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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TWI PHARMACEUTICALS, INC.,
`Petitioner,
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`v.
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`MERCK SERONO SA,
`Patent Owner.
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`Case IPR2023-00050
`U.S. Patent 8,377,903
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`PATENT OWNER’S MOTION FOR
`ADMISSION PRO HAC VICE OF
`MARY PHENG
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`I.
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`IPR2023-00050
`Patent Owner’s Motion for Admission Pro Hac Vice of Mary Pheng
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`Statement of Precise Relief Requested
`Pursuant to 37 C.F.R. § 42.10(c) and Paper No. 3 authorizing the parties to
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`file motions for pro hac vice admissions under 37 C.F.R. § 42.10(c), Patent Owner
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`Merck Serono SA requests that the Patent Trial and Appeal Board (the “Board”)
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`admit Mary Pheng pro hac vice in this proceeding, IPR2023-00050. The parties
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`have met and conferred, and Petitioner does not oppose this motion.
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`II.
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`Statement of Facts Showing Good Cause for the Board to Recognize
`Counsel Pro Hac Vice During the Proceeding
`In accordance with 37 C.F.R. § 42.10(c), the Board may recognize counsel
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`pro 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. Section 42.10(c) indicates that “where lead counsel is a
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`registered practitioner, a motion to appear pro hac vice by counsel who is not a
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`registered practitioner may be granted upon a showing that counsel is an
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`experienced litigating attorney and has an established familiarity with the subject
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`matter at issue in the proceeding.” The facts here establish good cause for the
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`Board to recognize Ms. Pheng pro hac vice in this proceeding.
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`Lead counsel, Emily R. Whelan, is a registered practitioner. Backup
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`counsel, Deric Geng and Cindy Kan, are also registered practitioners. Ms. Pheng is
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`an experienced litigator and has established familiarity with the subject matter at
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`IPR2023-00050
`Patent Owner’s Motion for Admission Pro Hac Vice of Mary Pheng
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`issue in the proceeding.
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`Accompanying this motion as Exhibit 2003 is the February 8, 2024,
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`Declaration of Mary Pheng in Support of this Motion for Admission Pro Hac Vice
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`(“Pheng Decl.”). In her declaration, Ms. Pheng asserts:
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`I am a member in good standing of the Bars of Minnesota and New
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`York and am admitted to practice before the U.S. District Court for
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`the District of Minnesota.
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`Pheng Decl. ¶ 2 (Ex. 2003).
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`Ms. Pheng demonstrates that she has a detailed working knowledge of the
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`relevant subject matter through her participation in the inter partes review matters
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`challenging U.S. Patent No. 7,713,947 and U.S. Patent No. 8,377,903 and in
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`consolidated district court litigations. Id. ¶ 10 (Ex. 2003). Ms. Pheng also has
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`significant experience with patent litigation in a variety of jurisdictions, including
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`in inter partes review proceedings, district court litigation, and international trade
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`commission investigations. Id. ¶ 1 (Ex. 2003). Ms. Pheng will work in
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`coordination and association with the designated lead counsel for this proceeding,
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`Emily R. Whelan. Id. ¶ 11 (Ex. 2003).
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`In her declaration, Ms. Pheng also attests to each of the listed items required
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`by the “Order – Authorizing Motion for Pro Hac Vice Admission” in Case
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`IPR2023-00050
`Patent Owner’s Motion for Admission Pro Hac Vice of Mary Pheng
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`IPR2013-00639, Paper 7. See Pheng Decl. ¶¶ 1-12 (Ex. 2003). Ms. Pheng attests
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`that she has read and will comply with the Office Patent Trial Practice Guide and
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`the Board’s Rules of Practice for Trials set forth in 37 C.F.R. § 42. See id. ¶ 7 (Ex.
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`2003). Ms. Pheng further attests that she agrees to be subject to the United States
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`Patent and Trademark Office’s Rules of Professional Conduct as set forth in 37
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`C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
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`See id. ¶ 8 (Ex. 2003).
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`III. Conclusion
`For the foregoing reasons, Patent Owner respectfully requests that the Board
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`admit Ms. Pheng pro hac vice in this proceeding. The undersigned authorizes the
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`Office to charge $250 to Deposit Account No. 08-0219 for the fees set forth in 37
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`C.F.R. § 42.15(e) for this pro hac vice motion. Please charge any shortage of fees
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`or credit any overpayments to the above Deposit Account.
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`Dated: February 9, 2024
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`Respectfully Submitted,
`/Emily R. Whelan/
`Emily R. Whelan, Reg. No. 50,391
`Counsel for Patent Owner
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`IPR2023-00050
`Patent Owner’s Motion for Admission Pro Hac Vice of Mary Pheng
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`PATENT OWNER’S UPDATED EXHIBIT LIST
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`Description
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`Exhibit
`No.
`2001 Declaration of David B. Bassett in Support of Motion for Admission
`Pro Hac Vice
`2002 Declaration of Vinita Ferrera in Support of Motion for Admission Pro
`Hac Vice
`2003 Declaration of Mary Pheng in Support of Motion for Admission Pro
`Hac Vice
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`IPR2023-00050
`Patent Owner’s Motion for Admission Pro Hac Vice of Mary Pheng
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`CERTIFICATE OF SERVICE
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` hereby certify that on February 9, 2024, I caused a true and correct
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`copy of the foregoing materials:
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`Patent Owner’s Motion for Admission Pro Hac Vice of Mary Pheng
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`Exhibit 2003
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`Patent Owner’s Updated Exhibit List
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`to be served via e-mail, as consented to by Petitioner, on the following
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`attorneys of record:
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`Philip.Segrest@huschblackwell.com
`Nathan.Sportel@huschblackwell.com
`Steve.Howe@huschblackwell.com
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`By: /Cindy Kan/
`Cindy Kan (Reg. No. 76,385)
`Wilmer Cutler Pickering Hale and Dorr LLP
`7 World Trade Center
`250 Greenwich Street
`New York, NY 10007
`Tel: (212) 295-6470
`E-mail: cindy.kan@wilmerhale.com
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