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UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________________
`
`
`DR. REDDY’S LABORATORIES S.A. AND
`DR. REDDY’S LABORATORIES, INC.
`Petitioners,
`
`v.
`
`INDIVIOR UK LIMITED.
`Patent Owner.
`
`________________________
`
`
`IPR2019-00329
`Patent 9,687,454
`
`________________________
`
`
`PATENT OWNER UNOPPOSED MOTION FOR ADMISSION
`PRO HAC VICE OF ISAAC C. BELFER UNDER 37 C.F.R. § 42.10
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`

`

`
`I. Relief Requested
`
`IPR2019-00329
`Patent 9,687,454
`
`Pursuant to 37 C.F.R. § 42.10, and in accordance with the Order—
`
`Authorizing Motion for Pro Hac Vice Admission in Case IPR2013-00639, Paper
`
`No. 7, and the Notice of Filing Date Accorded to Petition and Time for Filing Patent
`
`Owner Preliminary Response (Paper No. 6), Patent Owner requests that the Board
`
`admit Isaac C. Belfer pro hac vice in this proceeding. Counsel for Petitioner has
`
`informed the undersigned that Petitioner does not oppose this motion.
`
`II. Statement of Facts
`
`37 C.F.R. § 42.10(c) states 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
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`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 facts,
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`supported by the attached Declaration of Isaac C. Belfer in Support of Patent Owner
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`Unopposed Motion for Admission Pro Hac Vice of Isaac C. Belfer Under 37 C.F.R.
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`§ 42.10 (Ex. 2005, “Belfer Decl.”), establish good cause to admit Mr. Belfer pro hac
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`vice in this proceeding.
`
`Lead counsel, David A. Garr, is a registered practitioner.
`
`
`
`2
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`

`

`Counsel, Isaac C. Belfer, is an experienced litigating attorney with over five
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`IPR2019-00329
`Patent 9,687,454
`
`
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`years in private law practice and has substantial experience with patent litigation.
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`Belfer Decl. ¶ 9. Mr. Belfer has been counsel in at least 10 patent matters, including
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`cases pending in various district courts and the Federal Circuit. Id. Mr. Belfer has
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`experience with fact and expert discovery, claim construction, dispositive motions,
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`and appeals. Id.
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`Mr. Belfer is a member in good standing of the New York State Bar and the
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`District of Columbia Bar. Id. ¶ 2. He is also admitted to practice before the U.S.
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`Court of Appeals for the Federal Circuit and the U.S. Court of Appeals for Veterans
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`Claims. Id. He has no suspensions or disbarments from practice, has not had any
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`application for admission to practice denied, and has not received any sanctions or
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`contempt citations. Id. ¶¶ 3–5.
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`Mr. Belfer is familiar with the subject matter and patent at issue in this
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`proceeding, U.S. Patent No. 9,687,454 (“the ’454 Patent”), including its prosecution
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`history and the scientific field to which it is addressed. Belfer Decl. ¶ 10. In
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`particular, Mr. Belfer has been advising Patent Owner throughout the instant IPR
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`proceeding and in related district court litigation, and has thereby developed a
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`thorough understanding of the ’454 Patent, the relevant art, and the scientific field.
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`Id.
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`
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`Mr. Belfer has read and will comply with the Office Patent Trial Practice
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`3
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`

`

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`Guide and the Board’s Rules of Practice for Trials set forth in Part 42 of Title 37,
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`IPR2019-00329
`Patent 9,687,454
`
`Code of Federal Regulations, and he agrees to be subject to the USPTO Rules of
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`Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary
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`jurisdiction under 37 C.F.R. § 11.19(a). Id. ¶¶ 6-7. Mr. Belfer has not applied to
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`appear pro hac vice in any other proceeding before the Office within the last three
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`(3) years. Id. ¶ 8.
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`III. Analysis
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`The facts contained in the Statement of Facts above and in the Belfer
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`Declaration establish that there is good cause to admit Mr. Belfer pro hac vice in this
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`proceeding under 37 C.F.R. § 42.10. Lead counsel is a registered practitioner; Mr.
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`Belfer is an experienced litigating attorney; and Mr. Belfer has an established
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`familiarity with the subject matter at issue in this proceeding.
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`IV. Conclusion
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`For the foregoing reasons, Patent Owner respectfully requests that the Board
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`admit Isaac C. Belfer pro hac vice in this proceeding.
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`4
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`

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`Date: August 20, 2019
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`IPR2019-00329
`Patent 9,687,454
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`
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`
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`Respectfully submitted,
`
`By / Peter P. Chen /
`David A. Garr
` Registration No.: 74,932
`Peter P. Chen
` Registration No.: 39,631
`COVINGTON & BURLING LLP
`
`Attorneys for Patent Owner
`
`5
`
`

`

`
`
`CERTIFICATE OF SERVICE
`
`IPR2019-00329
`Patent 9,687,454
`
`Pursuant to 37 C.F.R. § 42.6, I hereby certify that the foregoing Patent Owner
`
`Unopposed Motion for Admission Pro Hac Vice of Isaac C. Belfer Under 37 C.F.R.
`
`§ 42.10 was served by email, by agreement of the parties, on the following counsel of
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`record for Petitioner.
`
`
`
`Ira J. Levy (ilevy@goodwinlaw.com)
`Robert Frederickson III (rfrederickson@goodwinlaw.com)
`GOODWIN PROCTER LLP
`DG-Suboxone@goodwinlaw.com
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`
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` / Peter P. Chen /
`Peter P. Chen
`Registration No.: 39,631
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`Date: August 20, 2019
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`
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`6
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`

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