UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`WATSON LABORATORIES, INC.,
`Petitioner,
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`v.
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`UNITED THERAPEUTICS CORP.
`Patent Owner.
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`Case No. IPR2017-01621
`Patent No. 9,358,240
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`Case No: PR2017-01622
`Patent No. 9,339,507
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`PETITIONER’S MOTION FOR PRO HAC VICE ADMISSION OF
`KURT A. MATHAS UNDER 37 C.F.R. § 42.10
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313–1450
`Submitted Electronically via the Patent Review Processing System
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`WATSON LABORATORIES, INC.,
`Petitioner,
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`v.
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`UNITED THERAPEUTICS CORP.
`Patent Owner.
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`Case No. IPR2017-01621
`Patent No. 9,358,240
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`Case No: PR2017-01622
`Patent No. 9,339,507
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`PETITIONER’S MOTION FOR PRO HAC VICE ADMISSION OF
`KURT A. MATHAS UNDER 37 C.F.R. § 42.10
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313–1450
`Submitted Electronically via the Patent Review Processing System
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`Pursuant to 37 C.F.R. § 42.10, and pursuant to the authorization provided by
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`the United States Patent and Trademark Office’s Patent Trial and Appeal Board
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`(“Board”) in the Notice of Filing Date Accorded to Petition and Time for Filing
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`Patent Owner Preliminary Response (Paper Number 4, July 13, 2017) (“the Notice”),
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`Petitioner WATSON LABORATORIES, INC. (“Petitioner”) submits this motion
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`for KURT A. MATHAS to appear pro hac vice. Petitioner respectfully requests the
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`Board to recognize Mr. Mathas as counsel pro hac vice during this proceeding and
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`demonstrates good cause for doing so as shown below.
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`I.
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`TIME FOR FILING
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`Pursuant to the authorization provided in the Notice, as well as the “Order –
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`Authorizing Motion for Pro Hac Vice Admission” in Unified Patents, Inc. v. Parallel
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`Iron, LLC, IPR2013-00639, Paper 7 (Oct. 15, 2013) (“the Order”), this motion for
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`pro hac vice admission is being filed no sooner than twenty-one (21) days after
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`service of the Petition.
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`II.
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`STATEMENT OF FACTS
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`Pursuant to the Order, the following statement of facts shows that good cause
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`exists for the Board to recognize Mr. Mathas pro hac vice.
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`Lead counsel for this proceeding, Michael K. Nutter, is a registered
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`practitioner (Reg. No. 44,979).
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`NY:1837183.1
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`Mr. Mathas is an experienced litigation attorney with twelve years of litigation
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`experience. Ex. 1167, ¶ 8. He has been involved in numerous patent infringement
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`cases in federal district courts across the country. Id. He has experience in various
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`aspects of patent infringement matters, including all aspects of litigation leading up
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`to and including jury trials and bench trials. Id.
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`Mr. Mathas is a member in good standing of the State Bar of Illinois and is
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`admitted to practice before the Federal Circuit Court of Appeal, Seventh Circuit
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`Court of Appeal, Northern District of Illinois, Eastern District of Texas, District of
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`Colorado and Western District of Michigan. Id., ¶ 1.
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`Mr. Mathas has not been suspended or disbarred from practice, has never had
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`any application for admission to practice denied, and has never had any sanctions or
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`contempt citations imposed against him. Id., ¶¶ 2-4.
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`Mr. Mathas has obtained substantial familiarity with the involved patent, the
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`prior art, and the various issues raised in this proceeding. Moreover, Mr. Mathas has
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`reviewed the involved patent, the Petition, the prior art, and all other cited materials
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`and was involved in the preparation of the Petition upon which the Board instituted
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`trial. Id., ¶ 8. Specifically, he was the outside counsel primarily responsible for the
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`day-to-day management of the district court litigation and was involved in analysis
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`of the prior art and developing and litigating the invalidity defenses for the involved
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`patents in the district court action. Id. Given his patent litigation experience and his
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`NY:1837183.1
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`familiarity with the instant Petition, the cited materials, and the patent, Mr. Mathas
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`has established familiarity with the subject matter at issue in this proceeding. Id.
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`Mr. Mathas has read and will comply with the Office Patent Trial Practice
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`Guide and the Board’s Rules for Practice for Trials set forth in part 42 of the C.F.R.,
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`and he agrees to be subject to the USPTO Rules of Professional Conduct set forth in
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`37 C.F.R. §§ 11.101 et seq., and to disciplinary jurisdiction under 37 C.F.R. §
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`11.19(a). Id., ¶¶ 5-6.
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`Mr. Mathas has not applied to appear pro hac vice in the last three years in
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`any other matter before the Board. Id., ¶ 7. He is concurrently seeking admission
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`in IPR2017-01621 related to U.S. Patent No. 9,358,240 and IPR2017-01622 related
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`to U.S. Patent No. 9,339,507, which are related patents.
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`Given Mr. Mathas’s familiarity with the subject matter at issue in this
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`proceeding, Petitioner respectfully submit that they have shown good cause for the
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`Board to recognize Mr. Mathas as counsel pro hac vice during this proceeding.
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`III. AFFIDAVIT OR DECLARATION OF INDIVIDUAL SEEKING TO
`APPEAR
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`This Motion is accompanied by a Declaration of Mr. Mathas as required by
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`the Order.
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`NY:1837183.1
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`Dated: January 25, 2018
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`Respectfully submitted,
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`/Michael K. Nutter/
`Michael K. Nutter, Lead Counsel
`Reg. No. 44,979
`Andrew R. Sommer, Back-Up Counsel
`Reg. No. 53,932
`Kurt A. Mathas, Back-Up Counsel
`WINSTON & STRAWN LLP
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`NY:1837183.1
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`§ 42.6(e)—CERTIFICATION OF SERVICE
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`In accordance with § 42.6(e)(1), the undersigned certifies that on the 25th day
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`of January, 2018, PETITIONER’S MOTION FOR PRO HAC VICE
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`ADMISSION OF KURT A. MATHAS was served by electronic mail upon the
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`following counsel for Patent Owner
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`Stephen B. Maebius
`Email: smaebius@foley.com
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`UT240-IPR@foley.com
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`George Quillin
`Email: gquillin@foley.com
`FOLEY & LARDNER LLP
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`Shaun R. Snader
`Email: ssnader@unither.com
`UNITED THERAPEUTICS CORP
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`Douglas Carsten
`Email: dcarsten@wsgr.com
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`Richard Torczon
`Email: rtorczon@wsgr.com
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`Robert Delafield
`Email: bdelafield@wsgr.com
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`Veronica Ascarrunz
`Email: vascarrunz@wsgr.com
`WILSON, SONSINI, GOODRICH & ROSATI
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`NY:1837183.1
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`Dated: January 25, 2018
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`Respectfully submitted,
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`/s/ Michael K. Nutter/
`Michael K. Nutter,
`Reg. No. 44,979
`Lead Counsel for Petitioner
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`NY:1837183.1
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