`571-272-7822
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`Paper # 55
`Entered: June 20, 2024
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________
`
`TWI PHARMACEUTICALS, INC.,
`Petitioner,
`
`v.
`
`MERCK SERONO SA,
`Patent Owner.
`_____________________________
`
`IPR2023-00049 (Patent 7,713,947 B2)
`IPR2023-00050 (Patent 8,377,903 B2)1
`_____________________________
`
`
`
`Before ULRIKE W. JENKS, ZHENYU YANG, and TINA E. HULSE,
`Administrative Patent Judges.
`
`JENKS, Administrative Patent Judge.
`
`
`ORDER
`Granting Patent Owner’s Motions for
`Admission Pro Hac Vice of H. Rachael Million-Perez
`37 C.F.R. § 42.10
`
`
`1 This Order addresses the same issue for the above-identified proceedings.
`Therefore, we exercise our discretion to issue one order to be filed in each
`proceeding. The parties are not authorized to use this style heading in any
`subsequent papers.
`
`
`
`IPR2023-00049 (Patent 7,713,947 B2)
`IPR2023-00050 (Patent 8,377,903 B2)
`
`Patent Owner filed Motions requesting admission pro hac vice of
`
`H. Rachael Million-Perez (Paper 47) in each of these proceedings (the
`“Motions” or “Mot.”).2 Patent Owner submitted Declarations from
`Ms. Million-Perez in support of the Motions. Ex. 2080. Patent Owner
`attests that Petitioner does not oppose the Motions. Motion 1. For the
`reasons provided below, Patent Owner’s Motions are granted.
`In accordance with 37 C.F.R. § 42.10(c), we 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. The
`representative Order authorizing motions for pro hac vice admission requires
`a statement of facts showing there is good cause for the Board to recognize
`counsel pro hac vice, and an affidavit or declaration of the individual
`seeking to appear in the proceeding. See Unified Patents, Inc. v. Parallel
`Iron, LLC, Case IPR2013-00639, Paper 7 (PTAB Oct. 15, 2013) (setting
`forth the requirements for admission pro hac vice).
`Based on the facts set forth in the Motions and the accompanying
`Declarations, we conclude that Ms. Million-Perez has sufficient legal and
`technical qualifications to represent Patent Owner in each of these
`proceedings, that Ms. Million-Perez has demonstrated sufficient litigation
`experience and familiarity with the subject matter of each of these
`proceedings, and that Ms. Million-Perez meets all other requirements for
`admission pro hac vice. See Motion 1–3, Ex. 2080 ¶¶ 1–11. Accordingly,
`Patent Owner has established good cause for admission pro hac vice of Ms.
`
`
`2 We cite to Papers and Exhibits in IPR2023-00049. Similar items were
`filed in IPR2023-00050.
`
`2
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`
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`
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`IPR2023-00049 (Patent 7,713,947 B2)
`IPR2023-00050 (Patent 8,377,903 B2)
`
`Million-Perez. Ms. Million-Perez will be permitted to appear pro hac vice
`as back-up counsel only. See 37 C.F.R. § 42.10(c).
`We note that Patent Owner filed Powers of Attorney including
`Ms. Million-Perez in accordance with 37 C.F.R. § 42.10(b). Paper 5. Patent
`Owner has also filed Updated Mandatory Notices, identifying Ms. Million-
`Perez as back-up counsel in accordance with 37 C.F.R. § 42.8(b)(3). Paper
`48.
`
`In consideration of the foregoing, it is hereby
`ORDERED that Patent Owner’s Motions (Paper 47) for admission
`pro hac vice of H. Rachael Million-Perez in each of the above-identified
`proceedings are granted;
`FURTHER ORDERED that Patent Owner is to continue to have a
`registered practitioner represent it as lead counsel for these proceedings;
`FURTHER ORDERED that Ms. Million-Perez is authorized to
`represent Patent Owner as back-up counsel only in these proceedings;
`FURTHER ORDERED that Ms. Million-Perez shall comply with the
`Consolidated Trial Practice Guide3 (84 Fed. Reg. 64,280 (Nov. 21, 2019))
`and the Board’s Rules of Practice for Trials as set forth in Part 42 of Title
`37, Code of Federal Regulations; and
`FURTHER ORDERED that Ms. Million-Perez shall be subject to the
`Office’s disciplinary jurisdiction under 37 C.F.R. § 11.19(a) and the USPTO
`Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq.
`
`
`3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`3
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`IPR2023-00049 (Patent 7,713,947 B2)
`IPR2023-00050 (Patent 8,377,903 B2)
`
`FOR PETITIONER:
`Philip Segrest
`Philip.segrest@huschblackwell.com
`
`Nathan Sportel
`Nathan.sportel@huschblackwell.com
`
`Stephen Howe
`Steve.howe@huschblackwell.com
`
`FOR PATENT OWNER:
`
`Emily Whelan
`Emily.whelan@wilmerhale.com
`
`Deric Geng
`Deric.geng@wilmerhale.com
`
`Cindy Kan
`Cindy.kan@wilmerhale.com
`
`Asher McGuffin
`Asher.mcguffin@wilmerhale.com
`
`Scott Bertulli
`Scott.bertulli@wilmerhale.com
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`4
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