UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`MYLAN INSTITUTIONAL LLC,
`Petitioner,
`
`v.
`
`NOVO NORDISK A/S,
`Patent Owner.
`______________
`
`Case IPR2020-00324
`Patent 8,114,833
`______________
`
`PATENT OWNER’S UNOPPOSED MOTION FOR ADMISSION
`PRO HAC VICE OF LAURA T. MORAN UNDER 37 C.F.R. § 42.10(c)
`
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`MYLAN INSTITUTIONAL LLC,
`Petitioner,
`
`v.
`
`NOVO NORDISK A/S,
`Patent Owner.
`______________
`
`Case IPR2020-00324
`Patent 8,114,833
`______________
`
`PATENT OWNER’S UNOPPOSED MOTION FOR ADMISSION
`PRO HAC VICE OF LAURA T. MORAN UNDER 37 C.F.R. § 42.10(c)
`
`
`
`IPR2020-00324
`Patent 8,114,833
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. § 42.10(c), as authorized by the Board’s Notice of
`
`Filing Date Accorded mailed December 30, 2019 (Paper 3), and in accordance with
`
`the Board’s Order, Paper 7 in Case IPR2013-00639, Patent Owner Novo Nordisk
`
`A/S (“Patent Owner”) requests that the Board admit Laura T. Moran pro hac vice
`
`in this proceeding. Counsel for Petitioner Mylan Institutional LLC (“Petitioner”)
`
`has informed counsel for Patent Owner that Petitioner does not oppose this Motion.
`
`II.
`
`STATEMENT OF FACTS SHOWING GOOD CAUSE FOR THE
`BOARD TO RECOGNIZE COUNSEL PRO HAC VICE IN THE
`PROCEEDING
`
`Under 37 C.F.R. § 42.10(c), “[t]he 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.”
`
`The facts, supported by the attached Declaration of Laura T. Moran in
`
`Support of Patent Owner’s Motion for Admission Pro Hac Vice (EX2002)
`
`establish good cause to admit Ms. Moran pro hac vice in this proceeding.
`
`1
`
`
`
`1. Lead counsel, Jeffrey Oelke, is a registered practitioner (Reg. No.
`
`IPR2020-00324
`Patent 8,114,833
`
`37,409).
`
`2. Counsel for Patent Owner contacted counsel for Petitioner, who
`
`indicated that Petitioner did not plan to oppose Ms. Moran’s admission pro hac vice.
`
`3. Counsel, Laura T. Moran, is an experienced litigating attorney with
`
`over eight years in private practice and substantial experience with patent litigation.
`
`EX2002 at ¶ 9. Ms. Moran has been counsel in multiple patent infringement matters,
`
`including cases in at least four United States District Courts and the United States
`
`Court of Appeal for the Federal Circuit. Id. Ms. Moran is a member in good
`
`standing of the State Bar of New York. Id. at ¶ 1. She is also admitted to practice
`
`in the United States District Court for the Southern District of New York and the
`
`United States Court of Appeals for the Federal Circuit. Id. She has had no
`
`suspensions or disbarments from practice, no application for admission to practice
`
`denied, nor any sanctions or contempt citations. Id. at ¶¶ 2-4.
`
`4. Ms. Moran has previously applied to and been granted permission to
`
`practice before this Board pro hac vice in the following matter: Laboratoire
`
`Francais Du Fractionnement et des Biotechnologies S.A. v. Novo Nordisk
`
`Healthcare AG, IPR2017-00028 (Paper No. 36). EX2002 at ¶ 7.
`
`5. Ms. Moran has familiarity with the subject matter and patent-at-issue
`
`in this proceeding, U.S. Patent No. 8,114,833 (the “’833 patent”), including its
`
`2
`
`
`
`IPR2020-00324
`Patent 8,114,833
`
`prosecution history and the scientific field to which the ’833 patent is addressed. at
`
`¶ 8. Ms. Moran has served and is presently serving as counsel for Patent Owner in
`
`district court litigation involving the ’833 patent. Id.
`
`6. Ms. Moran has read and will comply with the Office Patent Trial
`
`Practice Guide and updates thereto and the Board’s Rules for Practices for Trials set
`
`forth in part 42 of title 37 of the Code of Federal Regulations, and she agrees to be
`
`subject to the USPTO Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101
`
`et seq. and to disciplinary jurisdiction under 37 C.F.R. § 11.19(a). EX2002 at ¶¶ 5-
`
`6.
`
`III.
`
`STATEMENT OF REASONS FOR THE RELIEF REQUESTED
`
`The facts stated above, as supported by the Declaration of Laura T. Moran
`
`(EX2002) establish that there is good cause to admit Ms. Moran pro hac vice in
`
`this proceeding under 37 C.F.R. § 42.10(c). Patent Owner’s Lead Counsel, Jeffrey
`
`Oelke, is a registered practitioner. Ms. Moran is an experienced litigating attorney
`
`who has familiarity with the subject matter at issue in the proceeding.
`
`IV. CONCLUSION
`
`For all of the reasons set forth above, Patent Owner respectfully requests
`
`that the Board admit Laura T. Moran pro hac vice in this proceeding.
`
`3
`
`
`
`Dated: February 12, 2020
`
`Respectfully submitted,
`
`IPR2020-00324
`Patent 8,114,833
`
`
`/Jeffrey J. Oelke/
`Jeffrey J. Oelke (Reg. No. 37,409)
`FENWICK & WEST LLP
`902 Broadway, Suite 14
`New York, NY 10010
`(212) 430-2600 (tel)
`joelke@fenwick.com
`
`Counsel for Novo Nordisk A/S
`
`4
`
`
`
`CERTIFICATE OF SERVICE
`
`IPR2020-00324
`Patent 8,114,833
`
`Pursuant to 37 C.F.R. §§ 42.6 and 42.105, I hereby certify that the foregoing
`
`document was served on February 12, 2020, 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:
`
`Brandon M. White
`Lara Dueppen
`Perkins Coie LLP
`white-ptab@perkinscoie.com
`dueppen-ptab@perkinscoie.com
`liraglutide@perkinscoie.com
`
`Date: February 12, 2020
`
`Respectfully submitted,
`
`/ Jeffrey J. Oelke/
`Jeffrey J. Oelke (Reg. No. 37,409)
`
`Counsel for Novo Nordisk A/S
`
`5
`
`
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