`571-272-7822
`
` Paper 13
`
` Entered: January 18, 2019
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`AMNEAL PHARMACEUTICALS LLC,
`Petitioner,
`
`v.
`
`ALKERMES PHARMA IRELAND LIMITED,
`Patent Owner.
`____________
`
`Case IPR2018-00943
`Patent 7,919,499 B2
`____________
`
`
`
`
`Before CHRISTOPHER M. KAISER, JACQUELINE T. HARLOW, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`SAWERT, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Granting Patent Owner’s Motion for Pro Hac Vice
`Admission of Joseph M. O’Malley, Jr.
`37 C.F.R. § 42.10
`
`
`
`IPR2018-00943
`Patent 7,919,499 B2
`
`
`
`
`On January 17, 2019, Patent Owner filed a motion for pro hac vice
`
`
`
`admission of Joseph M. O’Malley, Jr. Paper 12 (“Motion”). Patent Owner
`
`submitted an affidavit from Mr. O’Malley in support of the Motion.
`
`Ex. 2022. Upon review of the record before us, and for the reasons set forth
`
`below, Patent Owner’s Motion is 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. 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 Paper 4, 2 (citing
`
`Unified Patents, Inc. v. Parallel Iron, LLC, Case 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 Motion and the accompanying
`
`declaration, we conclude that Mr. O’Malley has sufficient legal and
`
`technical qualifications to represent Patent Owner in this proceeding, that
`
`Mr. O’Malley has demonstrated sufficient familiarity with the subject matter
`
`of this proceeding, and that there is a need for Patent Owner to be
`
`represented by counsel with litigation experience. See Motion 1–3; Ex. 2022
`
`¶¶ 2, 8–9. Mr. O’Malley has also attested that (1) he has read and will
`
`comply with the Board’s Rules of Practice for Trials as set forth in Part 42 of
`
`Title 37, Code of Federal Regulations and the Office Patent Trial Practice
`
`Guide, and that (2) he agrees to be subject to the USPTO Rules of
`
`Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and
`
`
`
`2
`
`
`
`IPR2018-00943
`Patent 7,919,499 B2
`
`
`
`disciplinary jurisdiction under 37 C.F.R. § 11.19(a). Id. ¶¶ 6–7.
`
`
`
`Accordingly, Patent Owner has established good cause for pro hac vice
`
`admission of Mr. O’Malley. Mr. O’Malley will be permitted to serve as
`
`back-up counsel only. See 37 C.F.R. § 42.10(c).
`
`Accordingly, it is hereby:
`
`ORDERED that Patent Owner’s Motion for pro hac vice admission of
`
`Joseph M. O’Malley, Jr. (Paper 12) is granted, and Mr. O’Malley is
`
`authorized to act as back-up counsel in the instant proceeding only;
`
`FURTHER ORDERED that Patent Owner shall continue to have a
`
`registered practitioner as lead counsel in the instant proceeding;
`
`FURTHER ORDERED that Mr. O’Malley shall comply with the
`
`Office Patent Trial Practice Guide and the Board’s Rules of Practice for
`
`Trials, as set forth in Title 37, Part 42 of the Code of Federal Regulations;
`
`FURTHER ORDERED that Mr. O’Malley is subject to the USPTO
`
`Rules of Professional Conduct as set forth in 37 C.F.R. §§ 11.101 et seq. and
`
`the USPTO’s disciplinary jurisdiction under 37 C.F.R. § 11.19(a); and
`
`FURTHER ORDERED that Patent Owner shall submit a power of
`
`attorney in accordance with 37 C.F.R. § 42.10(b) for Mr. O’Malley, update
`
`its mandatory notices, as required by 37 C.F.R. § 42.8, and update its
`
`counsel information in the PTAB E2E filing system.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`
`
`
`
`IPR2018-00943
`Patent 7,919,499 B2
`
`
`FOR PETITIONER:
`
`Nichole M. Valeyko
`Michael H. Teschner
`Tedd W. Van Buskirk
`LERNER, DAVID, LITTENBERG,
`KRUMHOLZ & MENTLIK, LLP
`nvaleyko@lernerdavid.com
`mteschner.ipr@ldlkm.com
`tvanbuskirk@lernerdavid.com
`
`
`FOR PATENT OWNER:
`
`Naveen Modi
`Bruce M. Wexler
`Michael Stramiello
`Andrew Cochran
`PAUL HASTINGS LLP
`naveenmodi@paulhastings.com
`brucewexler@paulhastings.com
`michaelstramiello@paulhastings.com
`andrewcochran@paulhastings.com
`
`
`
`
`
`4
`
`
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