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`Paper No. ____
`Date filed: February 13, 2018
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`Filed On Behalf Of:
`Novartis Pharmaceuticals Corporation
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`By:
`Nicholas N. Kallas
`NKallas@fchs.com
`ZortressAfinitorIPR@fchs.com
`(212) 218-2100
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`BRECKENRIDGE PHARMACEUTICAL, INC.,
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`Petitioner,
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`v.
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`NOVARTIS PHARMACEUTICALS CORPORATION,
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`Patent Owner.
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`Case IPR2017-01592
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`Patent No. 8,410,131
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`PATENT OWNER NOVARTIS’S MOTION FOR PRO HAC VICE
`ADMISSION OF SUSANNE L. FLANDERS UNDER 37 C.F.R. § 42.10
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`I.
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`RELIEF REQUESTED
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`Pursuant to 37 C.F.R. § 42.10(c), Patent Owner Novartis Pharmaceuticals
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`Corporation respectfully requests the pro hac vice admission of Susanne L.
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`Flanders in this proceeding.
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`This motion is being filed more than twenty one (21) days after service of
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`the Petition. Petitioner has indicated that it will not oppose this motion.
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`II. THE GOVERNING LAW, RULES, AND PRECEDENT
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`37 C.F.R. § 42.10(c) concerns motions for pro hac vice admission and states
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`as follows:
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`The Board may recognize counsel pro hac vice during a
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`proceeding upon a showing of good cause, subject to the
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`condition that lead counsel be a registered practitioner
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`and to any other conditions as the Board may impose.
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`For example, where the lead counsel is a registered
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`practitioner, a motion to appear pro hac vice by counsel
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`who is not a registered practitioner may be granted upon
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`showing that counsel is an experienced litigating attorney
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`and has an established familiarity with the subject matter
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`at issue in the proceeding.
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`1
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`The Board has stated that motions for pro hac vice admission under 37
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`C.F.R. § 42.10(c) must be filed in accordance with the “Order – Authorizing
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`Motion for Pro Hac Vice Admission” entered in Case IPR2013-00639 (Paper 7)
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`(Representative Order).
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`In that Order, the Board stated that motions for pro hac vice admission must
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`“[c]ontain a statement of facts showing there is good cause for the Board to
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`recognize counsel pro hac vice during the proceeding,” and must “[b]e
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`accompanied by an affidavit or declaration of the individual seeking to appear
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`attesting to the following:”
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`i. Membership in good standing of the Bar of at least
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`one State or the District of Columbia;
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`ii.
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`No suspensions or disbarments from practice
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`before any court or administrative body;
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`iii. No application for admission to practice before
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`any court or administrative body ever denied;
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`iv. No sanctions or contempt citations imposed by any
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`court or administrative body;
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`v.
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`The individual seeking to appear has read and will
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`comply with the Office Patent Trial Practice Guide
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`2
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`and the Board’s Rules of Practice for Trials set
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`forth in part 42 of 37 C.F.R.;
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`vi.
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`The individual will be subject to the USPTO Rules
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`of Professional Conduct set forth in 37 C.F.R. §§
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`11.101 et seq. and disciplinary jurisdiction under
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`37 C.F.R. § 11.19(a);
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`vii. All other proceedings before the Office for which
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`the individual has applied to appear pro hac vice in
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`the last three (3) years; and
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`viii. Familiarity with the subject matter at issue in the
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`proceeding.
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`III. STATEMENT OF MATERIAL FACTS
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`Based on the following facts, which are supported by the Declaration of Ms.
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`Susanne L. Flanders (Ex 2022) filed concurrently with this motion, Patent Owner
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`requests that Susanne L. Flanders be admitted pro hac vice in this proceeding:
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`1.
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`Patent Owner’s lead counsel, Nicholas N. Kallas, is a registered
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`practitioner (Reg. No. 31,530).
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`2. Ms. Flanders is a partner at the law firm of Fitzpatrick, Cella, Harper
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`& Scinto. (Ex 2022 at ¶ 3.)
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`3
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`3. Ms. Flanders is an experienced patent litigation attorney. Ms. Flanders
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`has been a patent litigation attorney for more than nine years and has
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`been litigating patent cases during this entire time period. (Id. at ¶ 4.)
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`She has been involved in inter partes review proceedings before the
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`Board. (Id.) She has been involved in numerous cases involving
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`patent validity and infringement in both the District Courts and the
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`Federal Circuit. (Id.)
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`4. Ms. Flanders is a member in good standing of the State Bars of New
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`York and New Jersey. (Id. at ¶ 5.)
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`5. Ms. Flanders has never been suspended or disbarred from practice
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`before any court or administrative body. (Id.)
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`6.
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`No application of Ms. Flanders for admission to practice before any
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`court or administrative body has ever been denied. (Id. at ¶ 6.)
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`7.
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`No sanctions or contempt citations have ever been imposed against
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`Ms. Flanders by any court or administrative body. (Id. at ¶ 7.)
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`8. Ms. Flanders 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
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`part 42 of 37 C.F.R. (Id. at ¶ 8.)
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`4
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`9. Ms. Flanders understands that she will be subject to the Office’s Rules
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`of Professional Conduct 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). (Id. at ¶ 9.)
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`10. Ms. Flanders has applied to appear pro hac vice in one other
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`proceeding before the Office in the last three (3) years: Inter Partes
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`Review No. 2016-00084. (Id.) Ms. Flanders was admitted pro hac
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`vice in this proceeding. (Id.)
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`11. Ms. Flanders has an established familiarity with the subject matter at
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`issue in this proceeding. (Id. at ¶¶ 11-13.)
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`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION OF
`MS. FLANDERS IN THIS PROCEEDING
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`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, Nicholas N. Kallas, is a registered
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`practitioner (Reg. No. 31,530). Based on the facts set forth in this motion, as
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`supported by Ms. Flanders’s Declaration (Ex 2022), there is good cause to admit
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`Ms. Flanders pro hac vice in this proceeding.
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`Ms. Flanders has an established familiarity with the subject matter at issue in
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`this proceeding. (Ex 2022 at ¶¶ 11-13.) She has been involved consistently and
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`substantively in this matter since its inception in June 2017 and in District Court
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`5
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`litigation involving the same patent. (Id. at ¶ 11.) Ms. Flanders has read in detail
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`and understands the Petition filed by Petitioner and the challenged patent, U.S.
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`Patent 8,410,131 (“the ’131 patent”). (Id. at ¶ 11.) She has also reviewed in detail
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`all the exhibits relied upon by Petitioner in this proceeding, including each of the
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`references cited in instituted Grounds 1-5. (Id.) Additionally, Ms. Flanders has
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`engaged in extensive strategic and substantive discussions regarding this
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`proceeding with the lead counsel for Patent Owner in this proceeding, and has an
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`established familiarity with the subject matter at issue in this proceeding. (Id. at ¶¶
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`12-13.)
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`Thus, Ms. Flanders has an established familiarity with the subject matter at
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`issue in this proceeding as well as significant litigation experience and expertise.
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`For these reasons, good cause exists to admit Ms. Flanders pro hac vice in this
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`proceeding.
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`Dated: February 13, 2018
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`6
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`Respectfully submitted,
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`/Nicholas N. Kallas/
`Nicholas N. Kallas
`Registration No. 31,530
`Lead Counsel for Patent Owner
`FITZPATRICK, CELLA, HARPER
`& SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`Tel. 212-218-2100
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`
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`CERTIFICATE OF SERVICE
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`I certify that a copy of the foregoing PATENT OWNER NOVARTIS’S
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`MOTION FOR PRO HAC VICE ADMISSION OF SUSANNE L. FLANDERS
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`UNDER 37 C.F.R. § 42.10 and Novartis Exhibit 2022 were served on February 13,
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`2018 by causing them to be sent by email to counsel for Petitioner at the following
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`email addresses:
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`Daniel R. Evans (devans@merchantgould.com)
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`Jeffrey D. Blake (jblake@merchantgould.com)
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`Melissa M. Hayworth (mhayworth@merchantgould.com)
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`Dated: February 13, 2018
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`/Nicholas N. Kallas/
`Nicholas N. Kallas
`Registration No. 31,530
`Lead Counsel for Patent Owner
`FITZPATRICK, CELLA, HARPER
`& SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`Tel. 212-218-2100
`
`7
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