Paper No. 17
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`MICRO LABS LIMITED AND MICRO LABS USA INC.
`Petitioners,
`
`v.
`
`SANTEN PHARMACEUTICAL CO., LTD. AND ASAHI GLASS CO., LTD.
`Patent Owners.
`_____________
`
`Inter Partes Review No. IPR2017-01434
`U.S. Patent No. 5,886,035
`
`_____________
`
`
`MOTION FOR PRO HAC VICE ADMISSION OF H. KEETO
`SABHARWAL UNDER 37 C.F.R. § 42.10(c)
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`MICRO LABS LIMITED AND MICRO LABS USA INC.
`Petitioners,
`
`v.
`
`SANTEN PHARMACEUTICAL CO., LTD. AND ASAHI GLASS CO., LTD.
`Patent Owners.
`_____________
`
`Inter Partes Review No. IPR2017-01434
`U.S. Patent No. 5,886,035
`
`_____________
`
`
`MOTION FOR PRO HAC VICE ADMISSION OF H. KEETO
`SABHARWAL UNDER 37 C.F.R. § 42.10(c)
`
`
`
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`
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`I.
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`RELIEF REQUESTED
`Pursuant to 37 C.F.R. § 42.10(c), Petitioners Micro Labs USA Inc. and
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`Micro Labs Limited (together, "Petitioners") respectfully request the pro hac vice
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`admission of H. Keeto Sabharwal in this proceeding.
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`II.
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`STATEMENT OF FACTS
`Based on the following facts, and supported by the Declaration of Mr.
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`Sabharwal (Ex. 1) submitted herewith, Petitioners request the pro hac vice
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`admission of H. Keeto Sabharwal in this proceeding:
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`1.
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`Petitioner's lead counsel, Cedric C.Y. Tan, is a registered practitioner.
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`2. Mr. Sabharwal is a partner at the law firm of Pillsbury Winthrop Shaw
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`Pittman LLP.
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`3. Mr. Sabharwal is an experienced patent litigation attorney and Mr.
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`Sabharwal has been a patent litigation attorney for over 20 years. (Ex. 1 at ¶ 1.)
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`Mr. Sabharwal has been litigating patent cases during this entire time period and,
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`in particular, has litigated at least 25+ patent infringement actions involving a
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`variety of pharmaceutical and life sciences technologies, and has served as lead
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`trial counsel in a large majority of these matters. (Id.)
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`4. Mr. Sabharwal has reviewed in detail the pleadings submitted by
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`Petitioner and Patent Owner in this proceeding. (Id. at ¶ 7.) And Mr. Sabharwal has
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`reviewed in detail the challenged patent, U.S. Patent No. 5,886,035 (“the '035
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`2
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`
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`patent”). (Id.) He has also reviewed in detail the relevant references, pleadings and
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`arguments set forth by both Petitioner and Patent Owner in this proceeding. (Id.)
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`5. Mr. Sabharwal has engaged in hours of strategic and substantive
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`discussions regarding this proceeding with Cedric C.Y. Tan, who serves as lead
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`counsel respectively for Petitioner in this proceeding. (Id. at ¶ 8.) Mr. Sabharwal
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`was an integral part of the strategic planning and preparation of the Petition for
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`Inter Partes Review which initiated this proceeding. (Id.) Mr. Sabharwal was
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`involved in all aspects of the Petition for Inter Partes Review, including drafting
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`and revising the Petition and the accompanying declarations in support of the
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`Petition. Mr. Sabharwal is very familiar with all aspects of this proceeding
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`including Petitioner's factual investigation and development of its unpatentability
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`positions regarding the challenged claims of the '035 patent. (Id.)
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`6. Mr. Sabharwal has also been the lead trial counsel for the Petitioner in
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`district court litigations, including Santen Pharmaceutical Co., Ltd. et al. v. Micro
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`Labs Ltd. et al., C.A. No. 16-353 (GMS) (D. Del.) which involves the '035 patent.
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`(Id. at ¶ 9.) Mr. Sabharwal will continue to serve as lead litigation counsel for
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`Petitioner in this litigation. (Id.)
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`7. Mr. Sabharwal is a member of good standing of the State Bar of New
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`York and the Bar of the District of Columbia. (Id. at ¶ 3.)
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`3
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`8. Mr. Sabharwal has never been suspended or disbarred from practice
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`before any court or administrative body. (Id. at ¶ 4.)
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`9.
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`No application of Mr. Sabharwal for admission to practice before any
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`court or administrative body has ever been ultimately denied.1 (Id. at ¶ 5.)
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`10. No sanctions or contempt citations have ever been imposed against
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`Mr. Sabharwal by any court or administrative body. (Id. at ¶ 6.)
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`11. Mr. Sabharwal 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 part 42 of
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`the C.F.R. (Id. at ¶ 10.)
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`1 The Board initially denied Mr. Sabharwal pro hac vice admission without
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`prejudice and with permission to re-file in Cases IPR2012-00022 and IPR2013-
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`00250 because the moving papers did not fully articulate his familiarity with the
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`subject matter at issue in those proceedings. Both proceedings concerned a single
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`patent at issue. (See Case IPR2012-00022, Paper 53; Case IPR2013-00250, Paper
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`21.) After providing additional detail showing Mr. Sabharwal's familiarity with the
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`subject matter at issue in the proceedings, the Board granted Mr. Sabharwal pro
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`hac vice admission in both cases. (Id.)
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`4
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`12. Mr. Sabharwal understands that he will be subject to the USPTO Code
`
`of Professional Responsibility set forth in 37 C.F.R. §§ 10.20 et seq. and
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`disciplinary jurisdiction under 37 C.F.R. § 11.19(a). (Id. at ¶ 11.)
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`13. Mr. Sabharwal has applied to appear pro hac vice in the following
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`proceeding before the Office in the last three (3) years: Case IPR2014-00876. (Id.
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`at ¶ 12.)
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`III. GOOD CAUSE EXISTS FOR PRO HAC VICE ADMISSION
`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). Petitioner's lead counsel, Cedric C.Y. Tan, is a registered practitioner.
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`Based on the facts contained herein, as supported by Mr. Sabharwal's Declaration,
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`good cause exists to admit Mr. Sabharwal pro hac vice in this proceeding because
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`Mr. Sabharwal has an established familiarity with the subject matter at issue in this
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`proceeding. (Ex. 1 at ¶¶ 7-9.) Additionally, Mr. Sabharwal's pro hac vice
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`admission would serve to provide Petitioner with the counsel of its choice, will
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`better align administration of the IPR with potential district court litigation, and is
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`essential to settlement efforts between Patent Owner and Petitioner. Based on the
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`facts contained herein, as supported by Mr. Sabharwal’s Affidavit, good cause
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`exists to admit Mr. Sabharwal pro hac vice in this proceeding.
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`5
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`IV. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that Mr.
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`Sabharwal be admitted pro hac vice in this proceeding. This Motion for Pro Hac
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`Vice Admission is accompanied by a Declaration of H. Keeto Sabharwal (Exhibit
`
`1).
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`
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`Dated: January 3, 2018
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`
`
`
`
`By: /Cedric C.Y. Tan/
` Cedric C.Y. Tan (Reg. No. 56,082)
`PILLSBURY WINTHROP
`SHAW PITTMAN LLP
`1200 Seventeenth Street, NW
`Washington, DC 20036
`Tel.: (202) 663-8000
`Fax.: (202) 663-8007
`Email: cedric.tan@pillsburylaw.com
`
`
`6
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`MICRO LABS LIMITED AND MICRO LABS USA INC.
`Petitioners,
`
`v.
`
`SANTEN PHARMACEUTICAL CO., LTD. AND ASAHI GLASS CO., LTD.
`Patent Owners.
`_____________
`
`Inter Partes Review No. IPR2017-01434
`U.S. Patent No. 5,886,035
`
`
`
`DECLARATION OF H. KEETO SABHARWAL IN SUPPORT OF
`PETITIONER’S MOTION FOR PRO HAC VICE
`ADMISSION OF H. KEETO SABHARWAL
`
`
`
`
`
`
`
`
`
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`I, H. Keeto Sabharwal, declare as follows:
`
`1.
`
`I am an experienced litigating attorney with more than twenty (20)
`
`years of experience.
`
`2.
`
`I have been litigating patent cases during that entire time. I served as
`
`lead trial counsel in a large majority of these patent cases. Most of the
`
`patent cases in which I served as lead trial counsel involved
`
`pharmaceutical products. I have litigated at least 25+ patent
`
`infringement actions involving a variety of pharmaceutical and life
`
`science technologies.
`
`3.
`
`I am a member in good standing of State Bar of New York and the
`
`Bar of the District of Columbia.
`
`4.
`
`I have never been suspended or disbarred from practice before any
`
`court or administrative body.
`
`5.
`
`I have never been ultimately denied admission to practice before any
`
`court or administrative body. I was temporarily denied pro hac vice
`
`admission without prejudice and with permission to re-file in a single
`
`instance by the PTAB in Cases IPR2012-00022 and IPR2013-00250
`
`because the moving papers did not fully articulate my familiarity with
`
`the subject matter at issue in the proceedings. After I provided
`
`additional detail showing my familiarity with the subject matter at
`
`2
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`
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`issue in those proceedings, the Board granted my pro hac vice
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`admission in both cases. See Case IPR2012-00022, Paper 53; Case
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`IPR2013-00250, Paper 21.
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`6.
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`I have had no sanctions or contempt citations imposed against me by
`
`any court or administrative body.
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`7.
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`I have an established familiarity with the subject matter at issue in this
`
`proceeding. I have reviewed in detail U.S. Patent No. 5,886,035 ("the
`
`'035 patent"), which is the patent challenged in this proceeding. I have
`
`also reviewed the Exhibits submitted by Petitioner in this proceeding.
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`8.
`
`I have engaged in hours of strategic and substantive discussions
`
`regarding this proceeding with Cedric C.Y. Tan, who serves as lead
`
`counsel respectively for Petitioner in this proceeding. I was an integral
`
`part of the strategic planning and preparation of the Petition for Inter
`
`Partes Review which initiated this proceeding. I was involved in all
`
`aspects of this petition, including drafting and revising the Petition
`
`and the accompanying declarations in support of the Petition. I am
`
`very familiar with all aspects of this proceeding including Petitioner's
`
`factual investigation and development of its unpatentability positions
`
`regarding the challenged claims of the '035 patent.
`
`3
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`
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`9.
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`I have also been the lead trial counsel for the Petitioner in district
`
`court litigations including Santen Pharmaceuticals, et al. v. Micro
`
`Labs Ltd., et al, C.A. No. 16-353 (GMS) (Consolidated) (D. Del.)
`
`which involves the '035 patent. I will continue to serve as lead
`
`litigation counsel for Petitioner in this litigation.
`
`10.
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`I have read and will comply with the Office Patent Trial Practice
`
`Guide and the Board’s Rules of Practice for Trials set forth in part 42
`
`of the Code of Federal Regulations.
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`11.
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`I agree to be subject to the USPTO Code of Professional
`
`Responsibility set forth in 37 C.F.R. §§10.20 et seq., and to
`
`disciplinary jurisdiction under 37 C.F.R. §11.19(a).
`
`12.
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`I have applied to appear pro hac vice in the following proceeding
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`before the Office in the last three (3) years: Case IPR2014-00876.
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`13.
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`I hereby declare that all statements made herein of my own
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`knowledge are true and that all statements made on information and
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`belief are believed to be true; and further that these statements are
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`made with the knowledge that willful false statements and the like so
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`made are punishable by fine or imprisonment, or both, under Section
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`1001 of Title 18 of the United States Code and that such willful false
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`statements may jeopardize the validity of U.S. Patent No. 5,886,035.
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`4
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`Dated: January 3, 2018
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`
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`By: /H. Keeto Sabharwal/
` H. Keeto Sabharwal
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`5
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that a copy of the
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`foregoing Motion for Pro Hac Vice Admission of H. Keeto Sabharwal Under 37
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`C.F.R. § 42.10(c) and a copy of Declaration of H. Keeto Sabharwal in Support of
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`Petitioner’s Motion for Pro Hac Vice Admission were served on January 3, 2018,
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`by filing this document through the Patent Trial and Appeal Board End to End
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`System as well as delivering a copy via electronic mail upon the following attorneys
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`of record for the Patent Owners:
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`Arlene L. Chow (Reg. No. 47,489)
`arlene.chow@hoganlovells.com
`Eric J. Lobenfeld (pro hac vice)
`eric.lobenfeld@hoganlovells.com
`Ernest Yakob, Ph.D. (Reg. No. 45,893)
`ernest.yakob@hoganlovells.com
`HOGAN LOVELLS US LLP
`875 Third Avenue
`New York, NY 10022
`Tel: (212) 918-3000
`Fax: (212) 918-3100
`
`
`
` /Cedric C.Y. Tan/
` Cedric C.Y. Tan (Reg. No. 56,082)
`PILLSBURY WINTHROP
`SHAW PITTMAN LLP
`1200 Seventeenth Street, NW
`Washington, DC 20036
`Tel.: (202) 663-8000
`Fax.: (202) 663-8007
`Email: cedric.tan@pillsburylaw.com
`
`
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