UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`REGENERON PHARMACEUTICALS, INC.,
`Petitioner
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`v.
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`NOVARTIS PHARMA AG, NOVARTIS TECHNOLOGY LLC,
`NOVARTIS PHARMACEUTICALS CORPORATION,
`Patent Owners.
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`Case: IPR2021-00816
`Patent No. 9,220,631
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`PATENT OWNERS’ MOTION FOR
`PRO HAC VICE ADMISSION OF JOHN T. BENNETT
`AND DANIEL P. MARGOLIS UNDER 37 C.F.R. § 42.10(c)
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`REGENERON PHARMACEUTICALS, INC.,
`Petitioner
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`v.
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`NOVARTIS PHARMA AG, NOVARTIS TECHNOLOGY LLC,
`NOVARTIS PHARMACEUTICALS CORPORATION,
`Patent Owners.
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`Case: IPR2021-00816
`Patent No. 9,220,631
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`PATENT OWNERS’ MOTION FOR
`PRO HAC VICE ADMISSION OF JOHN T. BENNETT
`AND DANIEL P. MARGOLIS UNDER 37 C.F.R. § 42.10(c)
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
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`Pursuant to 37 C.F.R. § 42.10(c), Patent Owners Novartis Pharma AG,
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`Novartis Technology LLC, and Novartis Pharmaceuticals Corporation
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`(collectively, “Patent Owners”) respectfully request pro hac vice admission of John
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`T. Bennett and Daniel P. Margolis in this proceeding, IPR2021-00816, regarding
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`U.S. Patent No. 9,220,631 (“the ’631 patent”).
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`I.
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`THE REQUEST IS TIMELY
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`Pursuant to the Board’s “Notice of Filing Date Accorded to Petition and
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`Time for Filing Patent Owner Preliminary Response,” dated April 28, 2021 (Paper
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`No. 5), authorizing the parties to file motions for pro hac vice admission under 37
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`C.F.R. § 42.10(c), Patent Owners respectfully request that the Board allow John T.
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`Bennett and Daniel P. Margolis to appear pro hac vice on their behalf in this
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`proceeding. Counsel for Petitioner does not oppose the relief requested in this
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`motion.
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`II. REASONS THE REQUESTED RELIEF SHOULD BE GRANTED
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`As set forth in the Statement of Material Facts below, and as required by 37
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`C.F.R. § 42.10(c), Patent Owners have demonstrated good cause to admit Mr.
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`Bennett and Mr. Margolis pro hac vice in this proceeding. In particular, Patent
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`Owners’ lead counsel is a registered practitioner, and both Mr. Bennett and Mr.
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`Margolis are experienced litigating attorneys having an established familiarity with
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`the subject matter at issue in this proceeding.
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`1
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`Furthermore, this motion is being filed more than twenty-one days after
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`service of the petition, includes a statement of facts showing good cause for the
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`Board to recognize Mr. Bennett and Mr. Margolis pro hac vice, and is being filed
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`concurrently with Exhibit 2333, the Declaration of John T. Bennett in Support of
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`Patent Owners’ Motion for Pro Hac Vice Admission of John T. Bennett (“Bennett
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`Decl.”), and also Exhibit 2334, the Declaration of Daniel P. Margolis in Support of
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`Patent Owners’ Motion for Pro Hac Vice Admission of Daniel P. Margolis
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`(“Margolis Decl.”), all in accordance with the “Order Authorizing Motion for Pro
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`Hac Vice Admission” in Unified Patents, Inc. v. Parallel Iron, LLC, IPR2013-
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`00639, Paper 7, at 3 (P.T.A.B. Oct. 15, 2013).
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`III. STATEMENT OF MATERIAL FACTS
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`37 C.F.R. § 42.10(c) provides that “[t]he Board may recognize counsel pro
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`hac vice during a proceeding upon a showing of good cause, subject to the
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`condition that lead counsel be a registered practitioner and to any other conditions
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`as the Board may impose. For example, where the lead counsel is a registered
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`practitioner, a motion to appear pro hac vice by counsel who is not a registered
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`practitioner may be granted upon showing that counsel is an experienced litigating
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`attorney and has an established familiarity with the subject matter at issue in the
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`proceeding.”
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`2
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`Elizabeth J. Holland, lead counsel for Patent Owners in this proceeding, is a
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`registered practitioner holding Registration No. 47,657.
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`As set forth in the Bennett Decl., Mr. Bennett is an experienced litigating
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`attorney. Specifically, Mr. Bennett has 21 years of experience representing clients
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`in patent litigations, primarily in the chemical and pharmaceutical arts, in United
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`States District Courts and the Court of Appeals for the Federal Circuit. (Bennett
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`Decl., ¶¶ 2, 3). Mr. Bennett has also been admitted pro hac vice by the Office in
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`five prior pharmaceutical matters. (Bennett Decl., ¶ 4).
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`Mr. Bennett also has an established familiarity with the precise subject
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`matter at issue in this proceeding. Mr. Bennett has developed a strong familiarity
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`with the ’631 patent, its prosecution history, the general subject matter to which the
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`’631 patent is directed, and the prior art references relied upon by Petitioner.
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`(Bennett Decl., ¶ 5). Additionally, Mr. Bennett has thoroughly reviewed the
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`Petition and accompanying Exhibits submitted in this proceeding. (Id.).
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`Mr. Bennett has attested to each of the requirements set forth in paragraph
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`2(b)(i)-(viii) of the “Order Authorizing Motion for Pro Hac Vice Admission” in
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`Case IPR2013-00639, Paper 7, at 3. (Bennett Decl., ¶¶ 3-11).
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`As set forth in the Margolis Decl., Mr. Margolis is an experienced litigating
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`attorney. Specifically, Mr. Margolis has 15 years of experience representing clients
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`in patent litigations involving the chemical arts in United States district courts, the
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`3
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`Court of Appeals for the Federal Circuit, and in the United States International
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`Trade Commission. Mr. Margolis has also been admitted pro hac vice by the
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`Office in five prior pharmaceutical matters. (Margolis Decl., ¶ 4).
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`Mr. Margolis also has an established familiarity with the precise subject
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`matter at issue in this proceeding. Mr. Margolis has developed a strong familiarity
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`with the ’631 patent, its prosecution history, the general subject matter to which the
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`’631 patent is directed, and the prior art references relied upon by Petitioner.
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`(Margolis Decl., ¶ 5). Additionally, Mr. Margolis has thoroughly reviewed the
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`Petition and accompanying Exhibits submitted in this proceeding. (Id.).
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`Mr. Margolis has attested to each of the requirements set forth in paragraph
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`2(b)(i)-(viii) of the “Order Authorizing Motion for Pro Hac Vice Admission” in
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`Case IPR2013-00639, Paper 7, at 3. (Margolis Decl., ¶¶ 3-11).
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`The Commissioner is hereby authorized to charge all fees due in connection
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`with this pro hac vice application to Attorney Deposit Account 604184.
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`4
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`IV. CONCLUSION
`In view of the foregoing, Patent Owners respectfully submit that the
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`requirements of 37 C.F.R. § 42.10(c) have been satisfied, and request an Order
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`permitting John T. Bennett and Daniel P. Margolis to appear pro hac vice on their
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`behalf in this proceeding.
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`Dated: March 24, 2022
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`Respectfully submitted,
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`/Elizabeth J. Holland/
`Elizabeth J. Holland (Reg. No. 47,657)
`Allen & Overy LLP
`1221 Avenue of the Americas
`New York, NY 10020
`Tel: 212-610-6375
`elizabeth.holland@allenovery.com
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`Counsel for Patent Owners Novartis
`Pharma AG, Novartis Technology LLC, and
`Novartis Pharmaceuticals Corporation
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`5
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`CERTIFICATION OF SERVICE
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.8(b)(4), the undersigned hereby
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`certifies that “PATENT OWNERS’ MOTION FOR PRO HAC VICE
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`ADMISSION OF JOHN T. BENNETT AND DANIEL P. MARGOLIS
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`UNDER 37 C.F.R. § 42.10(c),” and “EXHIBIT 2333 - DECLARATION OF
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`JOHN T. BENNETT IN SUPPORT OF PATENT OWNERS’ MOTION FOR
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`PRO HAC VICE ADMISSION OF JOHN T. BENNETT UNDER 37 C.F.R. §
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`42.10(c)” and “EXHIBIT 2334 - DECLARATION OF DANIEL P.
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`MARGOLIS IN SUPPORT OF PATENT OWNERS’ MOTION FOR PRO
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`HAC VICE ADMISSION OF DANIEL P. MARGOLIS UNDER 37 C.F.R. §
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`42.10(c)” were served via electronic mail, as agreed to by counsel, on March 24,
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`2022, upon the following counsel of record for the Petitioner:
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`Elizabeth S. Weiswasser (Reg. No. 55,721)
`Anish R. Desai (Reg. No. 73,760)
`Natalie Kennedy (Reg. No. 68,511)
`Andrew Gesior (Reg. No. 76,588)
`WEIL, GOTSHAL & MANGES LLP
`767 Fifth Avenue
`New York, NY 10153
` T: 212-310-8000
`E: Regeneron.IPR.Service@weil.com
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`6
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`Brian E. Ferguson (Reg. No. 36,801)
`Christopher Pepe (Reg. No. 73,851)
`WEIL, GOTSHAL & MANGES LLP
`2001 M Street NW, Suite 600
`Washington, DC 20036
`T: 202-682-7000
`E: Regeneron.IPR.Service@weil.com
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`Counsel for Petitioner Regeneron Pharmaceuticals, Inc.
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`Dated: March 24, 2022
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`/Elizabeth J. Holland/
`Elizabeth J. Holland (Reg. No. 47,657)
`Allen & Overy LLP
`1221 Avenue of the Americas
`New York, NY 10020
`Tel: 212-610-6375
`elizabeth.holland@allenovery.com
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`Counsel for Patent Owners Novartis
`Pharma AG, Novartis Technology
`LLC, and Novartis Pharmaceuticals
`Corporation
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`7
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