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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ACTAVIS LLC,
`Petitioner,
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`v.
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`ABRAXIS BIOSCIENCE, LLC,
`Patent Owner.
`
`
`Case IPR2017-01103
`Patent No. 7,923,536 B2
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`
`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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`IPR2017-01103
`Patent No. 7,923,536 B2
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`Pursuant to 37 C.F.R. § 42.10(c), and pursuant to the authorization provided
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`by the Board in Paper No. 3 (dated April 12, 2017) (“the Notice”), Petitioner Actavis
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`LLC (“Petitioner” or “Actavis”) submits this motion for George C. Lombardi,
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`Charles B. Klein, Kevin E. Warner, and Eimeric Reig-Plessis to appear pro hac vice
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`as backup counsel for Petitioner in this proceeding. Petitioner respectfully requests
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`that the Board recognize Mr. Lombardi, Mr. Klein, Mr. Warner, and Mr. Reig-
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`Plessis as backup counsel pro hac vice during this proceeding, and demonstrates
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`good cause for doing so as shown below.
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`I.
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`TIME FOR FILING
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`Pursuant to the authorization provided in the Notice, this motion for pro hac
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`vice admission is being filed no sooner than twenty-one (21) days after service of
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`the Petition.
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`II.
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`STATEMENT OF FACTS
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`A. George C. Lombardi
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`Pursuant to the Notice, the following statement of facts shows that good cause
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`exists for the Board to recognize Mr. Lombardi pro hac vice.
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`Lead counsel for this proceeding, Samuel S. Park, is a registered practitioner
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`(Reg. No. 59,656).
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`Mr. Lombardi is an experienced litigation attorney with 33 years of litigation
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`experience. Ex. 1027 ¶ 8. He has been involved in numerous patent infringement
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`cases in federal district courts across the country. Id. He has experience in various
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`aspects of patent infringement matters, including jury and bench trials, Markman
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`hearings, and summary judgment hearings. Id. He has argued in multiple patent
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`cases in federal courts. Id.
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`Mr. Lombardi is a member in good standing of the Illinois Bar and is admitted
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`to practice before the United States Supreme Court, United States Court of Appeals
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`for the Federal Circuit, United States Court of Appeals for the Fourth Circuit, United
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`States Court of Appeals for the Seventh Circuit, United States Court for the Northern
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`District of Illinois, United States Court for the Southern District of Illinois, United
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`States Court for the Eastern District of Michigan, United States Court for the Eastern
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`District of Wisconsin, and United States Court for the District of Colorado Id. ¶ 1.
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`Mr. Lombardi has not been suspended or disbarred from practice, has never
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`had any application for admission to practice denied, and has never had any
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`sanctions or contempt citations imposed against him. Id. ¶¶ 2-4.
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`Mr. Lombardi is trial counsel for Petitioner in patent litigation against Patent
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`Owner concerning the patent challenged in the petition (Abraxis Bioscience, LLC et
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`al. v. Actavis LLC, No. 2:16-cv-01925-JMV-MF (D.N.J.)). Id. at ¶ 8. As a result of
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`Mr. Lombardi’s involvement as trial counsel for Petitioner in co-pending district
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`court litigation over the involved patent, Mr. Lombardi has obtained substantial
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`familiarity with the involved patent, the prior art, and the various issues raised in this
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`Patent No. 7,923,536 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
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`litigation experience and his familiarity with the instant Petition, the cited materials,
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`and the patented technology, Mr. Lombardi has established familiarity with the
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`subject matter at issue in this proceeding. Id.
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`Mr. Lombardi has read and will comply with the Office Patent Trial Practice
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`Guide and the Board’s Rules for Practice for Trials set forth in part 42 of the C.F.R.,
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`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.
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`§ 11.19(a). Id. ¶¶ 5-6.
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`In the last three years, Mr. Lombardi was admitted pro hac vice in IPR2015-
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`00864, Paper 51 (Nov. 5, 2015) and IPR2015-00865, Paper 51 (Nov. 5, 2015). Id.
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`¶ 7. Mr. Lombardi has not applied to appear pro hac vice in the last three years in
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`any other matter before the Board. Id.
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`Given that Mr. Lombardi is a trusted advisor to Petitioner on matters involving
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`the litigation of patent disputes and his familiarity with the subject matter at issue in
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`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.
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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
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`exists for the Board to recognize Mr. Klein pro hac vice.
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`Lead counsel for this proceeding, Samuel S. Park, is a registered practitioner
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`(Reg. No. 59,656).
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`Mr. Klein is an experienced litigation attorney with 20 years of litigation
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`experience. Ex. 1028 ¶ 8. He has been involved in numerous patent infringement
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`cases in federal district courts across the country. Id. He has experience in various
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`aspects of patent infringement matters, including jury and bench trials, Markman
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`hearings, and summary judgment hearings. Id. He has argued in multiple patent
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`cases in federal courts. Id.
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`Mr. Klein is a member in good standing of the District of Columbia and
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`Virginia Bars and is admitted to practice before the United States Supreme Court,
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`United States Court of Appeals for the Federal Circuit, United States Court of
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`Appeals for the Third Circuit, United States Court of Appeals for the Fourth Circuit,
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`United States Court of Appeals for the Seventh Circuit, United States Court of
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`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
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`the District of Arizona, United States Court for the District of Columbia, United
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`States Court for the District of Maryland, United States Court for the Eastern District
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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
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`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
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`District of Massachusetts, United States Court for the District of New Jersey, United
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`States Court for the Middle District of North Carolina, United States Bankruptcy
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`Court for the Eastern District of Virginia Alexandria Division, Supreme Court for
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`the Commonwealth of Virginia, and the Superior Court of the District of Columbia.
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`Id. ¶ 1.
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`Mr. Klein has not been suspended or disbarred from practice, has never had
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`any application for admission to practice denied, and has never had any sanctions or
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`contempt citations imposed against him. Id. ¶¶ 2-4.
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`Mr. Klein is trial counsel for Petitioner in patent litigation against Patent
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`Owner concerning the patent challenged in the petition (Abraxis Bioscience, LLC et
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`al. v. Actavis LLC, No. 2:16-cv-01925-JMV-MF (D.N.J.)). Id. at ¶ 8. As a result of
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`Mr. Klein’s involvement as trial counsel for Petitioner in co-pending district court
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`litigation over the involved patent, Mr. Klein has obtained substantial familiarity
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`with the involved patent, the prior art, and the various issues raised in this
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`proceeding. Id. Moreover, Mr. Klein has reviewed the involved patent, the Petition,
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`the prior art, and all other cited materials. Id. Given his extensive patent litigation
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`experience and his familiarity with the instant Petition, the cited materials, and the
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`patented technology, Mr. Klein has established familiarity with the subject matter at
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`issue in this proceeding. Id.
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`Mr. Klein has read and will comply with the Office Patent Trial Practice Guide
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`and the Board’s Rules for Practice for Trials set forth in part 42 of the C.F.R., and
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`he agrees to be subject to the USPTO Rules of Professional Conduct set forth in 37
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`C.F.R. §§ 11.101 et seq., and to disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
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`Id. ¶¶ 5-6.
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`In the last three years, Mr. Klein was admitted pro hac vice in IPR2014-01126,
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`Paper 17 (Sept. 29, 2014), IPR2015-00864, Paper 51 (Nov. 5, 2015), IPR2015-
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`00865, Paper 51 (Nov. 5, 2015), and IPR2017-01115, Paper 12 (July 18, 2017). Id.
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`¶ 7. Mr. Klein has not applied to appear pro hac vice in the last three years in any
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`other matter before the Board. Id.
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`Given that Mr. Klein is a trusted advisor to Petitioner on matters involving the
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`litigation of patent disputes and his familiarity with the subject matter at issue in this
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`proceeding, Petitioner respectfully submits that it has shown good cause for the
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`Board to recognize Mr. Klein as counsel pro hac vice during this proceeding.
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`C. Kevin E. Warner
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`Pursuant to the Notice, the following statement of facts shows that good cause
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`exists for the Board to recognize Mr. Warner pro hac vice.
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`Lead counsel for this proceeding, Samuel S. Park, is a registered practitioner
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`(Reg. No. 59,656).
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`Mr. Warner is an experienced litigation attorney with 13 years of litigation
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`experience. Ex. 1029 ¶ 8. He has been involved in numerous patent infringement
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`cases in federal district courts across the country. Id. He has experience in various
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`aspects of patent infringement matters, including jury and bench trials, Markman
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`hearings, and summary judgment hearings. Id.
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`Mr. Warner is a member in good standing of the Illinois Bar and is admitted
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`to practice before the United States Court of Appeals for the Federal Circuit, United
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`States Court for the Central District of Illinois, United States Court for the Northern
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`District of Illinois, and the United States Court for the Eastern District of Michigan.
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`Id. ¶ 1.
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`Mr. Warner has not been suspended or disbarred from practice, has never had
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`any application for admission to practice denied, and has never had any sanctions or
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`contempt citations imposed against him. Id. ¶¶ 2-4.
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`Mr. Warner is trial counsel for Petitioner in patent litigation against Patent
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`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
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`Mr. Warner’s involvement as trial counsel for Petitioner in co-pending district court
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`litigation over the involved patent, Mr. Warner has obtained substantial familiarity
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`IPR2017-01103
`Patent No. 7,923,536 B2
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`with the involved patent, the prior art, and the various issues raised in this
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`proceeding. Id. Moreover, Mr. Warner has reviewed the involved patent, the
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`Petition, the prior art, and all other cited materials. Id. Given his extensive patent
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`litigation experience and his familiarity with the instant Petition, the cited materials,
`
`and the patented technology, Mr. Warner has established familiarity with the subject
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`matter at issue in this proceeding. Id.
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`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.,
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`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.
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`§ 11.19(a). Id. ¶¶ 5-6.
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`Mr. Warner has not applied to appear pro hac vice in the last three years in
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`any other matter before the Board. Id.
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`Given that Mr. Warner is a trusted advisor to Petitioner on matters involving
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`the litigation of patent disputes and his familiarity with the subject matter at issue in
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`this proceeding, Petitioner respectfully submits that it has shown good cause for the
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`Board to recognize Mr. Warner as counsel pro hac vice during this proceeding.
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`D. Eimeric Reig-Plessis
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`Pursuant to the Notice, the following statement of facts shows that good cause
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`exists for the Board to recognize Mr. Reig-Plessis pro hac vice.
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`IPR2017-01103
`Patent No. 7,923,536 B2
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`Lead counsel for this proceeding, Samuel S. Park, is a registered practitioner
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`(Reg. No. 59,656).
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`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
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`in various aspects of patent infringement matters and has participated in multiple
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`patent cases in federal courts. Id.
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`Mr. Reig-Plessis is a member in good standing of the Bars of the District of
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`Columbia and the State of New York, and is admitted to practice in the United States
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`Courts of Appeals for the Seventh and Federal Circuits. Id. ¶ 1.
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`Mr. Reig-Plessis has not been suspended or disbarred from practice, has never
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`had any application for admission to practice denied, and has never had any
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`sanctions or contempt citations imposed against him. Id. ¶¶ 2-4.
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`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
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`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
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`10
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`IPR2017-01103
`Patent No. 7,923,536 B2
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`extensive patent litigation experience and his familiarity with the instant Petition,
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`the cited materials, and the patented technology, Mr. Reig-Plessis has established
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`familiarity with the subject matter at issue in this proceeding. Id.
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`Mr. Reig-Plessis has read and will comply with the Office Patent Trial
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`Practice Guide and the Board’s Rules for Practice for Trials set forth in part 42 of
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`the C.F.R., and he agrees to be subject to the USPTO Rules of Professional Conduct
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`set forth in 37 C.F.R. §§ 11.101 et seq., and to disciplinary jurisdiction under 37
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`C.F.R. § 11.19(a). Id. ¶¶ 5-6.
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`In the last three years, Mr. Reig-Plessis was admitted pro hac vice in IPR2017-
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`01115, Paper 12 (July 18, 2017). Id. ¶ 7. Mr. Reig-Plessis has not applied to appear
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`pro hac vice in the last three years in any other matter before the Board. Id.
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`Given that Mr. Reig-Plessis’ familiarity with the subject matter at issue in this
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`proceeding, Petitioner respectfully submits that it has shown good cause for the
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`Board to recognize Mr. Reig-Plessis as counsel pro hac vice during this proceeding.
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`III. DECLARATIONS OF INDIVIDUALS SEEKING TO APPEAR
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`This Motion is accompanied by Declarations of Mr. Lombardi, Mr. Klein,
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`Mr. Warner, and Mr. Reig-Plessis.
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`IPR2017-01103
`Patent No. 7,923,536 B2
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`Dated: November 3, 2017
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`WINSTON & STRAWN LLP
`1700 K Street NW
`Washington, DC 20006
`Telephone: 202-282-5000
`Fax: 202-282-5100
`Email: AbraxaneIPR@winston.com
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`
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`Respectfully submitted,
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`
` /Samuel S. Park/
`Samuel S. Park
`Reg. No. 59,656
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`Lead Counsel for Petitioner
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`IPR2017-01103
`Patent No. 7,923,536 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
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`3, 2017, I caused to be served true and correct copies of the foregoing
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`“PETITIONER’S UNOPPOSED MOTION FOR PRO HAC VICE ADMISSION
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`OF CHARLES B. KLEIN, KEVIN E. WARNER, AND EIMERIC REIG-PLESSIS
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`UNDER 37 C.F.R. § 42.10” by electronic mail on the following attorneys:
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`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
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`Backup Counsel:
`Anthony M. Insogna (Reg. No. 35,203)
`aminsogna@jonesday.com
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`Cary Miller, Ph.D. (Reg. No. 54,708)
`cmiller@jonesday.com
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`Lisamarie LoGiudice, Ph.D. (Reg. No. 71,047)
`llogiudice@jonesday.com
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`F. Dominic Cerrito (Reg. No. 38,100)
`nickcerrito@quinnemanuel.com
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`Frank C. Calvosa (Reg. No. 69,064)
`frankcalvosa@quinnemanuel.com
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`Andrew S. Chalson (pro hac vice)
`Andrewchalson@quinnemanuel.com
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`IPR2017-01103
`Patent No. 7,923,536 B2
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`Dated: November 3, 2017
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`WINSTON & STRAWN LLP
`1700 K Street NW
`Washington, DC 20006
`Telephone: 202-282-5000
`Fax: 202-282-5100
`Email: AbraxaneIPR@winston.com
`
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`Respectfully submitted,
`
`
` /Samuel S. Park/
`Samuel S. Park
`Reg. No. 59,656
`
`Lead Counsel for Petitioner
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`14
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