UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`MSN LABORATORIES PRIVATE LTD. AND MSN PHARMACEUTICALS INC.
`Petitioners
`
`v.
`
`BAUSCH HEALTH IRELAND LIMITED,
`Patent Owner
`_____________________
`
`IPR2023-00016
`Patent No. 7,041,786
`_____________________
`
`PETITIONERS’ MOTION FOR ADMISSION PRO HAC VICE OF
`CHRISTOPHER J. SORENSON UNDER 37 C.F.R. § 42.10(c)
`
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`MSN LABORATORIES PRIVATE LTD. AND MSN PHARMACEUTICALS INC.
`Petitioners
`
`v.
`
`BAUSCH HEALTH IRELAND LIMITED,
`Patent Owner
`_____________________
`
`IPR2023-00016
`Patent No. 7,041,786
`_____________________
`
`PETITIONERS’ MOTION FOR ADMISSION PRO HAC VICE OF
`CHRISTOPHER J. SORENSON UNDER 37 C.F.R. § 42.10(c)
`
`
`
`
`
`I.
`
`RELIEF REQUESTED
`
`Petitioners MSN Laboratories Private Ltd. and MSN Pharmaceuticals Inc.,
`
`request that the Board admit Christopher J. Sorenson pro hac vice in this
`
`proceeding pursuant to 37 C.F.R. § 42.10(c).
`
`II. GOVERNING LAWS, RULES, AND PRECEDENT
`
`Section 42.10(c) provides the “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 any other conditions as the Board may
`
`impose.” The Rule provides that a motion relating to counsel who is not a
`
`recognized 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.”
`
`On October 15, 2013, the Board issued an Order, Paper No. 7, in Case
`
`IPR2013-00639 that provides the guidelines for admission under 37 C.F.R.
`
`§ 42.10(c). See Unified Patents, Inc. v. Parallel Iron, LLC, IPR2013-00639, Paper
`
`7 (PTAB Oct. 15, 2013) (setting forth requirements for admission pro hac
`
`vice).That order incorporated changes in the rules, including the publication of the
`
`Final Rule in 78 Fed. Reg. 20180 adopting new Rules of Professional Conduct.
`
`See id.; see also, 78 Fed. Reg. 20180 (Apr. 3, 2013) (Final Rule) (codified at 37
`
`C.F.R. §§ 11.101-11.901). Motions for pro hac vice must “[c]ontain a statement of
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`1
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`IPR2023-00016
`Patent 7,041,786
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`facts showing there is good cause for the Board to recognize counsel pro hac vice
`
`during the proceeding.” The Order further provides the motion is to be
`
`“accompanied by an affidavit or declaration of the individual seeking to appear
`
`attesting to the following:
`
`i. Membership in good standing of the Bar of at least one State or the
`
`District of Columbia;
`
`ii.
`
`No suspensions or disbarments from practice before any court or
`
`administrative body;
`
`iii. No application for admission to practice before any court or
`
`administrative body ever denied;
`
`iv. No sanctions or contempt citations imposed by any court or
`
`administrative body;
`
`v.
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`The individual seeking to appear 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 37 C.F.R.;
`
`vi.
`
`The individual 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);
`
`vii. All other proceedings before the Office for which the individual has
`
`applied to appear pro hac vice in the last three (3) years; and
`2
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`IPR2023-00016
`Patent 7,041,786
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`viii. Familiarity with the subject matter at issue in the proceeding.
`
`See id.
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`III. TIME OF FILING
`
`This motion is being filed no sooner than twenty one (21) days after service
`
`of the petition.
`
`IV. STATEMENT OF THE FACTS
`
`The following facts, supported by the attached Declaration of Christopher J.
`
`Sorenson in Support of Petitioners’ Motion for Admission Pro Hac Vice, establish
`
`good cause to recognize Mr. Sorenson pro hac vice in this proceeding.
`
`Petitioners’ lead counsel, Andrew O. Larsen, is a registered practitioner
`
`(Reg. No. 59,315). Petitioners’ back-up counsel, Melissa Hayworth, is also a
`
`registered practitioner (Reg. No. 45,774).
`
`Counsel Christopher J. Sorenson is an experienced litigating attorney. Mr.
`
`Sorenson is a partner in the law firm of Merchant & Gould P.C. Mr. Sorenson has
`
`practiced litigation for more than twenty-six (26) years. (Ex 1056, (“Sorenson
`
`Decl.”, ¶ 8.) His experience includes representing a wide range of clients in
`
`intellectual property litigation. Mr. Sorenson has been litigating patent cases
`
`almost exclusively for the last twenty-one (21) years. (Id.)
`
`Mr. Sorenson has established familiarity with the subject matter at issue in
`
`this proceeding. Mr. Sorenson is counsel for Petitioners in a co-pending district
`3
`
`
`
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`IPR2023-00016
`Patent 7,041,786
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`court litigation filed by Patent Owner. (Id., ¶ 9.) Bausch Health Ireland Limited
`
`and Salix Pharmaceuticals, Inc. v. MSN Laboratories Private Ltd. and MSN
`
`Pharmaceuticals Inc., U.S.D.C., New Jersey, Civil Action No. 21-10057, which
`
`involves U.S. Patent No. 7,041,786. (Id.) The litigation involves the same patent
`
`at issue in this proceeding. (Id.) Mr. Sorenson, as counsel for Petitioners, has been
`
`actively involved in the district court litigation. (Id.)
`
`During the co-pending litigation, Mr. Sorenson is familiar with the subject
`
`matter of this case which relates to Patent No. 7,041,786 and its claims regarding
`
`the therapeutic use of guanylate cyclase receptor agonists as a means for enhancing
`
`the intracellular production of cGMP. Mr. Sorenson is thus familiar with the prior
`
`art relied upon in the Petitioners’ Petition as well as the patent at issue. (Id., ¶ 10.)
`
`Mr. Sorenson is in good standing and admitted to practice before the
`
`Minnesota State Bar, and before several federal courts, including the United States
`
`District Court for the District of Minnesota, District of Southern Iowa, Court of
`
`Appeals Eighth Circuit, and Court of Appeals Federal Circuit. (Id., ¶ 1.)
`
`Mr. Sorenson has had no suspensions or disbarments from practice before
`
`any court or administrative body. (Id., ¶ 2.)
`
`Mr. Sorenson has never been denied application to practice before any court
`
`or administrative body. (Id., ¶ 3.)
`
`4
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`IPR2023-00016
`Patent 7,041,786
`
`
`Mr. Sorenson has never been sanctioned or cited for contempt by any court
`
`or administrative body. (Id., ¶ 4.)
`
`Mr. Sorenson 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 37 C.F.R.
`
`(Id., ¶ 5.)
`
`Mr. Sorenson has agreed to be subject to the United States Patent and
`
`Trademark Office Rules of Professional Conduct, as set forth in 37 C.F.R.
`
`§§ 11.101 et. seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a). (Id., ¶
`
`6.)
`
`Mr. Sorenson has previously applied and accepted to appear pro hac vice
`
`before the Office in proceeding Nos. IPR2014-00592, IPR2017-01598, IPR2017-
`
`01599, and IPR2017-01603. (Id., ¶ 7.)
`
`V. ANALYSIS
`
`Part 42.10(c) of 37 C.F.R. states that the “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.” 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
`5
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`IPR2023-00016
`Patent 7,041,786
`
`matter at issue in the proceeding.” Id. The “Order – Authorizing Motion for Pro
`
`Hac Vice Admission” in Case IPR2013-00639 clarified the requirements for a
`
`motion for pro hac vice admission under 37 C.F.R. § 42.10(c). See Unified Patents,
`
`Inc. v. Parallel Iron, LLC, IPR2013-00639, Paper 7 (PTAB Oct. 15, 2013).
`
`The above-identified facts and the Sorenson Declaration establish that there
`
`is good cause to admit Mr. Sorenson pro hac vice in this proceeding under 37
`
`C.F.R. § 42.10(c). Lead counsel, Andrew O. Larsen, and backup counsel, Melissa
`
`Hayworth, are both registered practitioners. Mr. Sorenson is an attorney with over
`
`twenty-one (21) years of patent experience. Mr. Sorenson has established
`
`familiarity with the subject matter at issue in the proceeding. Admission of Mr.
`
`Sorenson will further enable Petitioners to be effectively and efficiently
`
`represented before the Board in this proceeding. Mr. Sorenson, in turn, will ensure
`
`that he follows the rules and guidelines set out by the Board.
`
`VI. CONCLUSION
`
`For the reasons stated above, Petitioners respectfully requests that the Board
`
`admit Christopher J. Sorenson to appear pro hac vice in this proceeding.
`
`
`
`Date: November 3, 2022
`
`
`
`
`Respectfully submitted,
`
`/Andrew Larsen/
`By:
`Andrew O Larsen, Ph.D., Esq.
`Reg. No. 59,315
`MERCHANT & GOULD P.C.
`6
`
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`
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`IPR2023-00016
`Patent 7,041,786
`
`
`500 Fifth Avenue, Suite 4100
`New York, NY 10110
`Main Telephone: (212) 223-6658
`Main Facsimile: (212) 223-6521
`alarsen@merchantgould.com
`
`Christopher J. Sorenson, Esq.
`Pro Hac Vice Pending
`MERCHANT & GOULD P.C.
`150 South Fifth Street, Suite 2200
`Minneapolis, MN 55402
`Main Telephone: (612) 336-4645
`Main Facsimile: (612) 332-9081
`csorenson@merchantgould.com
`
`Melissa Hayworth, Esq.
`Registration No. 45,774
`MERCHANT & GOULD P.C.
`1900 Duke Street, Suite 600
`Alexandria, VA 22314
`Main Telephone: (703) 684-2522
`Main Facsimile: (612) 332-9081
`mhayworth@merchantgould.com
`
`Counsel for Petitioners
`
`7
`
`
`
`
`CERTIFICATION OF SERVICE
`
`The undersigned hereby certifies that Petitioners’ Motion for Admission Pro
`
`Hac Vice of Christopher J. Sorenson Under 37 C.F.R. § 42.10(c) was served via
`
`email directed to counsel of record for the Patent Owner at the following:
`
`Justin J. Hasford (justin.hasford@finnegan.com)
`Bryan C. Diner (bryan.diner@finnegan.com)
`Joshua L. Goldberg (joshua.goldberg@finnegan.com)
`Kassandra M. Officer (kassandra.officer@finnegan.com)
`Lauren J. Robinson (lauren.robinson@finnegan.com)
`Caitlin E. O’Connell (caitlin.o’connell@finnegan.com)
`Kyu Yun Kim (kyuyun.kim@finnegan.com)
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
`901 New York Avenue, NW
`Washington, DC 20001-4413
`
`Courtesy Copy to Mylan Pharmaceuticals LLC
`
`Jad A. Mills (jmills@wsgr.com)
`Richard Torczon (rtorczon@wsgr.com)
`Nicole W. Stafford (nstafford@wsgr.com)
`Dennis D. Gregory (dgregory@wsgr.com)
`4863-5899-2145@mail.vault.netdocuments.com
`WILSON SONSINI GOODRICH & ROSATI
`PC 701 Fifth Avenue, Suite 5100
`Seattle, WA 98104-7036
`
`1
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`
`
`IPR2023-00016
`Patent 7,041,786
`
`Date: November 3, 2022
`
`/Andrew Larsen/
`By:
`Andrew O. Larsen, Ph.D., Esq.
`Reg. No. 59,315
`MERCHANT & GOULD P.C.
`500 Fifth Avenue, Suite 4100
`New York, NY 10110
`Main Telephone: (212) 223-6658
`Main Facsimile: (212) 223-6521
`alarsen@merchantgould.com
`
`Counsel for Petitioners
`
`2
`
`
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