IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`AMNEAL PHARMACEUTICALS LLC AND
`AMNEAL PHARMACEUTICALS OF NEW YORK, LLC,
`Petitioners,
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`v.
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`ALMIRALL, LLC,
`Patent Owner.
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`Case IPR2018-00608
`Patent 9,161,926
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`PATENT OWNER ALMIRALL, LLC’S
`MOTION FOR PRO HAC VICE ADMISSION OF
`ELIZABETH B. HAGAN PURSUANT TO 37 C.F.R. § 42.10(c)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`AMNEAL PHARMACEUTICALS LLC AND
`AMNEAL PHARMACEUTICALS OF NEW YORK, LLC,
`Petitioners,
`
`v.
`
`ALMIRALL, LLC,
`Patent Owner.
`
`Case IPR2018-00608
`Patent 9,161,926
`
`
`
`
`
`PATENT OWNER ALMIRALL, LLC’S
`MOTION FOR PRO HAC VICE ADMISSION OF
`ELIZABETH B. HAGAN PURSUANT TO 37 C.F.R. § 42.10(c)
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`IPR2018-00608
`Motion for Admission Pro Hac Vice
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`I.
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`RELIEF REQUESTED
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`Pursuant to 37 C.F.R. § 42.10(c), and as authorized in the Board’s Notice of
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`Filing Date issued March 8, 2018 (Paper 6), Patent Owner Almirall, LLC
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`(“Almirall”) respectfully requests the pro hac vice admission of Elizabeth B. Hagan
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`in this proceeding.
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`II. GOVERNING LAWS, RULES, AND PRECEDENT
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`Section 42.10(c) states as follows:
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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.
`As stated in the Board’s March 8, 2018 Notice of Filing Date, any motion for
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`pro hac vice admission under 37 C.F.R. § 42.10(c) must be filed in accordance with
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`the Order Authorizing Motion for Pro Hac Vice Admission entered in Case
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`IPR2013-00639, Paper 7. That Order further provides that pro hac vice motions
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`may be filed “no sooner than twenty one (21) days after service of the petition.”
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`1
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`
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`IPR2018-00608
`Motion for Admission Pro Hac Vice
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`III. STATEMENT OF FACTS
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`Based on the following facts, and supported by the attached Declaration of
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`Ms. Hagan (Ex. 2002), Almirall requests the pro hac vice admission of Elizabeth
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`B. Hagan in this proceeding:
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`1.
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`Almirall’s lead counsel, James Trainor, is a registered practitioner
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`(Reg. No. 52,297).
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`2. Ms. Hagan is an associate in the law firm of Fenwick & West LLP.
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`Ex. 2002, ¶ 3.
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`3. Ms. Hagan, who has a Ph.D. in Medical Science, is an experienced
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`patent litigation attorney. She has been practicing law since 2013 and
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`has experience litigating patent infringement cases in district courts
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`across the United States and at the United States Court of Appeals for
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`the Federal Circuit. Id. ¶ 4. Ms. Hagan has been litigating patent
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`cases for over five years. Her experience in patent litigation includes
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`trials, claim construction proceedings, patent summary judgment
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`proceedings, and other patent-related hearings and pleadings
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`concerning, among other issues, patent validity and infringement. Id.
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`¶ 5.
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`4. Ms. Hagan has familiarity with the subject matter at issue in this
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`proceeding. She is one of the attorneys representing Patent Owner
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`IPR2018-00608
`Motion for Admission Pro Hac Vice
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`Almirall, LLC in the co-pending district court litigation against Taro
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`Pharmaceutical Industries Ltd. See Almirall, LLC v. Taro Pharm.
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`Indus., Ltd., Case No. 1:17-cv-00663 (JFB) (SRF) (D. Del.). That
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`litigation involves a patent in the same family as the patent at issue in
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`this proceeding, U.S. Patent No. 9,161,926 (“the ’926 patent”). Ex.
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`2002, ¶ 12. As trial counsel for Almirall, LLC, Ms. Hagan is actively
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`involved in all aspects of the district court litigation, including
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`development of validity positions regarding a patent in the same
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`family as the ’926 patent challenged in this proceeding. Id. Ms.
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`Hagan has also reviewed in detail the ’926 patent and its prosecution
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`history, as well as the Petition, the expert declarations in support of
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`the Petition, the prior art upon which the Petitioner bases its
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`challenge, and the Board’s Institution Decision. Id. ¶ 13.
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`5. Ms. Hagan is an attorney in good standing of the State Bar of
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`Washington. Id. ¶ 6.
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`6. Ms. Hagan has never been suspended or disbarred from practice
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`before any court or administrative body. Id.
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`7.
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`No application of Ms. Hagan for admission to practice before any
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`court or administrative body has ever been denied. Id. ¶ 7.
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`IPR2018-00608
`Motion for Admission Pro Hac Vice
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`8.
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`No sanctions or contempt citations have been imposed against Ms.
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`Hagan by any court or administrative body. Id. ¶ 8.
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`9. Ms. Hagan 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. Ex. 2002, ¶ 9.
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`10. Ms. Hagan understands that she will be subject to the USPTO 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). Ex. 2002, ¶ 10.
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`11. Ms. Hagan has not applied to appear pro hac vice before the Office in
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`the last three years. Id. ¶ 11.
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`12. This motion was filed no sooner than 21 days after service of the
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`Petition in this proceeding, which occurred on February 12, 2018.
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`IV. GOOD CAUSE EXISTS FOR THE ADMISSION PRO HAC VICE OF
`MS. HAGAN 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 to any other conditions that the Board may impose. 37 C.F.R.
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`§ 42.10(c). Almirall’s lead counsel, James Trainor, is a registered practitioner.
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`Based on the facts contained herein, as supported by Ms. Hagan’s declaration (Ex.
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`2002), good cause exists to admit Ms. Hagan pro hac vice in this proceeding.
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`IPR2018-00608
`Motion for Admission Pro Hac Vice
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`As supported by her declaration, Ms. Hagan is an experienced litigating
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`attorney with five years of patent litigation experience. Ms. Hagan also has
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`familiarity with the subject matter at issue in this proceeding, including the ’926
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`patent, the parties’ written submissions, and the cited references.
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`V. CONCLUSION
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`For the foregoing reasons as well as the reasons in the attached declaration,
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`Patent Owner Almirall, LLC respectfully requests admission of Elizabeth B.
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`Hagan as counsel pro hac vice in this proceeding.
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`Dated: October 31, 2018
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`Respectfully submitted,
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`FENWICK & WEST LLP
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`By: /James Trainor/
`James Trainor (Reg. No. 52,297)
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`
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`Attorneys for Patent Owner
`Almirall, LLC
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`IPR2018-00608
`Motion for Admission Pro Hac Vice
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6, I hereby certify that the foregoing PATENT
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`OWNER ALMIRALL, LLC’S MOTION FOR PRO HAC VICE ADMISSION
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`OF ELIZABETH B. HAGAN PURSUANT TO 37 C.F.R. § 42.10(c) was served
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`by electronic mail on the following counsel of record for petitioner:
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`Dated: October 31, 2018
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`Dennies Varughese (dvarughe-PTAB@skgf.com)
`Adam C. LaRock (alarock-PTAB@skgf.com)
`PTAB@skgf.com
`Sterne, Kessler, Goldstein & Fox
`1100 New York Avenue, NW
`Suite 600
`Washington, DC 20005
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`Respectfully submitted,
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`FENWICK & WEST LLP
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`By: /James Trainor/
`James Trainor (Reg. No. 52,297)
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`
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`Attorneys for Patent Owner
`Almirall, LLC
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`
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`6
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