Andrewchalson@quinnemanuel.com
`
`13
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`IPR2017-01101
`Patent No. 7,820,788 B2
`
`
`Dated: November 3, 2017
`
`WINSTON & STRAWN LLP
`1700 K Street NW
`Washington, DC 20006
`Telephone: 202-282-5000
`Fax: 202-282-5100
`Email: AbraxaneIPR@winston.com
`
`
`Respectfully submitted,
`
`
` /Samuel S. Park/
`Samuel S. Park
`Reg. No. 59,656
`
`Lead Counsel for Petitioner
`
`14
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`
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