Trials@uspto.gov
`571-272-7822
`
`Paper No. 19
`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
`Patent Owner’s Motion for Admission Pro Hac Vice of
`Andrew S. Chalson and Daniel C. Wiesner
`37 C.F.R. § 42.10
`
`
`
`
`
`
`571-272-7822
`
`Paper No. 19
`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
`Patent Owner’s Motion for Admission Pro Hac Vice of
`Andrew S. Chalson and Daniel C. Wiesner
`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)
`
`
`Patent Owner, Abraxis Bioscience LLC (“Abraxis”), filed Motions
`(collectively referred to as “Mot.”) for Admission Pro Hac Vice of Andrew S.
`Chalson and Daniel C. Wiesner pursuant to 37 C.F.R. § 42.10(c) in IPR2017-
`01101 (IPR2017-01101, Paper 15), IPR2017-01103 (IPR2017-01103, Paper 15),
`and IPR2017-01104 (IPR2017-01104, Paper 15), accompanied by Declarations of
`Andrew S. Chalson and Daniel C. Wiesner (Ex. 2064–2065)1. Patent Owner
`attests that Petitioner does not oppose the motion. Paper 15, 2.
`
`For the reasons provided below, Patent Owner’s Motions are 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 Patent Owner, Mr. J. Patrick Elsevier, is
`a registered practitioner. Paper 15. Patent Owner’s motions indicate that there is
`good cause for the Board to recognize Andrew S. Chalson and Daniel C. Wiesner
`(Mot. 2–11), and is supported by the declarations. Ex. 2064–2065.
`
`Mr. Chalson
`
`
`1 Unless otherwise specified, paper and exhibit numbers are to CASE IPR2017-
`01101.
`
` 2
`
`
`
`
`
`
`
`IPR2017-01101 (Patent 7,820,788 B2)
`IPR2017-01103 (Patent 7,923,536 B2)
`IPR2017-01104 (Patent 8,138,229 B2)
`
`
`Mr. Chalson declares that he has experience litigating patent cases.
`Ex. 2064 ¶ 7. Mr. Chalson also declares that he has established familiarity with the
`subject matter at issue in the instant proceedings, as he served as “trial counsel for
`Abraxis in the patent litigation against Actavis concerning the patent challenged in
`the petition.” Id. Mr. Chalson further declares “I have had experience
`representing Abraxis with respect to the subject matter at issue in this inter partes
`review, including the specific patent and prior art at issue.” Id. Additionally,
`Mr. Chalson’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 Patent Owner has demonstrated that Mr.
`Chalson has sufficient legal and technical qualifications to represent Patent Owner
`in the instant proceedings. We further recognize that there is a need for Patent
`Owner to have its counsel in the related district court litigation involved in these
`proceedings. See Mot. 1–2.
`
`For the foregoing reasons, Patent Owner has established that there is good
`cause for Mr. Chalson’s pro hac vice admission in these proceedings. Mr. Chalson
`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. Wiesner
`
`Mr. Wiesner declares that he has established familiarity with the subject
`matter at issue in the instant proceedings, as he served as “trial counsel for Abraxis
`in the patent litigation against Actavis concerning the patent challenged in the
`petition.” Ex. 2064 ¶ 8. Mr. Wiesner further declares “I have had experience
`
` 3
`
`
`
`
`
`
`
`IPR2017-01101 (Patent 7,820,788 B2)
`IPR2017-01103 (Patent 7,923,536 B2)
`IPR2017-01104 (Patent 8,138,229 B2)
`
`representing Abraxis with respect to the subject matter at issue in this inter partes
`review, including the specific patent and prior art at issue.” Id. Additionally,
`Mr. Wiesner’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 Patent Owner has demonstrated that Mr.
`Wiesner has sufficient legal and technical qualifications to represent Patent Owner
`in the instant proceedings. We further recognize that there is a need for Patent
`Owner to have its counsel in the related district court litigation involved in these
`proceedings. See Mot. 2–3.
`
`For the foregoing reasons, Patent Owner has established that there is good
`cause for Mr. Wiesner’s pro hac vice admission in these proceedings. Mr. Wiesner
`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 Patent Owner’s motions for pro hac vice admission of Mr.
`Chalson and Mr. Wiesner are granted; Mr. Chalson and Mr. Wiesner are
`authorized to represent Patent Owner only as back-up counsel in the instant
`proceedings, IPR2017-01101, IPR 2017-01103, and IPR2017-01104;
`FURTHER ORDERED that Patent Owner is to continue to have a registered
`practitioner represent it as lead counsel for the instant proceedings;
`FURTHER ORDERED that Mr. Chalson and Mr. Wiesner 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
`
` 4
`
`
`
`
`
`
`
`IPR2017-01101 (Patent 7,820,788 B2)
`IPR2017-01103 (Patent 7,923,536 B2)
`IPR2017-01104 (Patent 8,138,229 B2)
`
`
`FURTHER ORDERED that Mr. Chalson and Mr. Wiesner 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.
`
` 5
`
`
`
`
`
`
`
`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
`
`
` 6
`
`
`
`
`
`
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