UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PFIZER, INC.,
`Petitioner,
`
`v.
`
`GENENTECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01489
`Patent 6,407,213 B2
`____________
`
`
`PETITIONER’S MOTION FOR THE PRO HAC VICE
`ADMISSION OF MARK C. MCLENNAN
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PFIZER, INC.,
`Petitioner,
`
`v.
`
`GENENTECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01489
`Patent 6,407,213 B2
`____________
`
`
`PETITIONER’S MOTION FOR THE PRO HAC VICE
`ADMISSION OF MARK C. MCLENNAN
`
`
`
`IPR2017-01489
`Petitioner’s Motion for the Pro Hac Vice Admission of Mark C. McLennan
`
`
`TABLE OF CONTENTS
`RELIEF REQUESTED ................................................................................... 1
`GOVERNING LAW, RULES, AND PRECEDENT ...................................... 1
`STATEMENT OF FACTS .............................................................................. 3
`A. Mr. McLennan Meets the Requirements for Pro Hac Vice
`Admission .............................................................................................. 3
`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION
`OF MR. MCLENNAN IN THIS PROCEEDING ........................................... 5
`CONCLUSION ................................................................................................ 5
`
`I.
`II.
`III.
`
`V.
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`
`
`
`
`
`
`
`i
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`IPR2017-01489
`Petitioner’s Motion for the Pro Hac Vice Admission of Mark C. McLennan
`
`
`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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`
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`IPR2017-01489
`Petitioner’s Motion for the Pro Hac Vice Admission of Mark C. McLennan
`
`
`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 Mark C. McLennan in the above 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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`IPR2017-01489
`Petitioner’s Motion for the Pro Hac Vice Admission of Mark C. McLennan
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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, IPR2013-00639 Paper 7 at 3–4 (PTAB
`
`Oct. 15, 2013). See also IPR2017-01489 Paper 3 at 2 (PTAB June 6, 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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`IPR2017-01489
`Petitioner’s Motion for the Pro Hac Vice Admission of Mark C. McLennan
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`III. STATEMENT OF FACTS
`Based on the following facts, supported by his declaration, Petitioner
`
`requests that Mr. McLennan be admitted pro hac vice in the proceeding. As an
`
`initial matter, the Petitioner’s lead counsel in the proceeding, Amanda Hollis
`
`(No. 55,629), is a registered practitioner.
`
`A. Mr. McLennan Meets the Requirements for Pro Hac Vice
`Admission
`1. Mr. McLennan has approximately four years of experience as a litigation
`
`attorney, specializing in patent litigation. Mr. McLennan represents clients in
`
`patent litigation matters in various United States District Courts and the Court
`
`of Appeals for the Federal Circuit. Mr. McLennan has experience with several
`
`matters in the life sciences and pharmaceuticals arts, and he has particular
`
`experience relevant to the technological and legal matters at issue in this
`
`proceeding. Specifically, Mr. McLennan has represented Petitioner and a
`
`number of other clients in relation to monoclonal antibody therapies and
`
`methods of preparing antibodies.
`
`2. Mr. McLennan 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
`
`Requests for Inter Partes Review. Mr. McLennan has personally reviewed the
`
`patent at issue, as well as the prosecution history, submissions filed in this
`
`proceeding, and accompanying declarations and exhibits.
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`3
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`IPR2017-01489
`Petitioner’s Motion for the Pro Hac Vice Admission of Mark C. McLennan
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`3. Mr. McLennan is a member in good standing of the Bar of the State of New
`
`York. He is admitted to practice before the U.S. District Court for the Southern
`
`District of New York and the Court of Appeals for the Federal Circuit.
`
`4. Mr. McLennan has never been suspended or disbarred from practice before any
`
`court or administrative body.
`
`5. Mr. McLennan has never had a court or administrative body deny an
`
`application for admission to practice.
`
`6. Mr. McLennan has never been sanctioned or cited for contempt by any court or
`
`administrative body.
`
`7. Mr. McLennan 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. Mr. McLennan 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 disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
`
`9. Mr. McLennan has been granted for pro hac vice admission in three
`
`proceedings before the U.S. Patent and Trademark Office to date (IPR2017-
`
`00804, IPR2017-00805, and IPR2017-00737).
`
`10. Petitioner has been informed that Patent Owner does not oppose this motion.
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`4
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`IPR2017-01489
`Petitioner’s Motion for the Pro Hac Vice Admission of Mark C. McLennan
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`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION OF
`MR. MCLENNAN 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 contained in the
`
`McLennan Declaration, establish that there is good cause to admit Mr. McLennan
`
`pro hac vice in the proceeding under 37 C.F.R. § 42.10. Lead and back-up counsel
`
`are registered practitioners, Mr. McLennan is an experienced litigation attorney,
`
`and Mr. McLennan has familiarity with the subject matter at issue in the
`
`proceeding. Mr. McLennan has been, and continues to be, actively involved with
`
`the strategy and fact development in this matter. In view of Mr. McLennan’s
`
`extensive patent litigation experience and his knowledge of the subject matter of
`
`the proceeding, the Petitioner has a substantial need for Mr. McLennan’s pro hac
`
`vice admission and his involvement in the continued prosecution of the proceeding.
`
`V. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that Mark C.
`
`McLennan be admitted pro hac vice.
`
`
`
`
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`5
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`IPR2017-01489
`Petitioner’s Motion for the Pro Hac Vice Admission of Mark C. McLennan
`
`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
`
`
`
`
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`6
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`IPR2017-01489
`Petitioner’s Motion for the Pro Hac Vice Admission of Mark C. McLennan
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`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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