Paper 20
`Trials@uspto.gov
`571-272-7822 Entered: June 10, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PROLLENIUM US INC.,
`Petitioner,
`v.
`ALLERGAN INDUSTRIE, SAS,
`Patent Owner.
`____________
`
`IPR2019-01505 (Patent 8,450,475 B2);
`IPR2019-01506 and IPR2019-01632 (Patent 8,357,795 B2);
`IPR2019-01508 (Patent 9,238,013 B2);
`IPR2019-01509 (Patent 9,358,322 B2);
`IPR2019-01617 (Patent 8,822,676 B2); and
`IPR2020-00084 (Patent 9,089,519 B2)1
`____________
`
`
`
`Before GRACE KARAFFA OBERMANN, JOHN G. NEW,
`SHERIDAN K. SNEDDEN, and ROBERT A. POLLOCK,
`Administrative Patent Judges.2
`
`PER CURIAM
`
`
`
`
`
`1 This Order applies to each of the above-listed proceedings. We exercise
`our discretion to issue one Order to be filed in each proceeding. Unless
`otherwise authorized, the parties shall not use this heading style in any
`subsequent papers.
`2 This is not a decision by an expanded panel.
`
`
`Trials@uspto.gov
`571-272-7822 Entered: June 10, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PROLLENIUM US INC.,
`Petitioner,
`v.
`ALLERGAN INDUSTRIE, SAS,
`Patent Owner.
`____________
`
`IPR2019-01505 (Patent 8,450,475 B2);
`IPR2019-01506 and IPR2019-01632 (Patent 8,357,795 B2);
`IPR2019-01508 (Patent 9,238,013 B2);
`IPR2019-01509 (Patent 9,358,322 B2);
`IPR2019-01617 (Patent 8,822,676 B2); and
`IPR2020-00084 (Patent 9,089,519 B2)1
`____________
`
`
`
`Before GRACE KARAFFA OBERMANN, JOHN G. NEW,
`SHERIDAN K. SNEDDEN, and ROBERT A. POLLOCK,
`Administrative Patent Judges.2
`
`PER CURIAM
`
`
`
`
`
`1 This Order applies to each of the above-listed proceedings. We exercise
`our discretion to issue one Order to be filed in each proceeding. Unless
`otherwise authorized, the parties shall not use this heading style in any
`subsequent papers.
`2 This is not a decision by an expanded panel.
`
`
`
`IPR2019-01505 (Patent 8,450,475 B2);
`IPR2019-01506 and IPR2019-01632 (Patent 8,357,795 B2);
`IPR2019-01508 (Patent 9,238,013 B2);
`IPR2019-01509 (Patent 9,358,322 B2);
`IPR2019-01617 (Patent 8,822,676 B2);
`IPR2020-00084 (Patent 9,089,519 B2)
`
`
`DECISION
`Provisionally Granting Patent Owner’s Motion for
`Admission Pro Hac Vice of Elizabeth M. Flanagan
`37 C.F.R. § 42.10
`
`
`On June 8, 2020, Patent Owner filed a Motion for Admission pro hac
`vice Admission of Elizabeth M. Flanagan in each of the above-identified
`proceedings. Paper 24 (“Motion”).3 Patent Owner states that Petitioner
`does not oppose the Motions. Motion 1. Each Motion is supported by a
`“Declaration of Elizabeth Flanagan in Support of Patent Owner’s Motion for
`Pro Hac Vice Admission.” Exhibit 2011 (“Declaration”).
`In accordance with 37 C.F.R. § 42.10(c), we may recognize counsel
`pro hac vice during a proceeding upon a showing of good cause. In
`authorizing a motion for admission pro hac vice, the Board requires the
`moving party to provide a statement of facts showing there is good cause for
`the Board to recognize counsel pro hac vice, and an affidavit or declaration
`of the individual seeking to appear in the proceeding. See Paper 5, 2 (citing
`Unified Patents (representative “Order – Authorizing Motion for Pro Hac
`Vice Admission”)).
`Having reviewed Patent Owner’s Motions and supporting
`Declarations, good cause has been shown for provisionally granting
`
`
`3 Our citations to Papers and Exhibits will be to those filed in IPR2019-
`01505. Similar Papers and Exhibits were filed in each of the other
`proceedings.
`
`2
`
`
`
`IPR2019-01505 (Patent 8,450,475 B2);
`IPR2019-01506 and IPR2019-01632 (Patent 8,357,795 B2);
`IPR2019-01508 (Patent 9,238,013 B2);
`IPR2019-01509 (Patent 9,358,322 B2);
`IPR2019-01617 (Patent 8,822,676 B2);
`IPR2020-00084 (Patent 9,089,519 B2)
`
`admission pro hac vice to Ms. Flanagan in each of the above-identified
`proceedings. This grant is provisional because the Declarations are not
`properly executed. Each Declaration begins with the language “I, Elizabeth
`Flanagan, hereby declare the following:,” presents several statements, and
`concludes with Ms. Flanagan’s signature and date. This does not meet the
`requirements for a declaration or for an affidavit.
`“Affidavit means affidavit or declaration under § 1.68 of this chapter.
`A . . . declaration under 28 U.S.C. 1746 may be used as an affidavit.”
`37 C.F.R. § 42.2. The reference to “affidavit” invokes the requirements of
`37 C.F.R. § 1.66, and the remainder of the definition of “affidavit”
`(referencing a “declaration”) invokes the requirements of 37 C.F.R. § 1.68 or
`28 U.S.C. § 1746.
`Under 37 C.F.R. § 1.68, a party relying upon testimony in the form of
`a declaration must include a statement in the declaration that “willful false
`statements and the like are punishable by fine or imprisonment, or both (18
`U.S.C. 1001) and may jeopardize the validity of the application or any patent
`issuing thereon.” 37 C.F.R. § 1.68. A declaration under 37 C.F.R. § 1.68
`must also state “that all statements made of the declarant’s own knowledge
`are true and that all statements made on information and belief are believed
`to be true.” Id. 28 U.S.C. § 1746 permits a witness to “declare (or certify,
`verify, or state) under penalty of perjury under the laws of the United States
`of America that the foregoing is true and correct.” 28 U.S.C. § 1746. The
`
`3
`
`
`
`IPR2019-01505 (Patent 8,450,475 B2);
`IPR2019-01506 and IPR2019-01632 (Patent 8,357,795 B2);
`IPR2019-01508 (Patent 9,238,013 B2);
`IPR2019-01509 (Patent 9,358,322 B2);
`IPR2019-01617 (Patent 8,822,676 B2);
`IPR2020-00084 (Patent 9,089,519 B2)
`
`Declarations do not include statements meeting the requirements of 37
`C.F.R. § 1.68 or 28 U.S.C. § 1746.
`Under 37 C.F.R. § 1.66, “[a]n oath or affirmation may be made before
`any person within the United States authorized by law to administer oaths”
`and the “oath shall be attested in all cases in this and other countries, by the
`proper official seal of the officer before whom the oath or affirmation is
`made.” The Declarations do not include the seal of an officer before whom
`Ms. Flanagan’s oath or affirmation was made, and, thus, the Declarations do
`not meet the requirements for an affidavit under 37 C.F.R. § 1.66.
`It is therefore,
`ORDERED that Patent Owner’s Motions for Admission pro hac vice
`of Elizabeth M. Flanagan are provisionally GRANTED;
`ORDERED that Patent Owner shall submit, within three (3) business
`days of the date of this order, an updated declaration or affidavit for Ms.
`Flanagan in each of the above-identified proceedings;
`FURTHER ORDERED that Patent Owner shall submit, within ten
`business days of the date of this order, a Power of Attorney for Ms. Flanagan
`in accordance with 37 C.F.R. § 42.10(b) in each of the above-identified
`proceedings;
`FURTHER ORDERED that Patent Owner shall submit an updated
`mandatory notice identifying Ms. Flanagan as back-up counsel in each of the
`above-identified proceedings, in accordance with 37 C.F.R. § 42.8;
`
`4
`
`
`
`IPR2019-01505 (Patent 8,450,475 B2);
`IPR2019-01506 and IPR2019-01632 (Patent 8,357,795 B2);
`IPR2019-01508 (Patent 9,238,013 B2);
`IPR2019-01509 (Patent 9,358,322 B2);
`IPR2019-01617 (Patent 8,822,676 B2);
`IPR2020-00084 (Patent 9,089,519 B2)
`
`
`FURTHER ORDERED that Ms. Flanagan is authorized to represent
`Patent Owner as back-up counsel only in these proceedings;
`FURTHER ORDERED that Patent Owner shall continue to have a
`registered practitioner represent it as lead counsel in these proceedings;
`FURTHER ORDERED that Ms. Flanagan shall comply with the
`Office Patent Trial Practice Guide, as updated by the Consolidated Trial
`Practice Guide (“Consolidated Practice Guide”), available at
`https://www.uspto.gov/TrialPracticeGuideConsolidated; see also 84 Fed.
`Reg. 64,280 (Nov. 21, 2019) and the Board’s Rules of Practice for Trials, as
`set forth in Part 42 of Title 37,4 Code of Federal Regulations; and
`FURTHER ORDERED that Ms. Flanagan is to be subject to the
`Office’s disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and the
`USPTO Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et.
`seq.
`
`
`
`
`
`4 The Motions each state that Ms. Flanagan has read, will comply with, and
`agrees to be subject to “the Office Patent Trial Practice Guide and the
`Board’s Rules of Practice for Trials set forth in part 42 of the C.F.R.”
`Motion 3. The Declarations each state that Ms. Flanagan 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 the Code of Federal Regulations.”
`Declaration ¶ 5. We note, however, that the Office Patent Trial Practice
`Guide and the Board’s Rules of Practice for Trials are set forth in Part 42 of
`37 C.F.R., and it is those rules to which Ms. Flanagan will be subject.
`5
`
`
`
`IPR2019-01505 (Patent 8,450,475 B2);
`IPR2019-01506 and IPR2019-01632 (Patent 8,357,795 B2);
`IPR2019-01508 (Patent 9,238,013 B2);
`IPR2019-01509 (Patent 9,358,322 B2);
`IPR2019-01617 (Patent 8,822,676 B2);
`IPR2020-00084 (Patent 9,089,519 B2)
`
`FOR PETITIONER:
`Christopher L. Curfman
`William W. Cutchins
`MEUNIER CARLIN & CURFMAN LLC
`ccurfman@mcciplaw.com
`wcutchins@mcciplaw.com
`
`FOR PATENT OWNER:
`Dorothy P. Whelan
`Michael Kane
`FISH & RICHARDSON P.C.
`whelan@fr.com
`kane@fr.com
`
`6
`
`
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