`571.272.7822
`
`
` Paper No. 25
` Entered: May 27, 2020
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`MERCK SHARP & DOHME CORP.,
`Patent Owner.
`____________
`
`IPR2020-00040
`Patent 7,326,708 B2
`____________
`
`
`
`Before SHERIDAN K. SNEDDEN, ROBERT A. POLLOCK, and
`TIMOTHY G. MAJORS, Administrative Patent Judges.
`
`MAJORS, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conditionally Granting Patent Owner’s Motions for Pro Hac Vice
`Admission of Alexander S. Zolan and Elise M. Baumgarten
`37 C.F.R. § 42.10(c)
`
`
`
`
`
`
`
`IPR2020-00040
`Patent 7,326,708 B2
`
`
`On May 18, 2020, Patent Owner filed Motions for pro hac vice
`admission of Alexander S. Zolan and Elise M. Baumgarten. Papers 22 and
`23 (“Motions”). The Motions are accompanied by the Declarations of
`Mr. Zolan and Ms. Baumgarten (“Declarations”). Exs. 2025 ad 2026.
`Patent Owner asserts that Petitioner does not oppose the Motions. Paper 22
`at 6; Paper 23 at 5.
`Upon review of the record before us, we note that Patent Owner’s
`Mandatory Notices (Paper 7) do not identify Mr. Zolan or Ms. Baumgarten
`as back-up counsel in accordance with 37 C.F.R. § 42.8(b)(3). We also note
`that Patent Owner’s Power of Attorney (Paper 6) does not identify Mr. Zolan
`or Ms. Baumgarten as back-up counsel in accordance with 37 C.F.R.
`§ 42.10(b).
`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 this proceeding. See Paper 3, 2 (citing
`Unified Patents, Inc. v. Parallel Iron, LLC, IPR2013-00639, Paper 7 (PTAB
`Oct. 15, 2013) (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 Mr. Zolan and Ms. Baumgarten have
`sufficient legal and technical qualifications to represent Patent Owner in this
`proceeding, that Mr. Zolan and Ms. Baumgarten have demonstrated
`sufficient familiarity with the subject matter of this proceeding, and that
`Patent Owner’s desire to include counsel from the corresponding district
`
`2
`
`
`
`IPR2020-00040
`Patent 7,326,708 B2
`
`
`court proceeding is warranted. See Motions 5; Declarations ¶¶ 2, 10.
`Accordingly, Patent Owner has established good cause for pro hac vice
`admission of Mr. Zolan and Ms. Baumgarten.
`Accordingly, it is:
`ORDERED that Patent Owner’s Motions for pro hac vice admission
`of Mr. Alexander S. Zolan and Ms. Elise M. Baumgarten are conditionally
`granted, provided that within ten (10) days of the date of this order, Patent
`Owner must submit a Power of Attorney for Mr. Zolan and Ms. Baumgarten
`in accordance with 37 C.F.R. § 42.10(b); Mr. Zolan and Ms. Baumgarten are
`authorized to represent Patent Owner as back-up counsel only in the above-
`identified proceeding;
`FURTHER ORDERED that Patent Owner must file an updated
`mandatory notice identifying Mr. Zolan and Ms. Baumgarten as back-up
`counsel in accordance with 37 C.F.R. § 42.8(b)(3);
`FURTHER ORDERED that Patent Owner shall continue to have a
`registered practitioner represent it as lead counsel for the above-identified
`proceeding;
`FURTHER ORDERED that Mr. Zolan and Ms. Baumgarten are to
`comply with the Office Patent Trial Practice Guide1 (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 Mr. Zolan and Ms. Baumgarten are
`subject to the Office’s disciplinary jurisdiction under 37 C.F.R. § 11.19(a),
`
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`3
`
`
`
`IPR2020-00040
`Patent 7,326,708 B2
`
`
`and the USPTO Rules of Professional Conduct set forth in 37 C.F.R.
`§§ 11.101 et seq.2
`
`
`2 The Declarations state that “I understand that I will be subject to the
`USPTO Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et
`seq.” Declarations ¶ 8. We assume Mr. Zolan and Ms. Baumgarten also
`intended to be subject to the Office’s disciplinary jurisdiction under 37
`C.F.R. § 11.19(a). We deem this harmless error.
`
`4
`
`
`
`IPR2020-00040
`Patent 7,326,708 B2
`
`
`
`PETITIONER:
`Jitendra Malik
`Alissa Pacchioli
`Christopher West
`Heike Radeke
`KATTEN MUCHIN ROSEMAN LLP
`jitty.malik@kattenlaw.com
`alissa.pacchioli@kattenlaw.com
`christopher.west@katten.com
`heike.radeke@katten.com
`
`
`PATENT OWNER:
`Stanley Fisher
`Jessamyn Berniker
`Shaun Mahaffy
`Anthony Sheh
`WILLIAMS & CONNOLLY LLP
`sfisher@wc.com
`jberniker@wc.com
`smahaffy@wc.com
`asheh@wc.com
`
`5
`
`
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