UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MICRO LABS LIMITED AND MICRO LABS USA INC.
`
`Petitioners,
`
`V.
`
`ERIC J. LOBENFELD, ESQ., UNDER 37 C.F.R. § 42.10(c)
`
`PATENT OWNERS’ MOTION FOR PRO HAC VICE ADMISSION OF
`
`SANTEN PHARMACEUTICAL CO., LTD. AND
`
`ASAHI GLASS CO., LTD.
`Patent Owners.
`
`Case IPR2017-01434
`
`US. Patent No. 5,886,035
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MICRO LABS LIMITED AND MICRO LABS USA INC.
`
`Petitioners,
`
`V.
`
`ERIC J. LOBENFELD, ESQ., UNDER 37 C.F.R. § 42.10(c)
`
`PATENT OWNERS’ MOTION FOR PRO HAC VICE ADMISSION OF
`
`SANTEN PHARMACEUTICAL CO., LTD. AND
`
`ASAHI GLASS CO., LTD.
`Patent Owners.
`
`Case IPR2017-01434
`
`US. Patent No. 5,886,035
`
`
`
`Relief Requested
`
`Pursuant to 37 CPR. § 42.10(c), Patent Owners Santen Pharmaceutical Co.,
`
`Ltd. (“Santen”) and Asahi Glass Co., Ltd. (“Asahi”) (together, “Patent Owners”)
`
`respectfully request that the Patent Trial and Appeal Board (“the Board”) recognize
`
`this proceeding.
`
`In an Inter Partes Review (“IPR”), the Board has discretion under 37 CPR.
`
`§ 42.10(c) to recognize counsel pro hac vice. 37 CPR. § 42.10(c) provides that:
`
`Eric J. Lobenfeld, Esq., as counsel pro hac vice on behalf of Patent Owners during
`
`herewith (Exhibit 1) showing that Mr. Lobenfeld satisfies the requirements for pro
`
`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 and to
`
`any other conditions as the Board may impose. For example,
`
`where the lead counsel is a registered practitioner, a motion to
`
`appear pro hac vice by counsel who is not a registered
`
`practitioner may be granted upon showing that counsel is an
`
`experienced litigating attorney and has an established
`
`familiarity with the subject matter at issue in the proceeding.
`
`In support of this motion, a declaration of Eric J. Lobenfeld is submitted
`
`
`
`hac vice admission as set forth in IPR2013-00639, Paper 7, dated October 15,
`
`2013.
`
`This motion is being filed no sooner than twenty—one (21) days after service
`
`of the petition.
`
`11.
`
`Statement of Facts
`
`Based on the following facts, and supported by the Declaration of Eric J.
`
`Lobenfeld (Exhibit 1) submitted herewith, Patent Owners have established good
`
`denied admission to practice before any court or administrative body. See
`
`cause for the Board to recognize Mr. Lobenfeld pro hac vice in this matter:
`
`1.
`
`2.
`
`Lead counsel, Ms. Arlene L. Chow, is a registered practitioner.
`
`Mr. Lobenfeld is a Partner with the law firm Hogan Lovells U.S. LLP.
`
`See Lobenfeld Declaration, 111.
`
`3.
`
`Mr. Lobenfeld is a member in good standing of the State Bar of New
`
`York and numerous United States District Courts, Circuit Courts of Appeals, and
`
`the United States Supreme Court. See Lobenfeld Declaration, 112.
`
`4.
`
`Mr. Lobenfeld has been a litigating attorney for more than forty (40)
`
`years. See Lobenfeld Declaration, $13. He has been litigating patents for the
`
`past twenty-five (25) years and has been lead counsel on dozens of patent cases.
`
`Id.
`
`5.
`
`Mr. Lobenfeld has never been suspended from, disbarred from, or
`
`
`
`Lobenfeld Declaration, 11114-5.
`
`6.
`
`No sanctions or contempt citations have ever been imposed against
`
`Mr. Lobenfeld by any court or administrative body. See Lobenfeld Declaration,
`
`116.
`
`7.
`
`Mr. Lobenfeld has 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
`
`l6-cv-00353, and Santerz Pharmaceutical Co., Ltd., Asahi Glass Co., Ltd. and Oak
`
`the 37 C.F.R. See Lobenfeld Declaration, 117.
`
`8.
`
`Mr. Lobenfeld understands that he will be subject to the USPTO
`
`Rules of Professional Conduct set forth in 37 C.F.R. § 11.101 et seq. and
`
`disciplinary jurisdiction under 37 C.F.R. § 11.19(a). See Lobenfeld Declaration,
`
`118.
`
`9.
`
`In the past three (3) years, Mr. Lobenfeld has not applied to appear
`
`pro hac vice before the United States Patent and Trademark Office. See Lobenfeld
`
`Declaration, 119. Prior to that, Mr. Lobenfeld appeared pro hac vice in the
`
`following proceedings: IPR2014-00651, IPR2014-00652, IPR2014—00653,
`
`IPR2014—00654, IPR2014-00655, and IPR2014-00656. Id.
`
`10. Mr. Lobenfeld is Patent Owners’ trial counsel in the concurrent
`
`litigations Santen Pharmaceutical Co., Ltd., Asahi Glass Co., Ltd. and Oak
`
`Pharmaceuticals, Inc. v. Micro Labs Limited and Micro Labs USA Inc, Case No.
`
`
`
`Pharmaceuticals, Inc. v. Sandoz Inc., Case No. 16-cv-003 54, in the United States
`
`and the same prior art submitted by Petitioners in the Petition of this proceeding.
`
`See Lobenfeld Declaration, 1110.
`
`111. Good Cause Exists for Pro Hac Vice Admission
`
`District Court for the District of Delaware. Those cases involve the same patent
`
`proceeding involves the same patent (i.e., US. Patent No. 5,886,035) at issue in
`
`In accordance with 37 C.F.R. § 42.10(c), the Board may recognize counsel
`
`pro hac vice during a proceeding upon showing of good cause, subject to the
`
`condition that lead counsel be a registered practitioner and to any other condition
`
`the Board may impose. 37 C.F.R. § 42.10(c). Patent Owners’ lead counsel, Ms.
`
`Arlene L. Chow, is a registered practitioner. Furthermore, as supported by his
`
`Declaration, for the past 25 years, Mr. Lobenfeld has been litigating patent cases
`
`and has been lead counsel on dozens of patent cases. Mr. Lobenfeld also has
`
`developed an established familiarity with the subject matter at issue in this
`
`proceeding; he is Patent Owners’ trial counsel in their concurrent district court
`
`litigation against the Petitioners (Santen Pharmaceutical Co., Ltd, Asahi Glass
`
`Co., Ltd. and Oak Pharmaceuticals, Inc. v. Micro Labs Limited and Micro Labs
`
`USA Inc., Case No. l6-cv-00353 (D. Del.)) and district court litigation against
`
`Sandoz Inc. (Santen Pharmaceutical Co., Ltd, Asahi Glass Co., Ltd. and Oak
`
`Pharmaceuticals, Inc. v. Sandoz Inc., Case No. l6-cv—00354 (D. Del.)). This
`
`
`
`those concurrent litigations.
`
`As trial counsel for Patent Owners, Mr. Lobenfeld has been actively
`
`involved in all aspects of the concurrent district court litigations. Given his
`
`knowledge of the subject matter at issue in this proceeding and the concurrent
`
`district court litigations, Patent Owners would benefit from Mr. Lobenfeld’s
`
`expertise and involvement in this proceeding.
`
`111. Conclusion
`
`Patent Owners respectfully submit that, in light of the foregoing, there is
`
`good cause for the Board to recognize Mr. Lobenfeld as counsel pro hac vice for
`
`Patent Owners during this proceeding. This Motion for Pro Hac Vice Admission
`
`is accompanied by a Declaration of Eric J. Lobenfeld, Esq. (Exhibit 1).
`
`and Asahi Glass Co., Ltd.
`
`Registration No. 45,893
`Hogan Lovells US LLP
`875 Third Avenue
`
`Dated: June 12, 2017
`
`Respectfully submitted,
`
`/Arlene L. Chow /
`
`Arlene L. Chow
`
`Registration No. 47,489
`Ernest Yakob
`
`New York, New York 10022
`
`Telephone: (212) 918-3000
`Fax: (212) 918-3100
`
`Counselfor Patent Owners
`Santen Pharmaceutical Co., Ltd.
`
`
`
`EXHIBIT 1
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MICRO LABS LIMITED AND MICRO LABS USA INC.
`
`Petitioners,
`
`V.
`
`ERIC J. LOBENFELD, ESQ., UNDER 37 C.F.R. § 42.10(c)
`
`DECLARATION OF ERIC. J. LOBENFELD, ESQ., IN SUPPORT OF
`PATENT OWNERS’ MOTION FOR PRO HAC VICE ADMISSION OF
`
`SANTEN PHARMACEUTICAL CO., LTD. AND
`
`ASAHI GLASS CO., LTD.
`Patent Owners.
`
`Case IPR2017-01434
`
`US. Patent No. 5,886,035
`
`
`
`1, Eric J. Lobenfeld, being duly sworn and upon oath, hereby attest to the
`
`following:
`
`1.
`
`I am an attorney-at-law and a Partner with the law firm Hogan Lovells
`
`2.
`
`I am a member in good standing of the State Bar of New York and
`
`States Supreme Court.
`
`3.
`
`I have been a litigating attorney for more than forty (40) years.
`
`I
`
`have been litigating patents for the past twenty-five (25) years and have been lead
`
`counsel on dozens of patent cases.
`
`4.
`
`I have never been suspended or disbarred from practice before any
`
`court or administrative body.
`
`numerous United States District Courts, Circuit Courts of Appeals, and the United
`
`I understand that I will be subject to the USPTO Rules of Professional
`
`5.
`
`I have never been denied admission to practice before any court or
`
`administrative body.
`
`6.
`
`No sanctions or contempt citations have ever been imposed against
`
`me by any court or administrative body.
`
`7.
`
`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 37
`
`CPR.
`
`
`
`37 C.F.R.§11.19(a).
`
`9.
`
`In the past three (3) years, I have not applied to appear pro hac vice
`
`before the United States Patent and Trademark Office. Prior to that, I have
`
`appeared pro hac vice in the following proceedings:
`
`IPR2014—0065 1; IPR2014—
`
`00652; IPR2014-00653; IPR2014-00654; IPR2014-00655; and IPR2014—00656.
`
`10.
`
`I have an established familiarity with the subject matter at issue in this
`
`proceeding.
`
`I am Patent Owners’ trial counsel in the concurrent litigations Santen
`
`Pharmaceutical Co, Ltd., Asahi Glass Co., Ltd. and Oak Pharmaceuticals, Inc. v.
`
`Micro Labs Limited and Micro Labs USA Inc, Case No. l6-cv-00353, and Santen
`
`Pharmaceutical Co., Ltd., Asahi Glass Co., Ltd. and Oak Pharmaceuticals, Inc. v.
`
`Conduct set forth in 37 C.F.R. § 11.101 et seq. and disciplinary jurisdiction under
`
`statements may jeopardize the validity of US. Patent No. 5,886,035.
`
`Sandoz Inc, Case No. 16-cv-00354 (D. Del. 2016), in the United States District
`
`Court for the District of Delaware. Those cases involve the same patent and the
`
`same prior art submitted by Petitioners in the Petition of this proceeding.
`
`I hereby declare that all statements made herein of my own knowledge are
`
`true and that all statements made on information and belief are believed to be true;
`
`and further that these statements are made with the knowledge that willful false
`
`statements and the like so made are punishable by fine or imprisonment, or both
`
`under section 1001 of Title 18 of the United States Code and that such willful false
`
`
`
`Executed on June 12, 2017, in New Yor
`
`Lobenfeld
`
`HOG N LOVELLS US LLP
`
`875 bird Avenue
`
`New York, New York 10022
`Telephone: (212) 918-3000
`Fax: (212) 918—3100
`
`Email: eric.lobenfeld@hoganlove11s.com
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR § 42.6(e), the undersigned certifies that on June 12,
`
`2017, a complete and entire copy of this Patent Owners’ Motion for Pro Hac Vice
`
`Admission of Eric J. Lobenfeld, Esq. was provided via electronic mail to the
`
`1200 Seventeenth Street, NW
`Washington, DC 20036
`Tel.: (202) 663—8000
`Fax.: (202) 663-8007
`Email: cedric.tan
`.illsbu
`
`Registration No. 47,489
`
`attorneys of record for Petitioners:
`
`Cedric C.Y. Tan, Reg. No. 56,082
`PILLSBURY WINTHROP
`
`SHAW PITTMAN LLP
`
`law.com
`
`Sean M. Weinman, Reg. No. 69,515
`PILLSBURY WINTHROP
`
`SHAW PITTMAN LLP
`
`1650 Tysons Boulevard, 14th Floor
`McLean, VA 22102
`
`Tel.: (703) 770-7511
`Fax.: (703) 770-4856
`Email: sean.weinman@pillsburylawcom
`
`MicroLabsIPRgcgpillsburylawcom
`
`/ Arlene L. Chow /
`
`Arlene L. Chow
`
`
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