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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`RIGEL PHARMACEUTICALS, INC.
`
`Petitioner,
`
`
`v.
`
`
`SERVIER PHARMACEUTICALS LLC
`
`Patent Owner.
`______________
`
`Case No. IPR2022-01423
`Patent: 10,610,125
`
`______________
`
`PATENT OWNER’S MOTION FOR PRO HAC VICE ADMISSION OF
`VANESSA Y. YEN
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`

`

`IPR2022-01423
`Patent 10,610,125
`
`Exhibit No.
`2001
`
`2002
`2003
`
`2004
`2005
`
`2006
`
`EXHIBIT LIST
`Description
`Declaration of Vanessa Y. Yen in Support of Motion for
`Pro Hac Vice
`Vanessa Y. Yen Biography
`Declaration of Evan D. Diamond in Support of Motion
`for Pro Hac Vice
`Evan D. Diamond Biography
`Declaration of Hassen A. Sayeed, M.D. in Support of
`Motion for Pro Hac Vice
`Hassen A. Sayeed, M.D. Biography
`
`-ii-
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`Pursuant to 37 C.F.R. § 42.10(c), Patent Owner, Servier Pharmaceuticals LLC
`
`IPR2022-01423
`Patent 10,610,125
`
`
`
`(“Patent Owner”) respectfully requests the pro hac vice admission of attorney
`
`Vanessa Y. Yen for purposes of the above-captioned inter partes review proceeding.
`
`Patent Owner has conferred with counsel for Rigel Pharmaceuticals, Inc.
`
`(“Petitioner”), and Petitioner does not oppose this motion.
`
`I.
`
`STATEMENT OF FACTS SHOWING GOOD CAUSE FOR THE BOARD TO
`RECOGNIZE VANESSA Y. YEN PRO HAC VICE IN THIS PROCEEDING
`The Board may recognize counsel pro hac vice during an inter partes review
`
`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.”
`
`37 C.F.R. § 42.10(c). “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.” Id.
`
`As set forth below and in the accompanying Declaration of Vanessa Y. Yen
`
`in Support of Motion to Appear Pro Hac Vice (“Yen Decl.,” Exhibit 2001), the facts
`
`here establish good cause for the Board to recognize Vanessa Yen pro hac vice in
`
`this proceeding.
`
`
`
`

`

`1. Ms. Yen is a member in good standing of the State Bar of New York
`
`IPR2022-01423
`Patent 10,610,125
`
`
`
`(Bar No. 4842563). See Exhibit 2001, ¶ 2.
`
`2. Ms. Yen has never been suspended or disbarred from practice before
`
`any court or administrative body. See Exhibit 2001, ¶ 3.
`
`3.
`
`None of Ms. Yen’s applications for admission to practice before any
`
`court or administrative body have ever been denied. See Exhibit 2001, ¶ 4.
`
`4. Ms. Yen has not been sanctioned nor has she had a contempt citation
`
`imposed on her by any court or administrative body. See Exhibit 2001, ¶ 5.
`
`5. Ms. Yen has declared that she has read and will comply with the Office
`
`Patent Trial Practice Guide and the Board’s Rules of Practice for Trial set forth in
`
`part 42 of 37 C.F.R. See Exhibit 2001, ¶ 6.
`
`6. Ms. Yen has acknowledged and agrees 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). See Exhibit 2001, ¶ 7.
`
`7. Ms. Yen is a Partner in the Life Sciences Intellectual Property practice
`
`of King & Spalding LLP, and is an experienced patent litigation attorney in the fields
`
`of pharmaceuticals and biotechnology, in both federal district court patent
`
`infringement suits across the country and in inter partes review proceedings before
`
`the Patent Trial and Appeal Board. See Exhibit 2001, ¶ 8. Ms. Yen received her
`
`J.D. from Cornell Law School and has a technical background pertinent to the issues
`
`-2-
`
`

`

`
`in this proceeding, including B.S. in Biology from Massachusetts Institute of
`
`IPR2022-01423
`Patent 10,610,125
`
`Technology. See Exhibit 2001, ¶ 9.
`
`8. Ms. Yen has studied and analyzed the field of technology relevant to
`
`the ’125 patent, as well as the claims, specification and prosecution history of the
`
`’125 patent. Accordingly, Ms. Yen has become very familiar with both the particular
`
`subject matter and substantive issues concerning the ’125 patent. She is also familiar
`
`with the alleged prior art references asserted by Petitioner in this inter partes review
`
`proceeding. See Exhibit 2001, ¶ 10.
`
`In view of Ms. Yen’s knowledge of the subject matter at issue in this
`
`proceeding, Patent Owner has a substantial need for Ms. Yen’s pro hac vice
`
`admission and her involvement in this proceeding.
`
`II. CONCLUSION
`For the foregoing reasons, Patent Owner respectfully requests that the Board
`
`admit Vanessa Y. Yen pro hac vice in this proceeding.
`
`
`
`
`
`-3-
`
`

`

`IPR2022-01423
`Patent 10,610,125
`
`Respectfully submitted,
`
`KING & SPALDING LLP
`
`/Joseph D. Eng, Jr./
`
`Joseph D. Eng, Jr. (Reg. No. 54,084)
`Attorneys for Patent Owner
`Servier Pharmaceuticals LLC
`
`Date: September 7, 2022
`1185 Avenue of the Americas
`New York, NY 10036 (212)
`556-2100
`
`-4-
`
`

`

`IPR2022-01423
`Patent 10,610,125
`
`CERTIFICATION OF SERVICE
`
`The undersigned hereby certifies that the foregoing PATENT OWNER’S
`
`MOTION FOR PRO HAC VICE ADMISSION OF VANESSA Y. YEN,
`
`EXHIBIT LIST and EXHIBITS 2001-2002 were served via electronic
`
`mail September 7, 2022, in their entirety on the following:
`
`Paul H. Berghoff (Reg. No. 30,243)
`James L. Lovsin (Reg. No. 69,550)
`James V. Suggs (Reg. No. 50,419)
`MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
`300 South Wacker Drive
`Chicago, IL 60606
`berghoff@mbhb.com
`lovsin@mbhb.com
`suggs@mbhb.com
`docketing@mbhb.com
`RigelIPR@mbhb.com
`
`KING & SPALDING LLP
`
`/Joseph D. Eng, Jr./
`
`Joseph D. Eng, Jr. (Reg. No. 54,084)
`Attorneys for Patent Owner
`Servier Pharmaceuticals LLC
`
`Date: September 7, 2022
`1185 Avenue of the Americas
`New York, NY 10036
`(212) 556-2100
`
`

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