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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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`MYLAN PHARMACEUTICALS INC,
`Petitioner,
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`v.
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`MERCK SHARP & DOHME CORP.,
`Patent Owner.
`__________________
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`Case No. IPR2020-00040
`U.S. Patent No. 7,326,708
`__________________
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`UNOPPOSED MOTION FOR PRO HAC VICE ADMISSION OF ALEXANDER S.
`ZOLAN PURSUANT TO 37 C.F.R. § 42.10(c)
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`Case No. IPR2020-00040
`U.S. Patent No. 7,326,708
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`I.
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`RELIEF REQUESTED
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`Pursuant to 37 C.F.R. § 42.10(c) and the Board’s Notice of Filing Date Accorded to
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`Petition and Time for Filing Patent Owner Preliminary Response, which authorizes the parties to
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`file motions for pro hac vice admission, Paper 4 at 2, Patent Owner Merck Sharp & Dohme
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`Corp. submits the following motion for admission pro hac vice of Alexander S. Zolan of
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`Williams & Connolly LLP, 725 Twelfth Street, N.W., Washington, DC 20005 in the above-
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`captioned matter.
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`II.
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`GOVERNING LAW, RULES, AND PRECEDENT
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`The Board is authorized to recognize counsel pro hac vice pursuant to 37 C.F.R.
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`§ 42.10(c), which provides that:
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`The Board may recognize counsel pro hac vice during a proceeding upon a
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`showing of good cause, subject to the condition that lead counsel be a
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`registered practitioner and to any other conditions as the Board may impose.
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`For example, where the lead counsel is a registered practitioner, a motion
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`to appear pro hac vice by counsel who is not a registered practitioner may
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`be granted upon showing that counsel is an experienced litigating attorney
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`and has an established familiarity with the subject matter at issue in the
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`proceeding.
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`The Unified Patents Order requires that a pro hac vice motion “[c]ontain a statement of
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`facts showing there is good cause for the Board to recognize counsel pro hac vice during the
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`proceeding.” Order – Authorizing Motion for Pro Hac Vice Admission – 37 C.F.R. § 42.10,
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`IPR2013-00639, Paper 7 at 3. A motion for pro hac vice admission should also be accompanied
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`by an affidavit or declaration of the individual seeking to appear attesting to the following:
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`i. Membership in good standing of the Bar of at least one State or the District of
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`Columbia;
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`2
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`Case No. IPR2020-00040
`U.S. Patent No. 7,326,708
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`ii. No suspensions or disbarments from practice before any court or
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`administrative body;
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`iii. No application for admission to practice before any court or administrative
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`body ever denied;
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`iv. No sanctions or contempt citations imposed by any court or administrative
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`body;
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`v. The individual seeking to appear has read and will comply with the Office
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`Patent Trial Practice Guide and the Board’s Rules of Practice for Trials set
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`forth in part 42 of 37 C.F.R.;
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`vi. The individual will be subject to the USPTO Rules of Professional Conduct
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`set forth in 37 C.F.R. §§ 11.101 et seq.;
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`vii. All other proceedings before the Office for which the individual has applied to
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`appear pro hac vice in the last three (3) years; and
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`viii.
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`Familiarity with the subject matter at issue in the proceeding.
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`Id.
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`III.
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`STATEMENT OF FACTS
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`Based on the following facts, and supported by the Declaration of Mr. Zolan (Ex. 2025)
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`submitted herewith, Patent Owner Merck Sharp & Dohme Corp. requests the pro hac vice
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`admission of Alexander S. Zolan in this proceeding:
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`1. Patent Owner’s lead counsel, Stanley E. Fisher (Reg. No. 55,820), is a registered
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`practitioner before the Board.
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`2. Mr. Zolan is a partner at Williams & Connolly LLP and an experienced litigation
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`attorney. Mr. Zolan has more than seven (7) years of litigation experience. Ex. 2025 ¶ 2.
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`3. Mr. Zolan has established familiarity with the subject matter at issue in this proceeding.
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`As detailed below, Mr. Zolan has reviewed in detail the pleadings, patent, and exhibits relied
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`upon by Petitioner, as well as engaged in extensive strategic and substantive discussions
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`regarding this proceeding with Stanley E. Fisher, the lead counsel for Patent Owner Merck Sharp
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`3
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`U.S. Patent No. 7,326,708
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`& Dohme Corp. Ex. 2025 ¶ 10. Mr. Zolan has engaged in the representation of Patent Owner
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`Merck Sharp & Dohme Corp. in related matters in federal district court, including the assertion
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`of U.S. Patent No. 7,326,708 in Merck Sharp & Dohme Corp. v. Mylan Pharmaceuticals Inc.,
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`C.A. No. 19-cv-101-IMK (N.D.W.V.) and In Re: Sitagliptin Patent Litigation, MDL No. 19-
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`2902-RGA (D. Del.) (consolidated). Ex. 2025 ¶ 10.
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`4. Mr. Zolan has also reviewed in detail relevant case law and legal authority related to the
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`allegations made in the Petition. Ex. 2025 ¶ 11.
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`5. Mr. Zolan is a member in good standing of the bars of New York and the District of
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`Columbia. Ex. 2025 ¶ 3.
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`6. Mr. Zolan has never been suspended or disbarred from practice before any court or
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`administrative body. Ex. 2025 ¶ 4.
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`7. No court or administrative body has ever denied Mr. Zolan’s application for admission to
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`practice before it. Ex. 2025 ¶ 5.
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`8. No court or administrative body has ever imposed sanctions or contempt citations on Mr.
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`Zolan. Ex. 2025 ¶ 6.
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`9. Mr. Zolan has read and will comply with the Office Patent Trial Practice Guide and the
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`Board’s Rules of Practice for Trials set forth in part 42 of 37 C.F.R. Ex. 2025 ¶ 7.
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`10. Mr. Zolan understands that he will be subject to the USPTO Rules of Professional
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`Conduct set forth in 37 C.F.R. §§ 11.101 et seq. Ex. 2025 ¶ 8.
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`11. Mr. Zolan is seeking pro hac vice admission to appear in the Petitioner’s inter partes
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`challenge to U.S. Patent No. 7,326,708. That proceeding has been designated Case No.
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`IPR2020-00040. Within the last three (3) years, Mr. Zolan has applied to appear pro hac vice in
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`one (1) other proceeding before the Office. See Argentum Pharms, LLC v. Alcon Research,
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`4
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`Case No. IPR2020-00040
`U.S. Patent No. 7,326,708
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`LTD., IPR2017-01053, Paper 11 (P.T.A.B. Oct. 16, 2017). Mr. Zolan’s application was granted.
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`Id. at Paper 15; Ex. 2025 ¶ 9.
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`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION OF MR.
`ZOLAN IN THIS PROCEEDING
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`
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`The Board may recognize counsel pro hac vice during a proceeding upon a showing of
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`good cause, subject to the condition that lead counsel be a registered practitioner and to any other
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`conditions as the Board may impose. 37 C.F.R. § 42.10(c). Patent Owner’s lead counsel,
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`Stanley E. Fisher, is a registered practitioner before the Board. Based on the facts contained
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`herein, as supported by Mr. Zolan’s declaration, good cause exists to admit Mr. Zolan pro hac
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`vice in this proceeding.
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`As set forth in his declaration, Mr. Zolan is a partner at Williams & Connolly LLP and an
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`experienced litigator with more than seven (7) years of litigation experience. Ex. 2025 ¶ 2.
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`Mr. Zolan has established familiarity with the subject matter at issue in the proceeding.
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`Ex. 2025 ¶ 10. Mr. Zolan has reviewed in detail the pleadings submitted by Petitioner in this
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`proceeding. Ex. 2025 ¶ 10. Mr. Zolan has reviewed in detail the challenged patent. Ex. 2025 ¶
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`10. Mr. Zolan has also reviewed in detail exhibits relied upon by Petitioner, such as Exhibit
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`1002 (Declaration of Dr. Mukund Chorghade, Ph.D.). Ex. 2025 ¶ 10.
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`Mr. Zolan has engaged in extensive strategic and substantive discussions regarding this
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`proceeding with Stanley E. Fisher, who is the lead counsel for the Patent Owner in this case. Ex.
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`2025 ¶ 10. Mr. Zolan has engaged in the representation of Patent Owner Merck Sharp & Dohme
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`Corp. in related matters in federal district court, including the assertion of U.S. Patent No.
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`7,326,708 in Merck Sharp & Dohme Corp. v. Mylan Pharmaceuticals Inc., C.A. No. 19-cv-101-
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`IMK (N.D.W.V.) and In Re: Sitagliptin Patent Litigation, MDL No. 19-2902-RGA (D. Del.)
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`5
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`Case No. IPR2020-00040
`U.S. Patent No. 7,326,708
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`(consolidated). Ex. 2025 ¶ 10. Mr. Zolan has reviewed in detail relevant case law and other
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`legal authority related to the allegations made in the Petition. Ex. 2025 ¶ 11.
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`In view of Mr. Zolan’s knowledge of the subject matter at issue in this proceeding, Patent
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`Owner Merck Sharp & Dohme Corp. has a substantial need for Mr. Zolan’s pro hac vice
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`admission and his involvement in the continued prosecution of this proceeding.
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`Petitioner does not oppose this motion.
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`CONCLUSION
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`V.
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`For the foregoing reasons, Patent Owner Merck Sharp & Dohme Corp. respectfully
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`requests that Mr. Zolan be admitted pro hac vice in this proceeding.
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`The Patent Trial and Appeal Board is hereby authorized to charge any fees associated
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`with this filing to Deposit Account No. 501290.
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`Date: May 18, 2020
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`Respectfully submitted,
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`/Stanley E. Fisher/
`Stanley E. Fisher (Reg. No. 55,820)
`Bruce R. Genderson (Pro Hac Vice)
`Jessamyn S. Berniker (Reg. No. 72,328)
`Elise M. Baumgarten
`(Pro Hac Vice Motion pending)
`Alexander S. Zolan
`(Pro Hac Vice Motion pending)
`Shaun P. Mahaffy (Reg. No. 75,534)
`Anthony H. Sheh (Reg. No. 70,576)
`WILLIAMS & CONNOLLY LLP
`725 Twelfth Street, N.W.
`Washington, DC 20005
`T: (202) 434-5000
`F: (202) 434-5029
`sfisher@wc.com
`bgenderson@wc.com
`jberniker@wc.com
`ebaumgarten@wc.com
`azolan@wc.com
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`6
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`Case No. IPR2020-00040
`U.S. Patent No. 7,326,708
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`smahaffy@wc.com
`asheh@wc.com
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`Counsel for Patent Owner
`Merck Sharp & Dohme Corp.
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`7
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`CERTIFICATE OF SERVICE
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`Case No. IPR2020-00040
`U.S. Patent No. 7,326,708
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies that a true and correct
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`copy of the foregoing was served on May 18, 2020, by delivering a copy via electronic mail on
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`the following attorneys of record:
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`Jitendra Malik
`Alissa M. Pacchioli
`Christopher W. West
`Heike S. Radeke
`KATTEN MUCHIN ROSEMAN LLP
`550 South Tryon, Street Suite 2900
`Charlotte, NC 28202-4213
`(704) 444-2000
`jitty.malik@kattenlaw.com
`alissa.pacchioli@kattenlaw.com
`christopher.west@katten.com
`heike.radeke@katten.com
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`/Anthony H. Sheh/
`Anthony H. Sheh
`Reg. No. 70,576
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