IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`ALMIRALL, LLC,
`Patent Owner.
`
`Case IPR2019-01095
`Patent 9,517,219
`
`PATENT OWNER ALMIRALL, LLC’S
`MOTION FOR PRO HAC VICE ADMISSION OF
`ELIZABETH B. HAGAN PURSUANT TO 37 C.F.R. § 42.10(c)
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`ALMIRALL, LLC,
`Patent Owner.
`
`Case IPR2019-01095
`Patent 9,517,219
`
`PATENT OWNER ALMIRALL, LLC’S
`MOTION FOR PRO HAC VICE ADMISSION OF
`ELIZABETH B. HAGAN PURSUANT TO 37 C.F.R. § 42.10(c)
`
`
`
`IPR2019-01095
`Motion for Admission Pro Hac Vice
`
`A.
`
`RELIEF REQUESTED
`Pursuant to 37 C.F.R. § 42.10(c), and as authorized in the Board’s Notice of
`
`Filing Date issued June 10, 2019 (Paper 5), Patent Owner Almirall, LLC
`
`(“Almirall”) respectfully requests the pro hac vice admission of Elizabeth B. Hagan
`
`in this proceeding.
`
`B.
`
`GOVERNING LAWS, RULES, AND PRECEDENT
`Section 42.10(c) states as follows:
`
`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 June 10, 2019 Notice of Filing Date, any motion for pro
`
`hac vice admission under 37 C.F.R. § 42.10(c) must be filed in accordance with the
`
`Order Authorizing Motion for Pro Hac Vice Admission entered in Case IPR2013-
`
`2
`
`
`
`IPR2019-01095
`Motion for Admission Pro Hac Vice
`
`00639, Paper 7. That Order further provides that pro hac vice motions may be filed
`
`“no sooner than twenty-one (21) days after service of the petition.”
`
`C.
`
`STATEMENT OF FACTS
`Based on the following facts, and supported by the attached Declaration of
`
`Ms. Hagan (Ex. 2001), Almirall requests the pro hac vice admission of Elizabeth B.
`
`Hagan in this proceeding:
`
`1.
`
`2.
`
`3.
`
`Almirall’s lead counsel, James Trainor, is a registered practitioner
`
`(Reg. No. 52,297).
`
`Ms. Hagan is an associate in the law firm of Fenwick & West LLP.
`
`Ex. 2001, ¶ 2.
`
`Ms. Hagan, who has a Ph.D. in Medical Science, is an experienced
`
`patent litigation attorney. She has been practicing law since 2013 and
`
`has experience litigating patent infringement cases in district courts
`
`across the United States and at the United States Court of Appeals for
`
`the Federal Circuit. Id. ¶ 3. Ms. Hagan has been litigating patent cases
`
`for over five years. Her experience in patent litigation includes trials,
`
`claim construction proceedings, patent summary judgment proceedings,
`
`and other patent-related hearings and pleadings concerning, among
`
`other issues, patent validity and infringement. Id. ¶ 4.
`
`3
`
`
`
`IPR2019-01095
`Motion for Admission Pro Hac Vice
`
`4.
`
`Ms. Hagan has familiarity with the subject matter at issue in this
`
`proceeding. She represented Patent Owner Almirall, LLC in the district
`
`court litigation against Taro Pharmaceutical Industries Ltd. that
`
`terminated March 11, 2019, and currently represents Patent Owner
`
`Almirall LLC
`
`in
`
`the district court
`
`litigation against Amneal
`
`Pharmaceuticals LLC, filed April 9, 2019. See Almirall, LLC v. Taro
`
`Pharm. Indus., Ltd., Case No. 1:17-cv-00663 (JFB) (SRF) (D. Del.);
`
`Almirall, LLC v. Amneal Pharmaceuticals LLC, Case No. 1:19-cv-
`
`00658-LPS (D. Del.). Both litigations involve the patent at issue in this
`
`proceeding, U.S. Patent No. 9,517,219 (“the ’219 patent”). Ex. 2001,
`
`¶ 11. As trial counsel for Almirall, LLC, Ms. Hagan has been actively
`
`involved in all aspects of the district court litigations, including
`
`development of validity positions regarding the patent challenged in this
`
`proceeding. Id. Ms. Hagan is also back-up council for Patent Owner
`
`Almirall, LLC in Amneal Pharmaceuticals LLC et al. v. Almirall, LLC,
`
`IPR2019-00207, which involves the same patent, grounds, and prior art
`
`as in the instant proceeding, and is the case with which Mylan has
`
`requested joinder in this proceeding (Paper 2), and in Amneal
`
`Pharmaceuticals LLC et al. v. Almirall, LLC, IPR2018-00608, which
`
`involves a patent in the same family as the patent as issue in this
`
`4
`
`
`
`IPR2019-01095
`Motion for Admission Pro Hac Vice
`
`proceeding, and the same asserted prior art as in this proceeding. As
`
`back-up counsel in IPR2019-00207 and IPR2018-00608, Ms. Hagan is
`
`familiar with the asserted prior art, and actively involved in all aspects
`
`of the proceedings, including development of validity positions
`
`regarding the ’219 patent challenged in this proceeding, as well as a
`
`patent in the same family. Id. ¶¶ 12–13. In addition, Ms. Hagan has
`
`reviewed in detail the ’219 patent and its prosecution history, as well as
`
`the Petition, the expert declarations in support of the Petition, and the
`
`prior art upon which the Petitioner bases its challenge. Id. ¶ 14.
`
`Ms. Hagan is an attorney in good standing of the State Bar of
`
`Washington. Id. ¶ 5.
`
`Ms. Hagan has never been suspended or disbarred from practice before
`
`any court or administrative body. Id.
`
`No application of Ms. Hagan for admission to practice before any court
`
`or administrative body has ever been denied. Id. ¶ 6.
`
`No sanctions or contempt citations have been imposed against Ms. Hagan
`
`by any court or administrative body. Id. ¶ 7.
`
`Ms. Hagan has read and will comply with the Office Patent Trial
`
`Practice Guide and the Board’s Rules of Practice for Trials set forth in
`
`part 42 of 37 C.F.R. Ex. 2001, ¶ 8.
`
`5
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`
`
`IPR2019-01095
`Motion for Admission Pro Hac Vice
`
`10. Ms. Hagan understands that she will be subject to the USPTO Rules of
`
`Professional Conduct set forth in 37 C.F.R. §§ 11.101 et. seq. and
`
`disciplinary jurisdiction under 37 C.F.R. § 11.19(a). Ex. 2001, ¶ 9.
`
`11. Within the past three years, Ms. Hagan has applied three times to appear
`
`pro hac vice before the Office. Id. ¶ 10. The Board granted the motion
`
`for Ms. Hagan’s admission pro hac vice in Amneal Pharmaceuticals
`
`LLC et al. v. Almirall, LLC, IPR 2019-00207, on May 15, 2019,
`
`authorizing her to represent Patent Owner Almirall, LLC as back-up
`
`counsel. IPR2019-00207, Paper 15. IPR2019-00207 is the case with
`
`which Mylan has requested joinder in this proceeding (IPR2019-01095,
`
`Paper 2), and involves the ʼ219 patent challenged in this proceeding. The
`
`Board granted the motion for Ms. Hagan’s admission pro hac vice in
`
`Amneal Pharmaceuticals
`
`LLC
`
`et
`
`al.
`
`v. Almirall,
`
`LLC,
`
`IPR2018-00608, on December 6, 2018, authorizing her to represent
`
`Patent Owner Almirall, LLC as back-up counsel. IPR2018-00608, Paper
`
`24. IPR2018-00608 involves a patent in the same family as the patent
`
`challenged in this proceeding. Ms. Hagan has also applied to appear pro
`
`hac vice before the Office in Eli Lilly and Co. v. Los Angeles
`
`Biomedical Research Institute at Harbor-UCLA Medical Center,
`
`6
`
`
`
`IPR2019-01095
`Motion for Admission Pro Hac Vice
`
`IPR2014-00752. That motion remains pending. IPR2014-00752, Paper
`
`66 (filed February 25, 2019).
`
`12.
`
`This motion was filed no sooner than 21 days after service of the
`
`Petition in this proceeding, which occurred on June 7, 2019.
`
`D.
`
`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
`
`showing of good cause, subject to the condition that lead counsel be a registered
`
`practitioner and to any other conditions that the Board may impose. 37 C.F.R.
`
`§ 42.10(c). Almirall’s lead counsel, James Trainor, is a registered practitioner.
`
`Based on the facts contained herein, as supported by Ms. Hagan’s declaration
`
`(Ex. 2001), good cause exists to admit Ms. Hagan pro hac vice in this proceeding.
`
`As supported by her declaration, Ms. Hagan is an experienced litigating
`
`attorney with over five years of patent litigation experience. Ms. Hagan also has
`
`familiarity with the subject matter at issue in this proceeding, including the ’219
`
`patent, the parties’ written submissions, and the cited references.
`
`E.
`
`CONCLUSION
`For the foregoing reasons as well as the reasons in the attached declaration,
`
`Patent Owner Almirall, LLC respectfully requests admission of Elizabeth B. Hagan
`
`as counsel pro hac vice in this proceeding.
`
`7
`
`
`
`IPR2019-01095
`Motion for Admission Pro Hac Vice
`
`Dated: July 2, 2019
`
`Respectfully submitted,
`
`FENWICK & WEST LLP
`
`By: /James Trainor/
`James Trainor (Reg. No. 52,297)
`
`Attorneys for Patent Owner
`Almirall, LLC
`
`8
`
`
`
`IPR2019-01095
`Motion for Admission Pro Hac Vice
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing PATENT
`
`OWNER ALMIRALL, LLC’S MOTION FOR ADMISSION PRO HAC VICE
`
`OF ELIZABETH B. HAGAN PURSUANT TO 37 C.F.R. § 42.10(C) was
`
`served on July 2, 2019, by filing this document through the Patent Trial and
`
`Appeal Board End to End system as well as delivering a copy via electronic mail
`
`upon the following attorneys of record for the Petitioner:
`
`Jitendra Malik, Ph.D., Reg. No. 55,823
`jitty.malik@kattenlaw.com
`Alissa M. Pacchioli, Reg. No. 74,252
`alissa.pacchioli@kattenlaw.com
`Heike S. Radeke, Reg. No. 75,394
`heike.radeke@kattenlaw.com
`KATTEN MUCHIN ROSEMAN LLP
`550 S. Tryon Street, Suite 2900
`Charlotte, NC 28202-4213
`
`Lance Soderstrom, Reg. No. 65,405
`lance.soderstrom@kattenlaw.com
`KATTEN MUCHIN ROSEMAN LLP
`575 Madison Avenue
`New York, NY 10022-2585
`
`Dated: July 2, 2019
`
`Respectfully submitted,
`
`FENWICK & WEST LLP
`
`By: /James Trainor/
`James Trainor (Reg. No. 52,297)
`
`Attorneys for Patent Owner
`Almirall, LLC
`
`9
`
`
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