Filed: January 17, 2019
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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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`AMNEAL PHARMACEUTICALS LLC,
`Petitioner
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`v.
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`ALKERMES PHARMA IRELAND LIMITED,
`Patent Owner
`__________________
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`Case IPR2018-00943
`U.S. Patent No. 7,919,499
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`_______________________
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`PATENT OWNER’S MOTION FOR PRO HAC VICE ADMISSION OF
`JOSEPH M. O’MALLEY, JR.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`AMNEAL PHARMACEUTICALS LLC,
`Petitioner
`
`v.
`
`ALKERMES PHARMA IRELAND LIMITED,
`Patent Owner
`__________________
`
`Case IPR2018-00943
`U.S. Patent No. 7,919,499
`
`_______________________
`
`PATENT OWNER’S MOTION FOR PRO HAC VICE ADMISSION OF
`JOSEPH M. O’MALLEY, JR.
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`INTRODUCTION AND PRECISE RELIEF REQUESTED
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`Case IPR2018-00943
`U.S. Patent 7,919,499
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`I.
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`Alkermes Pharma Ireland Limited (“Patent Owner”) requests that the Board
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`recognize Joseph M. O’Malley Jr. as counsel pro hac vice during this proceeding.
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`This motion was authorized in the Notice of Filing Date Accorded to Petition and
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`Time for Filing Patent Owner Preliminary Response. (Paper 4 at 2.) Because this
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`motion meets all of the Board’s requirements, Patent Owner requests that the
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`Board grant this motion.
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`II.
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`STATEMENT OF FACTS
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`Patent Owner has been authorized to file motions seeking admission pro hac
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`vice under 37 C.F.R. §42.10(c). (See Paper 4 at 2.) Patent Owner’s lead counsel
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`and back-up counsel are registered practitioners. (Paper 5 at 1.) As set forth in the
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`accompanying declaration, Mr. O’Malley is an attorney at Paul Hastings LLP.
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`(Ex. 2022 at ¶ 2.) He is an experienced litigating attorney with more than twenty-
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`six years of experience and has served as lead counsel in numerous patent
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`infringement lawsuits before the district courts and the Court of Appeals for the
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`Federal Circuit. (Id.)
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`Mr. O’Malley has an established familiarity with the subject matter at issue
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`in this proceeding. (Id. at ¶ 9.) Mr. O’Malley has reviewed U.S. Patent No.
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`7,919,499 (“the ’499 patent”), the patent-at-issue, and other papers associated with
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`this matter. (Id.)
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`1
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`Case IPR2018-00943
`U.S. Patent 7,919,499
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`In addition, Mr. O’Malley is a member in good standing of the Bar for the
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`State of New York. (Id. at ¶ 1.) He has never been suspended or disbarred from
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`practice before any court or administrative body. (Id. at ¶ 3.) He has never had an
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`application for admission to practice before any court or administrative body
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`denied. (Id. at ¶ 4.) He has never had sanctions or contempt citations imposed by
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`any court or administrative body. (Id. at ¶ 5.) He has read and will comply with the
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`Office Patent Trial Practice Guide and the Board’s Rules of Practice for Trials set
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`forth in part 42 of title 37 of the Code of Federal Regulations. (Id. at ¶ 6.) He
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`agrees to be subject to the USPTO Rules of Professional Conduct set forth in 37
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`C.F.R. §§ 11.101, et seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
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`(Id. at ¶ 7.) His only motion to appear pro hac vice before the Board was in
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`IPR2017-01292, which was terminated (at the parties’ joint request) prior to any
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`decision on the motion for Mr. O’Malley’s pro hac vice admission. (Id. at ¶ 8.)
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`III. REASONS FOR GRANTING THE MOTION
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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). For example, where the lead counsel is a registered practitioner, a
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`motion to appear pro hac vice may be granted upon showing that counsel who is
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`seeking pro hac vice admission is “an experienced litigating attorney and has an
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`2
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`Case IPR2018-00943
`U.S. Patent 7,919,499
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`established familiarity with the subject matter at issue in the proceeding.” (Id.) The
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`motion for pro hac vice admission must contain a statement of facts showing good
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`cause and be accompanied by a declaration of the individual who is seeking
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`admission. See Unified Patents, Inc. v. Parallel Iron, LLC, IPR2013-00639, Paper
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`No. 7 at 3-4 (P.T.A.B. Oct. 15, 2013). The declaration in turn must contain certain
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`attestations. (Id.)
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`This motion and the accompanying declaration meet all of the Board’s
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`requirements. The lead counsel in this proceeding, Naveen Modi, is a registered
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`practitioner. (Paper 5 at 1.) Mr. O’Malley is an experienced litigating attorney and
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`has an established familiarity with the subject matter at issue in the proceeding. See
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`(Ex. 2022 at ¶¶ 2, 9.) Mr. O’Malley’s declaration makes the necessary attestations.
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`(Id. at ¶ 10.)
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`IV. CONCLUSION
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`For the foregoing reasons, Patent Owner submits that there is good cause for
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`the Board to recognize Mr. O’Malley as counsel pro hac vice in this proceeding.
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`3
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`Case IPR2018-00943
`U.S. Patent 7,919,499
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`Respectfully submitted,
`/Naveen Modi/
`Naveen Modi, Reg. No. 46,224
`Bruce M. Wexler, Reg. No. 35,409
`Joseph M. O’Malley, Jr. (pro hac vice pending)
`Michael A. Stramiello, Ph.D., Reg. No. 67,195
`Gerard A. Salvatore, Reg. No. 73,030
`Counsel for Patent Owner
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`Date: January 17, 2019
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`4
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`CERTIFICATE OF SERVICE
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`IPR2018-00943
`Patent 7,919,499
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`I hereby certify that on January 17, 2019, I caused a true and correct copy of
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`the foregoing Patent Owner’s Updated Mandatory Notices Pursuant to 37 C.F.R.
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`§42.8 to be served electronically on Petitioner at the following addresses:
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`Nichole M. Valeyko
`Michael H. Teschner
`Tedd W. Van Buskirk
`Lerner, David, Littenberg,
`Krumholz & Mentlik, LLP
`600 South Avenue West
`Westfield, NJ 07090
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`nvaleyko@lernerdavid.com
`MTeschner.ipr@ldlkm.com
`tvanbuskirk@lernerdavid.com
`litigation@lernerdavid.com
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`By: /Naveen Modi/
`Naveen Modi (Reg. No. 46,224)
`Counsel for Patent Owner
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`Dated: January 17, 2019
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