Trials@uspto.gov
`571-272-7822
`
`Paper No. 18
`Entered: December 5, 2017
`
`
`
`
`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 7,820,788 B2
`Case IPR2017-01103, Patent 7,923,536 B2, and
`Case IPR2017-01104, Patent 8,138,229 B2
` _____________
`
`Before JEFFREY N. FREDMAN, RAMA G. ELLURU, and SUSAN L. C.
`MITCHELL, Administrative Patent Judges.
`
`FREDMAN, Administrative Patent Judge.
`
`
`
`ORDER
`Petitioner’s Motions for Admission Pro Hac Vice of
`George C. Lombardi, Charles B. Klein, Kevin E. Warner, and Eimeric
`Reig-Plessis
`37 C.F.R. § 42.10
`
`
`
`
`
`
`571-272-7822
`
`Paper No. 18
`Entered: December 5, 2017
`
`
`
`
`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 7,820,788 B2
`Case IPR2017-01103, Patent 7,923,536 B2, and
`Case IPR2017-01104, Patent 8,138,229 B2
` _____________
`
`Before JEFFREY N. FREDMAN, RAMA G. ELLURU, and SUSAN L. C.
`MITCHELL, Administrative Patent Judges.
`
`FREDMAN, Administrative Patent Judge.
`
`
`
`ORDER
`Petitioner’s Motions for Admission Pro Hac Vice of
`George C. Lombardi, Charles B. Klein, Kevin E. Warner, and Eimeric
`Reig-Plessis
`37 C.F.R. § 42.10
`
`
`
`
`
`
`
`IPR2017-01101 (Patent 7,820,788 B2)
`IPR2017-01103 (Patent 7,923,536 B2)
`IPR2017-01104 (Patent 8,138,229 B2)
`
`
`Petitioner, Actavis LLC (“Actavis”), filed four Motions for Admission Pro
`Hac Vice of George C. Lombardi, Charles B. Klein, Kevin E. Warner, and Eimeric
`Reig-Plessis pursuant to 37 C.F.R. § 42.10(c) in IPR2017-01101 (“Mot.,” Paper
`11), IPR2017-01103 (IPR2017-01103, Paper 11), and IPR2017-01104 (IPR2017-
`01104, Paper 11), accompanied by Declarations of George C. Lombardi, Charles
`B. Klein, Kevin E. Warner, and Eimeric Reig-Plessis in support of the Motions
`(Ex. 1027–1030). Petitioner attests that Patent Owner does not oppose the motion.
`Paper 11, 1.
`
`For the reasons provided below, Petitioner’s Motion is granted.
`
`Pursuant to 37 C.F.R. § 42.10(c), 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. In its notice authorizing motions for
`pro hac vice admission, the Board requires a statement of facts showing there is
`good cause for the Board to recognize counsel pro hac vice and an affidavit or
`declaration of the individual seeking to appear in this proceeding.
`
`In this proceeding, lead counsel for Petitioner, Mr. Samuel S. Park, is a
`registered practitioner. Paper 11. Petitioner’s motions indicate that there is good
`cause for the Board to recognize each of George C. Lombardi, Charles B. Klein,
`Kevin E. Warner, and Eimeric Reig-Plessis (Mot. 2–11), and is supported by their
`declarations. Ex. 1027–1030.
`
`Mr. Lombardi
`
`Mr. Lombardi declares that he has extensive experience litigating patent
`cases. Ex. 1027 ¶ 8. Mr. Lombardi also declares that he has established familiarity
`
` 2
`
`
`
`
`
`
`
`IPR2017-01101 (Patent 7,820,788 B2)
`IPR2017-01103 (Patent 7,923,536 B2)
`IPR2017-01104 (Patent 8,138,229 B2)
`
`with the subject matter at issue in the instant proceedings, as he served “as trial
`counsel for Petitioner in patent litigation against Patent Owner concerning the
`patent challenged by the Petition.” Id. Mr. Lombardi further declares “I have
`obtained substantial familiarity with the involved patent, the prior art, and the
`various issues raised in this proceeding.” Id. Additionally, Mr. Lombardi’s
`declaration complies with the requirements set forth in the Board’s order
`authorizing motions for pro hac vice admission. Id. ¶¶ 1–8.
`
`On this record, we determine that Petitioner has demonstrated that Mr.
`Lombardi has sufficient legal and technical qualifications to represent Petitioner in
`the instant proceeding. We further recognize that there is a need for Petitioner to
`have its counsel in the related district court litigation involved in this proceeding.
`See Mot. 3–4.
`
`For the foregoing reasons, Petitioner has established that there is good cause
`for Mr. Lombardi’s pro hac vice admission in these proceedings. Mr. Lombardi
`will be permitted to appear pro hac vice in these proceedings as back-up counsel
`only. See 37 C.F.R. § 42.10(c).
`
`Mr. Klein
`
`Mr. Klein declares that he has extensive experience litigating patent cases.
`Ex. 1028 ¶ 8. Mr. Klein also declares that he has established familiarity with the
`subject matter at issue in the instant proceeding, as he served “as trial counsel for
`Petitioner in patent litigation against Patent Owner concerning the patent
`challenged by the Petition.” Id. Mr. Klein further declares “I have obtained
`substantial familiarity with the involved patent, the prior art, and the various issues
`
` 3
`
`
`
`
`
`
`
`IPR2017-01101 (Patent 7,820,788 B2)
`IPR2017-01103 (Patent 7,923,536 B2)
`IPR2017-01104 (Patent 8,138,229 B2)
`
`raised in this proceeding.” Id. Additionally, Mr. Klein’s declaration complies with
`the requirements set forth in the Board’s order authorizing motions for pro hac vice
`admission. Id. ¶¶ 1–8.
`
`On this record, we determine that Petitioner has demonstrated that Mr. Klein
`has sufficient legal and technical qualifications to represent Petitioner in the instant
`proceeding. We further recognize that there is a need for Petitioner to have its
`counsel in the related district court litigation involved in this proceeding. See Mot.
`5–7.
`
`For the foregoing reasons, Petitioner has established that there is good cause
`for Mr. Klein’s pro hac vice admission in these proceedings. Mr. Klein will be
`permitted to appear pro hac vice in these proceedings as back-up counsel only. See
`37 C.F.R. § 42.10(c).
`
`Mr. Warner
`
`Mr. Warner declares that he has extensive experience litigating patent cases.
`Ex. 1029 ¶ 8. Mr. Warner also declares that he has established familiarity with the
`subject matter at issue in the instant proceeding, as he served “as trial counsel for
`Petitioner in patent litigation against Patent Owner concerning the patent
`challenged by the Petition.” Id. Mr. Warner further declares “I have obtained
`substantial familiarity with the involved patent, the prior art, and the various issues
`raised in this proceeding.” Id. Additionally, Mr. Warner’s declaration complies
`with the requirements set forth in the Board’s order authorizing motions for pro
`hac vice admission. Id. ¶¶ 1–8.
`
` 4
`
`
`
`
`
`
`
`IPR2017-01101 (Patent 7,820,788 B2)
`IPR2017-01103 (Patent 7,923,536 B2)
`IPR2017-01104 (Patent 8,138,229 B2)
`
`
`On this record, we determine that Petitioner has demonstrated that Mr.
`Warner has sufficient legal and technical qualifications to represent Petitioner in
`the instant proceeding. We further recognize that there is a need for Petitioner to
`have its counsel in the related district court litigation involved in this proceeding.
`See Mot. 7–9.
`
`For the foregoing reasons, Petitioner has established that there is good cause
`for Mr. Warner’s pro hac vice admission in these proceedings. Mr. Warner will be
`permitted to appear pro hac vice in these proceedings as back-up counsel only. See
`37 C.F.R. § 42.10(c).
`
`Mr. Reig-Plessis
`
`Mr. Reig-Plessis declares that he has extensive experience litigating patent
`cases. Ex. 1030 ¶ 8. Mr. Reig-Plessis also declares that he has established
`familiarity with the subject matter at issue in the instant proceeding, as he served
`“as trial counsel for Petitioner in patent litigation against Patent Owner concerning
`the patent challenged by the Petition.” Id. Mr. Reig-Plessis further declares “I
`have obtained substantial familiarity with the involved patent, the prior art, and the
`various issues raised in this proceeding.” Id. Additionally, Mr. Reig-Plessis’s
`declaration complies with the requirements set forth in the Board’s order
`authorizing motions for pro hac vice admission. Id. ¶¶ 1–8.
`
`On this record, we determine that Petitioner has demonstrated that Mr. Reig-
`Plessis has sufficient legal and technical qualifications to represent Petitioner in the
`instant proceeding. We further recognize that there is a need for Petitioner to have
`
` 5
`
`
`
`
`
`
`
`IPR2017-01101 (Patent 7,820,788 B2)
`IPR2017-01103 (Patent 7,923,536 B2)
`IPR2017-01104 (Patent 8,138,229 B2)
`
`its counsel in the related district court litigation involved in this proceeding. See
`Mot. 9–11.
`
`For the foregoing reasons, Petitioner has established that there is good cause
`for Mr. Reig-Plessis’s pro hac vice admission in these proceedings. Mr. Reig-
`Plessis will be permitted to appear pro hac vice in these proceedings as back-up
`counsel only. See 37 C.F.R. § 42.10(c).
`
`It is
`ORDERED that Petitioner’s motions for pro hac vice admission of Mr.
`Lombardi, Mr. Klein, Mr. Warner, and Mr. Reig-Plessis are granted; Mr.
`Lombardi, Mr. Klein, Mr. Warner, and Mr. Reig-Plessis are authorized to represent
`Petitioner only as back-up counsel in the instant proceedings, IPR2017-01101, IPR
`2017-01103, and IPR2017-01104;
`FURTHER ORDERED that Petitioner is to continue to have a registered
`practitioner represent it as lead counsel for the instant proceedings;
`FURTHER ORDERED that Mr. Lombardi, Mr. Klein, Mr. Warner, and Mr.
`Reig-Plessis are to comply with the Office Patent Trial Practice Guide and the
`Board’s Rules of Practice for Trials, as set forth in Part 42 of Title 37, Code of
`Federal Regulations; and
`FURTHER ORDERED that Mr. Lombardi, Mr. Klein, Mr. Warner, and Mr.
`Reig-Plessis are to be subject to the Office’s disciplinary jurisdiction under 37
`C.F.R. § 11.19(a), and the USPTO Rules of Professional Conduct set forth in 37
`C.F.R. §§ 11.101 et. seq.
`
` 6
`
`
`
`
`
`
`
`IPR2017-01101 (Patent 7,820,788 B2)
`IPR2017-01103 (Patent 7,923,536 B2)
`IPR2017-01104 (Patent 8,138,229 B2)
`
`PETITIONER:
`Samuel S. Park
`George C. Lombardi
`Charles B. Klein
`Kevin E. Warner
`Eimeric Reig-Plessis
`WINSTON & STRAWN LLP
`AbraxaneIPR@winston.com
`
`PATENT OWNER:
`J. Patrick Elsevier
`Anthony M. Insogna
`Cary Miller
`Lisamarie LoGiudice
`JONES DAY
`jpelsevier@jonesday.com
`aminsogna@jonesday.com
`cmiller@jonesday.com
`llogiudice@jonesday.com
`
`F. Dominic Cerrito
`Andrew S. Chalson
`Frank C. Calvosa
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`nickcerrito@quinnemanuel.com
`andrewchalson@quinnemanuel.com
`frankcalvosa@quinnemanuel.com
`
`
` 7
`
`
`
`
`
`
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