UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PFIZER, INC.,
`Petitioner,
`
`v.
`
`GENENTECH, INC.,
`Patent Owner,
`____________
`
`Case IPR2017-01488
`Patent 6,407,213 B2
`____________
`
`
`PETITIONER’S MOTION FOR THE PRO HAC VICE
`ADMISSION OF SARAH K. TSOU
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PFIZER, INC.,
`Petitioner,
`
`v.
`
`GENENTECH, INC.,
`Patent Owner,
`____________
`
`Case IPR2017-01488
`Patent 6,407,213 B2
`____________
`
`
`PETITIONER’S MOTION FOR THE PRO HAC VICE
`ADMISSION OF SARAH K. TSOU
`
`
`
`IPR2017-01488
`Petitioner’s Motion for the Pro Hac Vice Admission of Sarah K. Tsou
`
`
`TABLE OF CONTENTS
`RELIEF REQUESTED ................................................................................... 1
`GOVERNING LAW, RULES, AND PRECEDENT ...................................... 1
`STATEMENT OF FACTS .............................................................................. 3
`A. Mrs. Tsou Meets the Requirements for Pro Hac Vice
`Admission .............................................................................................. 3
`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION
`OF MRS. TSOU IN THIS PROCEEDING ..................................................... 5
`CONCLUSION ................................................................................................ 5
`
`I.
`II.
`III.
`
`V.
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`
`
`
`
`
`
`i
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`IPR2017-01488
`Petitioner’s Motion for the Pro Hac Vice Admission of Sarah K. Tsou
`
`
`TABLE OF AUTHORITIES
`
`
`Cases
`United Patents, Inc. v. Parallel Iron, LLC,
`IPR 2013-00639 ...................................................................................................... 2
`Other Authorities
`37 C.F.R. § 11.19(a) ...............................................................................................2, 4
`37 C.F.R. § 42.10(c) ...............................................................................................1, 5
`37 C.F.R. § 11.101 .................................................................................................2, 4
`
`
`
`
`ii
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`IPR2017-01488
`Petitioner’s Motion for the Pro Hac Vice Admission of Sarah K. Tsou
`
`
`I.
`
`RELIEF REQUESTED
`Pursuant to 37 C.F.R. § 42.10(c), Petitioner Pfizer, Inc., (“Petitioner”)
`
`respectfully moves the Patent Trial & Appeal Board (“Board”) for the pro hac vice
`
`admission of Sarah K. Tsou in this proceeding.
`
`II. GOVERNING LAW, RULES, AND PRECEDENT
`The Board is authorized to recognize counsel pro hac vice pursuant to 37
`
`C.F.R. § 42.10(c), which provides that:
`
`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.
`
`The Board has stated that a motion for admission pro hac vice must meet the
`
`following requirements:
`
`a. Contain a statement of facts showing there is good cause for the
`Board to recognize counsel pro hac vice during the proceeding.
`
`b. Be accompanied by an affidavit or declaration of the individual
`seeking to appear attesting to the following:
`
`i. Membership in good standing of the Bar of at least one State
`or the District of Columbia;
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`1
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`IPR2017-01488
`Petitioner’s Motion for the Pro Hac Vice Admission of Sarah K. Tsou
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`ii. No suspensions or disbarments from practice before any court
`or administrative body;
`
`iii. No application for admission to practice before any court or
`administrative body ever denied;
`
`iv. No sanctions or contempt citations imposed by any court or
`administrative body;
`
`v. The individual seeking to appear 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 37 C.F.R.;
`
`vi. The individual 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);
`
`vii. All other proceedings before the Office for which the
`individual has applied to appear pro hac vice in the last three (3)
`years; and
`
`viii. Familiarity with the subject matter at issue in the proceeding.
`
`United Patents, Inc. v. Parallel Iron, LLC, IPR 2013-00639 Paper 7 at 3–4 (PTAB
`
`Oct. 15, 2013); see also IPR2017-01488 Paper 3 at 2 (PTAB Jun. 5, 2017) (“[Pro
`
`hac vice] motions shall be filed in accordance with the ‘Order -- Authorizing Motion
`
`for Pro Hac Vice Admission’ in Case IPR2013-00639, Paper 7, a copy of which is
`
`available on the Board Web site under ‘Representative Orders, Decisions, and
`
`Notices.’”).
`
`2
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`IPR2017-01488
`Petitioner’s Motion for the Pro Hac Vice Admission of Sarah K. Tsou
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`III. STATEMENT OF FACTS
`Based on the following facts, supported by her declaration, Petitioner requests
`
`that Mrs. Tsou be admitted pro hac vice in this proceeding. As an initial matter, the
`
`Petitioner’s lead counsel in this proceeding, Amanda Hollis (No. 55,629), is a
`
`registered practitioner.
`
`A. Mrs. Tsou Meets the Requirements for Pro Hac Vice Admission
`1. Mrs. Tsou has approximately ten years of experience as a litigation attorney, who
`
`specializes in patent litigation. Mrs. Tsou represents clients in patent litigation
`
`matters in various United States District Courts. Mrs. Tsou has experience with
`
`numerous matters in the life sciences and pharmaceuticals arts, and she has
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`particular experience relevant to the technological and legal matters at issue in
`
`this proceeding. Specifically, Mrs. Tsou has represented Petitioner in a number
`
`of matters related to monoclonal antibody therapies and antibodies prepared by
`
`humanization methods.
`
`2. Mrs. Tsou is very familiar with U.S. Patent No. 6,407,213, with the legal subject
`
`matter, technical subject matter, and prior art discussed in Petitioner’s Request
`
`for Inter Partes Review of the U.S. Patent No. 6,407,213, which forms the basis
`
`for this proceeding. Mrs. Tsou has personally reviewed the patent at issue, as
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`well as the prosecution history, submissions filed in this proceeding, and
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`accompanying declaration and exhibits.
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`3
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`IPR2017-01488
`Petitioner’s Motion for the Pro Hac Vice Admission of Sarah K. Tsou
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`3. Mrs. Tsou is a member in good standing of the Bar of the State of New York and
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`is admitted to practice before the United States District Court for the Southern
`
`District of New York.
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`4. Mrs. Tsou has never been suspended or disbarred from practice before any court
`
`or administrative body.
`
`5. Mrs. Tsou has never had a court or administrative body deny an application for
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`admission to practice.
`
`6. Mrs. Tsou has never been sanctioned or cited for contempt by any court or
`
`administrative body.
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`7. Mrs. Tsou 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 37 C.F.R.
`
`8. Mrs. Tsou agrees to be subject to the United States Patent and Trademark Office
`
`Code of Professional Responsibility set forth in 37 C.F.R. §§ 11.101 et seq. and
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`disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
`
`9. Mrs. Tsou has been granted pro hac vice admission in three proceedings before
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`the U.S. Patent and Trademark Office to date (IPR2017-00804, IPR2017-00805,
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`and IPR2017-00737).
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`10. Petitioner has been informed that Patent Owner does not oppose this motion.
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`4
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`IPR2017-01488
`Petitioner’s Motion for the Pro Hac Vice Admission of Sarah K. Tsou
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`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION OF
`MRS. TSOU IN THIS PROCEEDING
`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 any other conditions the Board may impose. 37 C.F.R. § 42.10(c).
`
`The facts contained in the Statement of Facts above and in the Tsou
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`Declaration establish that there is good cause to admit Mrs. Tsou pro hac vice in this
`
`proceeding under 37 C.F.R. § 42.10. Lead and back-up counsel are registered
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`practitioners, Mrs. Tsou is an experienced litigation attorney, and Mrs. Tsou has
`
`familiarity with the subject matter at issue in this proceeding. Mrs. Tsou has been,
`
`and continues to be, actively involved in the strategic, factual, and technical aspects
`
`of this matter. In view of Mrs. Tsou’s extensive patent litigation experience and her
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`knowledge of the subject matter of this proceeding, the Petitioner has a substantial
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`need for Mrs. Tsou’s pro hac vice admission and her involvement in the continued
`
`prosecution of this proceeding.
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`V. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that Sarah K. Tsou
`
`be admitted pro hac vice.
`
`
`
`
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`5
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`IPR2017-01488
`Petitioner’s Motion for the Pro Hac Vice Admission of Sarah K. Tsou
`
`
`Date: November 2, 2017
`
`
`
`
`
`Respectfully submitted,
`
`/Amanda Hollis/
`Amanda Hollis
`KIRKLAND & ELLIS LLP
`300 North LaSalle
`Chicago, IL 60654
`Telephone: (312) 862-2000
`Facsimile: (312) 862-2000
`Pfizer_Genentech_IPRs@kirkland.com
`
`Attorney for Petitioner
`
`6
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`IPR2017-01488
`Petitioner’s Motion for the Pro Hac Vice Admission of Sarah K. Tsou
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Motion was
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`served on November 2, 2017, via electronic service on lead and back up counsel:
`
`David.Cavanaugh@wilmerhale.com
`Owen.Allen@wilmerhale.com
`Robert.Gunther@wilmerhale.com
`abrausa@durietangri.com
`ddurie@durietangri.com
`Andrew.Danford@wilmerhale.com
`Lisa.Pirozzolo@wilmerhale.com
`Kevin.Pussia@wilmerhale.com
`
`
`
` /Amanda Hollis/
`Amanda Hollis
`
`
`
`7
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