UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`REGENERON PHARMACEUTICALS, INC.,
`Petitioner
`
`v.
`
`NOVARTIS PHARMA AG,
`NOVARTIS TECHNOLOGY LLC,
`NOVARTIS PHARMACEUTICALS CORPORATION,
`Patent Owners.
`
`_________________
`
`Case: IPR2021-00816
`Patent No. 9,220,631
`_________________
`PATENT OWNERS’ MOTION FOR PRO HAC VICE ADMISSION OF
`NICHOLAS K. MITROKOSTAS UNDER 37 C.F.R. § 42.10(c)
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`REGENERON PHARMACEUTICALS, INC.,
`Petitioner
`
`v.
`
`NOVARTIS PHARMA AG,
`NOVARTIS TECHNOLOGY LLC,
`NOVARTIS PHARMACEUTICALS CORPORATION,
`Patent Owners.
`
`_________________
`
`Case: IPR2021-00816
`Patent No. 9,220,631
`_________________
`PATENT OWNERS’ MOTION FOR PRO HAC VICE ADMISSION OF
`NICHOLAS K. MITROKOSTAS UNDER 37 C.F.R. § 42.10(c)
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`Pursuant to 37 C.F.R. § 42.10(c), Patent Owners Novartis Pharma AG,
`
`Novartis Technology LLC, and Novartis Pharmaceuticals Corporation
`
`(collectively, “Patent Owners”) respectfully request pro hac vice admission of
`
`Nicholas K. Mitrokostas in this proceeding, IPR2021-00816, regarding U.S.
`
`Patent No. 9,220,631 (“the ’631 patent”).
`
`I.
`
`THE REQUEST IS TIMELY
`
`Pursuant to the Board’s “Notice of Filing Date Accorded to Petition and
`
`Time for Filing Patent Owner Preliminary Response,” dated April 28, 2021
`
`(Paper No. 5), authorizing the parties to file motions for pro hac vice
`
`admission under 37 C.F.R. § 42.10(c), Patent Owners respectfully request that
`
`the Board allow Nicholas K. Mitrokostas to appear pro hac vice on their
`
`behalf in this proceeding. Counsel for Petitioner does not oppose the relief
`
`requested in this motion.
`
`II.
`
`REASONS THE REQUESTED RELIEF SHOULD BE GRANTED
`As set forth in the Statement of Material Facts below, and as required by 37
`
`C.F.R. § 42.10(c), Patent Owners have demonstrated good cause to admit Mr.
`
`Mitrokostas pro hac vice in this proceeding. In particular, Patent Owners’ lead
`
`counsel is a registered practitioner, and Mr. Mitrokostas is an experienced
`
`litigating attorney having an established familiarity with the subject matter at
`
`issue in this proceeding.
`
`1
`
`
`
`Furthermore, this motion is being filed more than twenty-one days after
`
`service of the petition; includes a statement of facts showing good cause for
`
`the Board to recognize Mr. Mitrokostas pro hac vice; and is being filed
`
`concurrently with Exhibit 2098, the Declaration of Nicholas K. Mitrokostas in
`
`Support of Patent Owners’ Motion for Pro Hac Vice Admission of Nicholas K.
`
`Mitrokostas (“Mitrokostas Decl.”), all in accordance with the “Order
`
`Authorizing Motion for Pro Hac Vice Admission” in Unified Patents, Inc. v.
`
`Parallel Iron, LLC, IPR2013-00639, Paper 7, at 3 (P.T.A.B. Oct. 15, 2013).
`
`III. STATEMENT OF MATERIAL FACTS
`37 C.F.R. § 42.10(c) provides that “[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.”
`
`Elizabeth J. Holland, lead counsel for Patent Owners in this proceeding,
`
`is a registered practitioner holding Registration No. 47,657.
`
`As set forth in the Mitrokostas Decl., Mr. Mitrokostas is an experienced
`
`
`
`
`
`2
`
`
`
`litigating attorney. Specifically, Mr. Mitrokostas has 17 years of experience
`
`representing clients in patent litigations, primarily in the chemical and
`
`pharmaceutical arts, in United States District Courts and the Court of Appeals for
`
`the Federal Circuit. (Mitrokostas Decl., ¶¶ 2, 3). Mr. Mitrokostas has also been
`
`admitted pro hac vice by the Office in six prior pharmaceutical matters.
`
`(Mitrokostas Decl., ¶ 4).
`
`Mr. Mitrokostas also has an established familiarity with the precise subject
`
`matter at issue in this proceeding. Mr. Mitrokostas has developed a strong
`
`familiarity with the ’631 patent, its prosecution history, the general subject matter
`
`to which the ’631 patent is directed, and the prior art references relied upon by
`
`Petitioner. (Mitrokostas Decl., ¶ 5). Additionally, Mr. Mitrokostas has thoroughly
`
`reviewed the Petition and accompanying Exhibits submitted in this proceeding.
`
`(Id.).
`
`Mr. Mitrokostas has attested to each of the requirements set forth in
`
`paragraph 2(b)(i)-(viii) of the “Order Authorizing Motion for Pro Hac Vice
`
`Admission” in Case IPR2013-00639, Paper 7, at 3. (Mitrokostas Decl., ¶¶ 3-11).
`
`The Commissioner is hereby authorized to charge all fees due in connection
`
`with this pro hac vice application to Attorney Deposit Account 506989.
`
`IV. CONCLUSION
`In view of the foregoing, Patent Owners respectfully submit that the
`
`
`
`
`
`3
`
`
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`requirements of 37 C.F.R. § 42.10(c) have been satisfied, and request an
`
`Order permitting Nicholas K. Mitrokostas to appear pro hac vice on their
`
`behalf in this proceeding.
`
`
`
`
`
`4
`
`
`
`Dated: December 22, 2021
`
`Respectfully submitted,
`
`/Elizabeth J. Holland/
`Elizabeth J. Holland
`(Reg. No. 47,657)
`Goodwin Procter LLP
`The New York Times Building
`620 Eighth Avenue
`New York, NY 10018-1405
`Tel: 212-813-8800
`Fax: 212-355-3333
`eholland@goodwinlaw.com
`
`Counsel for Patent Owners Novartis
`Pharma AG, Novartis Technology LLC,
`and Novartis Pharmaceuticals
`Corporation
`
`5
`
`
`
`CERTIFICATION OF SERVICE
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.8(b)(4), the undersigned hereby
`
`certifies that “PATENT OWNERS’ MOTION FOR PRO HAC VICE
`
`ADMISSION OF NICHOLAS K. MITROKOSTAS UNDER 37 C.F.R. §
`
`42.10(c),” and “EXHIBIT 2098 - DECLARATION OF NICHOLAS K.
`
`MITROKOSTAS IN SUPPORT OF PATENT OWNERS’ MOTION FOR
`
`PRO HAC VICE ADMISSION OF NICHOLAS K. MITROKOSTAS UNDER
`
`37 C.F.R. § 42.10(c)” were served via electronic mail, as agreed to by counsel, on
`
`December 22, 2021, upon the following counsel of record for the Petitioner:
`
`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
`
`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
`
`Counsel for Petitioner Regeneron
`Pharmaceuticals, Inc.
`
`6
`
`
`
`Dated: December 22, 2021
`
`/Elizabeth J. Holland/
`Elizabeth J. Holland (Reg. No. 47,657)
`
`7
`
`
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