`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`PFIZER, INC.,
`Petitioner,
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`v.
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`GENENTECH, INC.,
`Patent Owner.
`____________
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`Case IPR2017-01488
`Patent 6,407,213 B2
`____________
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`PETITIONER’S MOTION FOR THE PRO HAC VICE
`ADMISSION OF BENJAMIN A. LASKY
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`IPR2017-01488
`Petitioner’s Motion for the Pro Hac Vice Admission of Benjamin A. Lasky
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`TABLE OF CONTENTS
`RELIEF REQUESTED ................................................................................... 1
`GOVERNING LAW, RULES, AND PRECEDENT ...................................... 1
`STATEMENT OF FACTS .............................................................................. 3
`A. Mr. Lasky Meets the Requirements for Pro Hac Vice
`Admission .............................................................................................. 3
`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION
`OF MR. LASKY IN THIS PROCEEDING .................................................... 5
`CONCLUSION ................................................................................................ 5
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`I.
`II.
`III.
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`V.
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`IPR2017-01488
`Petitioner’s Motion for the Pro Hac Vice Admission of Benjamin A. Lasky
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`TABLE OF AUTHORITIES
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`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
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`IPR2017-01488
`Petitioner’s Motion for the Pro Hac Vice Admission of Benjamin A. Lasky
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`I.
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`RELIEF REQUESTED
`Pursuant to 37 C.F.R. § 42.10(c), Petitioner Pfizer, Inc., (“Petitioner”)
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`respectfully moves the Patent Trial & Appeal Board (“Board”) for the pro hac vice
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`admission of Benjamin A. Lasky in the above proceeding.
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`II. GOVERNING LAW, RULES, AND PRECEDENT
`The Board is authorized to recognize counsel pro hac vice pursuant to 37
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`C.F.R. § 42.10(c), which provides that:
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`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.
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`The Board has stated that a motion for admission pro hac vice must meet the
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`following requirements:
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`a. Contain a statement of facts showing there is good cause for the
`Board to recognize counsel pro hac vice during the proceeding.
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`b. Be accompanied by an affidavit or declaration of the individual
`seeking to appear attesting to the following:
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`i. Membership in good standing of the Bar of at least one State
`or the District of Columbia;
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`IPR2017-01488
`Petitioner’s Motion for the Pro Hac Vice Admission of Benjamin A. Lasky
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`ii. No suspensions or disbarments from practice before any
`court or administrative body;
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`iii. No application for admission to practice before any court or
`administrative body ever denied;
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`iv. No sanctions or contempt citations imposed by any court or
`administrative body;
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`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.;
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`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);
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`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
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`viii. Familiarity with the subject matter at issue in the
`proceeding.
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`United Patents, Inc. v. Parallel Iron, LLC, IPR2013-00639 Paper 7 at 3–4 (PTAB
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`Oct. 15, 2013). See also IPR2017-01488 Paper 3 at 2 (PTAB Jun. 5, 2017) (“[Pro
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`hac vice] motions shall be filed in accordance with the ‘Order -- Authorizing
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`Motion for Pro Hac Vice Admission’ in Case IPR2013-00639, Paper 7, a copy of
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`which is available on the Board Web site under ‘Representative Orders, Decisions,
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`and Notices.’”).
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`IPR2017-01488
`Petitioner’s Motion for the Pro Hac Vice Admission of Benjamin A. Lasky
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`III. STATEMENT OF FACTS
`Based on the following facts, supported by his declaration, Petitioner
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`requests that Mr. Lasky be admitted pro hac vice in the proceeding. As an initial
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`matter,
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`the Petitioner’s
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`lead counsel
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`in
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`the proceeding, Amanda Hollis
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`(No. 55,629), is a registered practitioner.
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`A. Mr. Lasky Meets the Requirements for Pro Hac Vice Admission
`1. Mr. Lasky has approximately fifteen (15) years of experience as a litigation
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`attorney, specializing in patent litigation. Mr. Lasky represents clients in patent
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`litigation matters in various United States District Courts and the Court of
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`Appeals for the Federal Circuit. Mr. Lasky has experience with numerous
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`matters in the life sciences and pharmaceuticals arts, and he has particular
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`experience relevant to the technological and legal matters at issue in the
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`proceeding. Specifically, Mr. Lasky has represented Petitioner and a number of
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`other clients in relation to monoclonal antibody therapies and methods of
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`preparing antibodies.
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`2. Mr. Lasky is very familiar with U.S. Patent No. 6,407,213, with the legal
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`subject matter, technical subject matter, and prior art discussed in Petitioner’s
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`Request for Inter Partes Review. Mr. Lasky has personally reviewed the patent
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`at issue, as well as the prosecution history submission filed in this proceeding,
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`and accompanying declarations and exhibits.
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`Petitioner’s Motion for the Pro Hac Vice Admission of Benjamin A. Lasky
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`3. Mr. Lasky is a member in good standing of the Bar of the State of New York.
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`He is admitted to practice before the U.S. District Courts for the Southern
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`District of New York, the Eastern District of New York and the Eastern District
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`of Michigan, and the Court of Appeals for the Federal Circuit.
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`4. Mr. Lasky has never been suspended or disbarred from practice before any
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`court or administrative body.
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`5. Mr. Lasky has never had a court or administrative body deny an application for
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`admission to practice.
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`6. Mr. Lasky has never been sanctioned or cited for contempt by any court or
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`administrative body.
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`7. Mr. Lasky has read and will comply with the Office Patent Trial Practice Guide
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`and the Board’s Rules of Practice for Trials set forth in part 42 of 37 C.F.R.
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`8. Mr. Lasky agrees to be subject to the United States Patent and Trademark
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`Office Code of Professional Responsibility set forth in 37 C.F.R. §§ 11.101 et
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`seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
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`9. Mr. Lasky has been granted for pro hac vice admission in four proceedings
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`before the U.S. Patent and Trademark Office to date IPR2014-00949, IPR2017-
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`00804, IPR2017-00805, and IPR2017-00737).
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`10. Petitioner has been informed that Patent Owner does not oppose this motion.
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`Petitioner’s Motion for the Pro Hac Vice Admission of Benjamin A. Lasky
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`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION OF
`MR. LASKY IN THIS PROCEEDING
`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 any other conditions the Board may impose. 37 C.F.R. § 42.10(c).
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`The facts contained in the Statement of Facts above, and contained in the
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`Lasky Declaration, establish that there is good cause to admit Mr. Lasky pro hac
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`vice in the proceeding under 37 C.F.R. § 42.10. Lead and back-up counsel are
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`registered practitioners, Mr. Lasky is an experienced litigation attorney, and Mr.
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`Lasky has familiarity with the subject matter at issue in the proceeding. Mr. Lasky
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`has been, and continues to be, actively involved with the strategy and fact
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`development in this matter. In view of Mr. Lasky’s extensive patent litigation
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`experience and his knowledge of the subject matter of the proceeding, the
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`Petitioner has a substantial need for Mr. Lasky’s pro hac vice admission and his
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`involvement in the continued prosecution of the proceeding.
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`V. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that Benjamin A.
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`Lasky be admitted pro hac vice.
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`IPR2017-01488
`Petitioner’s Motion for the Pro Hac Vice Admission of Benjamin A. Lasky
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`Date: November 2, 2017
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`Respectfully submitted,
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`/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
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`Attorney for Petitioner
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`IPR2017-01488
`Petitioner’s Motion for the Pro Hac Vice Admission of Benjamin A. Lasky
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`CERTIFICATE OF SERVICE
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`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:
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`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
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` /Amanda Hollis/
`Amanda Hollis
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