`571-272-7822
`
`Paper 21
`Entered: November 7, 2023
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APOTEX INC.,
`Petitioner,
`
`v.
`
`CELGENE CORPORATION,
`Patent Owner.
`____________
`
`IPR2023-00512
`Patent No. 8,846,628 B2
`____________
`
`
`Before TINA E. HULSE, RYAN H. FLAX, and
`DEVON ZASTROW NEWMAN, Administrative Patent Judges.
`
`FLAX, Administrative Patent Judge.
`
`
`
`ORDER
`Conditionally Granting Patent Owner’s Motion for Pro Hac Vice Admission
`of Nora Q.E. Passamaneck, Amy K. Wigmore, and Andrew J. Danford
`37 C.F.R. § 42.10
`
`
`
`
`IPR2023-00512
`Patent No. 8,846,628 B2
`
`
`Patent Owner filed motions requesting pro hac vice admission of
`Nora Q.E. Passamaneck, Amy K. Wigmore, and Andrew J. Danford.
`Papers 17, 18, and 20 (collectively “Motions”). Patent Owner also
`submitted Declarations from Attorneys Passamaneck, Wigmore, and
`Danford in support of the Motions. Exs. 2152–2154 (collectively
`“Declarations”). Patent Owner attests that Petitioner does not oppose the
`Motions. Motions 2. For the reasons provided below, the Motions are
`conditionally granted.
`In accordance with 37 C.F.R. § 42.10(c), 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. In
`authorizing a motion for pro hac vice admission, the Board requires the
`moving party to provide 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, IPR2013-00639 (PTAB Oct. 15, 2013) (Paper 7)
`(representative “Order – Authorizing Motion for Pro Hac Vice Admission”).
`Based on the facts set forth in the Motions and the accompanying
`Declarations, we conclude that Attorneys Passamaneck, Wigmore, and
`Danford each have sufficient legal and technical qualifications to represent
`Patent Owner in this proceeding, that Attorneys Passamaneck, Wigmore,
`and Danford have each demonstrated sufficient litigation experience and
`familiarity with the subject matter of this proceeding, and that
`Attorneys Passamaneck, Wigmore, and Danford meet all other requirements
`for admission pro hac vice. See Declarations 1–3. Accordingly, Patent
`Owner has established good cause for pro hac vice admission of Attorneys
`
`2
`
`
`
`IPR2023-00512
`Patent No. 8,846,628 B2
`
`Passamaneck, Wigmore, and Danford. They will be permitted to serve as
`back-up counsel only. See 37 C.F.R. § 42.10(c).
`Patent Owner, however, has not filed updated Mandatory Notices
`identifying Attorneys Passamaneck, Wigmore, and Danford as back-up
`counsel in accordance with 37 C.F.R. § 42.8(b)(3). See, e.g., Papers 7, 11.
`Accordingly, the Motions are conditionally granted for Attorneys
`Passamaneck, Wigmore, and Danford, and are to be effective after Patent
`Owner files updated Mandatory Notices identifying Attorneys Passamaneck,
`Wigmore, and Danford as back-up counsel.
`
`In consideration of the foregoing, it is hereby
`ORDERED that Patent Owner’s Motions for pro hac vice admission
`of Attorneys Passamaneck, Wigmore, and Danford are conditionally granted
`provided that within twenty-one (21) business days of the date of this order
`Patent Owner must submit updated Mandatory Notices identifying each of
`Attorneys Passamaneck, Wigmore, and Danford as back-up counsel in
`accordance with 37 C.F.R. § 42.8(b)(3);
`FURTHER ORDERED that Patent Owner is to continue to have a
`registered practitioner represent it as lead counsel for this proceeding;
`FURTHER ORDERED that Attorneys Passamaneck, Wigmore, and
`Danford are authorized to represent Patent Owner as back-up counsel only in
`this proceeding;
`FURTHER ORDERED that Attorneys Passamaneck, Wigmore, and
`Danford comply with the Patent Trial and Appeal Board Consolidated Trial
`Practice Guide1 (84 Fed. Reg. 64,280 (Nov. 21, 2019)), and the Board’s
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`3
`
`
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`IPR2023-00512
`Patent No. 8,846,628 B2
`
`Rules of Practice for Trials, as set forth in Part 42 of Title 37, Code of
`Federal Regulations;2 and
`FURTHER ORDERED that Attorneys Passamaneck, Wigmore, and
`Danford are 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.
`
`
`
`
`2 The Declarations attest Attorneys Passamaneck, Wigmore, and Danford
`“will comply with the Patent Office Patent Trial Practice Guide and the
`Board’s Rules of Practice for Trials set forth in 35 C.F.R. § 42.”
`Declarations 4 (underline added). The Trial Practice Guide and the Rules of
`Practice for Trials are set forth in Part 42 of Title 37, Code of Federal
`Regulations. We deem this harmless error.
`
`4
`
`
`
`IPR2023-00512
`Patent No. 8,846,628 B2
`
`FOR PETITIONER:
`
`Vishal Gupta
`vgupta@steptoe.com
`
`John Molenda
`jmolenda@steptoe.com
`
`Robert Kappers
`rkappers@steptoe.com
`
`Tyler Doh
`tdoh@steptoe.com
`
`Michael Green
`migreen@steptoe.com
`
`
`FOR PATENT OWNER:
`
`
`Heather Petruzzi
`heather.petruzzi@wilmerhale.com
`
`Laura Macro
`aura.macro@wilmerhale.com
`
`Gabriel Rosanio
`gabriel.rosanio@wilmerhale.com
`
`
`
`
`
`5
`
`