`571-272-7822
`
`Paper: 36
`Entered: March 12, 2024
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MYLAN PHARMACEUTICALS, INC.,
`Petitioner,
`
`v.
`
`NOVO NORDISK A/S,
`Patent Owner.
`____________
`
`IPR2023-00724
`Patent 10,335,462 B2
`____________
`
`Before JOHN G. NEW, SUSAN L. C. MITCHELL, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`MITCHELL, Administrative Patent Judge.
`
`
`ORDER
`Conditionally Granting Patent Owner’s Motions for Admission
`Pro Hac Vice of Jenny C. Wu and Philip S. May
`37 C.F.R. § 42.10
`
`
`
`
`
`IPR2023-00724
`Patent 10,335,462 B2
`
`
`On March 6, 2024, Patent Owner filed motions requesting admission
`pro hac vice of Jenny C. Wu and Philip S. May. Papers 34 and 35
`(collectively “Motions”). Patent Owner also submitted Declarations from
`Ms. Wu (Ex. 2533) and Mr. May (Ex. 2534) in support of the Motions
`(collectively “Declarations”). Patent Owner attests that Petitioner does not
`oppose the Motions. Papers 34 and 35.
`For the reasons provided below, Patent Owner’s 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 admission pro hac vice, 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 Ms. Wu and Mr. May each have sufficient
`legal and technical qualifications to represent Patent Owner in this
`proceeding, that Ms. Wu and Mr. May each have demonstrated sufficient
`litigation experience and familiarity with the subject matter of this
`proceeding, and that Ms. Wu and Mr. May meet all other requirements for
`admission pro hac vice. See Exs. 2533 and 2534. Accordingly,
`Patent Owner has established good cause for pro hac vice admission of
`
`
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`IPR2023-00724
`Patent 10,335,462 B2
`
`Ms. Wu and Mr. May. Ms. Wu and Mr. May will be permitted to serve as
`back-up counsel only. See 37 C.F.R. § 42.10(c).
`Patent Owner has not filed a Power of Attorney including Ms. Wu or
`Mr. May in accordance with 37 C.F.R. § 42.10(b). Nor has Patent Owner
`filed Mandatory Notices identifying Ms. Wu or Mr. May as back-up counsel
`in accordance with 37 C.F.R. § 42.8(b)(3).
`In consideration of the foregoing, it is hereby
`ORDERED that Patent Owner’s Motions for admission pro hac vice
`of Jenny C. Wu and Philip S. May are conditionally granted and full grants
`will be affected by Patent Owner’s filing of the aforementioned Power of
`Attorney within 10 days of this Order and filing of the aforementioned
`Mandatory Notices within 21 days of this Order;
`FURTHER ORDERED that Patent Owner is to continue to have a
`registered practitioner represent it as lead counsel for this proceeding;
`FURTHER ORDERED that Ms. Wu and Mr. May are authorized to
`represent Patent Owner as back-up counsel only in this proceeding;
`FURTHER ORDERED that Ms. Wu and Mr. May be familiar with
`the Patent Trial and Appeal Board Consolidated Trial Practice Guide1
`(84 Fed. Reg. 64,280 (Nov. 21, 2019)), and comply with 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. Wu and Mr. May 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.
`
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`3
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`IPR2023-00724
`Patent 10,335,462 B2
`
`
`
`FOR PETITIONER:
`
`Brandon M. White
`Emily J. Greb
`Courtney Prochnow
`Christopher D. Jones
`Jonathan I. Tietz
`Matthew A. Lembo
`PERKINS COIE LLP
`white-ptab@perkinscoie.com
`greb-ptab@perkinscoie.com
`prochnow-ptab@perkinscoie.com
`jones-ptab@perkinscoie.com
`tietz-ptab@perkinscoie.com
`lembo-ptab@perkinscoie.com
`Semaglutide-Ozempic@perkinscoie.com
`
`FOR PATENT OWNER:
`
`J. Steven Baughman
`Megan Raymond
`GROOMBRIDGE, WU, BAUGHMAN & STONE LLP
`steve.baughman@groombridgewu.com
`megan.raymond@groombridgewu.com
`
`
`
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