UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TEVA PHARMACEUTICALS USA, INC. AND WATSON
`LABORATORIES, INC.
`Petitioners,
`
`v.
`MERCK SHARP & DOHME CORP.
`Patent Owner.
`
`
`Case IPR2020-01045
`Patent 7,326,708
`
`PETITIONERS’ MOTION FOR PRO HAC VICE ADMISSION OF EMILY L.
`RAPALINO UNDER 37 C.F.R. § 42.10(c)
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TEVA PHARMACEUTICALS USA, INC. AND WATSON
`LABORATORIES, INC.
`Petitioners,
`
`v.
`MERCK SHARP & DOHME CORP.
`Patent Owner.
`
`
`Case IPR2020-01045
`Patent 7,326,708
`
`PETITIONERS’ MOTION FOR PRO HAC VICE ADMISSION OF EMILY L.
`RAPALINO UNDER 37 C.F.R. § 42.10(c)
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.10(c), Petitioners Teva Pharmaceuticals USA,
`
`Inc. and Watson Laboratories, Inc. (“Petitioners”) respectfully request pro hac vice
`
`admission of Emily L. Rapalino in this proceeding, IPR2020-01045, regarding
`
`U.S. Patent No. 7,326,708 (“the ’708 patent”).
`
`I.
`
`THE REQUEST IS TIMELY
`Pursuant to the Board’s “Notice of Filing Date Accorded to Petition and
`
`Time for Filing Patent Owner Preliminary Response,” dated June 22,2020 (Paper
`
`No. 6), authorizing the parties to file motions for pro hac vice admission under 37
`
`C.F.R. § 42.10(c), Petitioners Teva Pharmaceuticals USA, Inc. and Watson
`
`Laboratories, Inc. respectfully request that the Board allow Emily L. Rapalino to
`
`appear pro hac vice on their behalf in this proceeding. Patent Owner consents to
`
`this motion.
`
`II. REASONS THE REQUESTED RELIEF SHOULD BE GRANTED
`As set forth in the Statement of Material Facts below, and as required by 37
`
`C.F.R. § 42.10(c), Petitioners have demonstrated good cause to admit Ms.
`
`Rapalino pro hac vice in this proceeding. In particular, Petitioners’ lead counsel is
`
`a registered practitioner, and Ms. Rapalino is an experienced litigating attorney
`
`having an established familiarity with the subject matter at issue in this proceeding.
`
`Furthermore, this motion is being filed more than twenty one days after
`
`service of the petition; includes a statement of facts showing good cause for the
`
`
`
`1
`
`
`
`
`
`Board to recognize Ms. Rapalino pro hac vice; and is being filed concurrently with
`
`Exhibit 1018, the Declaration of Emily L. Rapalino in Support of Petitioners’
`
`Motion for Pro Hac Vice Admission of Emily L. Rapalino (“Rapalino Decl.”), all
`
`in accordance with the “Order Authorizing Motion for Pro Hac Vice Admission”
`
`in Unified Patents, Inc. v. Parallel Iron, LLC, IPR2013-00639, Paper 7 at 3
`
`(P.T.A.B. Oct. 15, 2013).
`
`III. STATEMENT OF MATERIAL FACTS
`1.
`37 C.F.R. § 42.10(c) provides that “[t]he 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 and to any other
`
`conditions as the Board may impose. For example, where the lead counsel is a
`
`registered practitioner, a motion to appear pro hac vice by counsel who is not a
`
`registered practitioner may be granted upon showing that counsel is an experienced
`
`litigating attorney and has an established familiarity with the subject matter at issue
`
`in the proceeding.”
`
`2.
`
`Keith A. Zullow, lead counsel for Petitioners Teva Pharmaceuticals
`
`USA, Inc. and Watson Laboratories, Inc. in this proceeding, is a registered
`
`practitioner holding Registration No. 37,975.
`
`3.
`
`As set forth in the Rapalino Decl., Ms. Rapalino is an experienced
`
`litigating attorney. Specifically, Ms. Rapalino has 18 years of experience
`
`
`
`2
`
`
`
`
`
`representing clients in patent litigations, primarily in the chemical arts, in United
`
`States district courts and the Court of Appeals for the Federal Circuit. (Rapalino
`
`Decl., ¶¶ 2-4).
`
`4. Ms. Rapalino also has an established familiarity with the precise
`
`subject matter at issue in this proceeding. In the course of this representation, she
`
`has developed a strong familiarity with the ’708 patent, its prosecution history, the
`
`general subject matter to which the ’708 patent is directed, and the prior art
`
`references relied upon by Petitioner and Patent Owner in support of their
`
`respective pleadings. (Rapalino Decl., ¶ 5). Additionally, Ms. Rapalino has
`
`thoroughly reviewed the Petition, the Patent Owner’s Response, and accompanying
`
`Exhibits submitted in this proceeding. (Id.).
`
`5. Ms. Rapalino has attested to the each of the requirements set forth in
`
`paragraph 2(b)(i)-(viii) of the “Order Authorizing Motion for Pro Hac Vice
`
`Admission” in Case IPR2013-00639, Paper 7 at 3. (Rapalino Decl., ¶¶ 6-10).
`
`IV. CONCLUSION
`In view of the foregoing, Petitioners respectfully submit that the
`
`requirements of 37 C.F.R. § 42.10(c) have been satisfied, and request an Order
`
`permitting Emily L. Rapalino to appear pro hac vice on their behalf in this
`
`proceeding.
`
`
`
`
`
`3
`
`
`
`
`
`Dated: July 27, 2020
`
`Respectfully submitted,
`
`/ Keith A. Zullow /
`Keith A. Zullow
`(Reg. No. 37,975)
`Goodwin Procter LLP
`The New York Times Building
`620 Eighth Avenue
`New York, NY 10018-1405
`Tel: 212-813--8800
`Fax: 212-355-3333
`kzullow@goodwinlaw.com
`
`Counsel for Petitioners Teva
`Pharmaceuticals USA, Inc. and Watson
`Laboratories, Inc.
`
`
`
`4
`
`
`
`
`
`
`
`
`
`CERTIFICATION OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies that
`
`“PETITIONERS’ MOTION FOR PRO HAC VICE ADMISSION OF EMILY L.
`
`RAPALINO UNDER 37 C.F.R. § 42.10(c),” and “EXHIBIT 1018 -
`
`DECLARATION OF EMILY L. RAPALINO IN SUPPORT OF PETITIONERS’
`
`MOTION FOR PRO HAC VICE ADMISSION OF EMILY L. RAPALINO
`
`UNDER 37 C.F.R. § 42.10(c)” were served electronically via e-mail on July 27,
`
`2020 on the following counsel of record:
`
`Stanley E. Fisher
`Bruce R. Genderson
`Jessamyn S. Berniker
`Alexander S. Zolan
`Elise M. Baumgarten
`Shaun P. Mahaffy
`Anthony H. Sheh
`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
`azolan@wc.com
`ebaumgarten@wc.com
`smahaffy@wc.com
`asheh@wc.com
`MerckSitagliptin@wc.com
`
`
`Dated: July 27, 2020
`
`
`/Keith A. Zullow/
`Keith A. Zullow
`
`
`
`5
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
