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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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`FRESENIUS KABI USA, LLC,
`Petitioner,
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`v.
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`NOVO NORDISK A/S,
`Patent Owner.
`______________
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`Case IPR2022-00657
`Patent 8,114,833
`______________
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`PATENT OWNER’S UNOPPOSED MOTION FOR ADMISSION PRO HAC
`VICE OF RYAN P. JOHNSON UNDER 37 C.F.R. § 42.10(c)
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`IPR2022-00657
`Patent 8,114,833
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`I.
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`STATEMENT OF PRECISE RELIEF REQUESTED
`Pursuant to 37 C.F.R. § 42.10(c), as authorized by the Board’s Notice of
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`Filing Date Accorded mailed March 15, 2022 (Paper 3), and in accordance with
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`the Board’s Order, Paper 7 in Case IPR2013-00639, Patent Owner Novo Nordisk
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`A/S (“Patent Owner”) requests that the Board admit Ryan P. Johnson pro hac vice
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`in this proceeding. Counsel for Petitioner Fresenius Kabi USA, LLC (“Petitioner”)
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`has informed counsel for Patent Owner that Petitioner does not oppose this Motion.
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`II.
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`STATEMENT OF FACTS SHOWING GOOD CAUSE FOR THE
`BOARD TO RECOGNIZE COUNSEL PRO HAC VICE IN THE
`PROCEEDING
`Under 37 C.F.R. § 42.10(c), the Board “may recognize counsel pro hac vice
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`during a proceeding upon a showing of good cause, subject to the condition that
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`lead counsel be a registered practitioner and to any other conditions as the Board
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`may impose. For example, where the lead counsel is a registered practitioner, a
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`motion 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 and has
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`an established familiarity with the subject matter at issue in the proceeding.”
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`The facts, supported by the attached Declaration of Ryan P. Johnson in
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`Support of Patent Owner’s Motion for Admission Pro Hac Vice (EX2001)
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`establish good cause to admit Mr. Johnson pro hac vice in this proceeding.
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`1
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`
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`IPR2022-00657
`Patent 8,114,833
`1. Lead counsel, Jeffrey Oelke, is a registered practitioner (Reg. No.
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`37,409).
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`2. Counsel for Patent Owner contacted counsel for Petitioner, who
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`indicated that Petitioner did not plan to oppose Mr. Johnson’s admission pro hac
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`vice.
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`3. Counsel, Ryan P. Johnson, is an experienced litigating attorney with
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`over fourteen years in private practice and substantial experience with patent
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`litigation. EX2001 at ¶ 9. Mr. Johnson has been counsel in patent infringement
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`matters in multiple U.S. District Courts, the U.S. Court of Appeals for the Federal
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`Circuit, and the U.S. Court of Appeals for the Fourth Circuit. Id. Mr. Johnson is a
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`member in good standing of the State Bars of New York and Connecticut. Id. at ¶
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`1. He is also admitted to practice in the United States District Court for the Southern
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`District of New York, the United States District Court for the Eastern District of
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`New York, the United States Court of Appeals for the Federal Circuit, and the United
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`States District Court for the Fourth Circuit. Id. He has had no suspensions or
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`disbarments from practice, no application for admission to practice denied, nor any
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`sanctions or contempt citations. Id. at ¶¶ 2-4.
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`4. Within the past three years, Mr. Johnson has applied for and been
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`granted permission to practice before this Board pro hac vice in the following
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`matters: Pharmacosmos A/S v. American Regent, Inc., PGR2020-00009 (Paper No.
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`2
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`IPR2022-00657
`Patent 8,114,833
`11); Mylan Institutional LLC v. Novo Nordisk A/S, IPR2020-00324 (Paper No. 12).
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`Id. at ¶ 7. Mr. Johnson also has a Motion for Pro Hac Vice pending before the Board
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`in the following proceeding: Pharmacosmos A/S v. Luitpold Pharmaceuticals, Inc.,
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`IPR2015-01493 (Paper No. 67). Id.
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`5. Mr. Johnson has familiarity with the subject matter and patent-at-issue
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`in this proceeding, U.S. Patent No. 8,114,833 (the “’833 patent”), including its
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`prosecution history and the scientific field to which the ’833 patent is addressed. Id.
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`at ¶ 8. Mr. Johnson has served and is presently serving as counsel for Patent Owner
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`in district court litigation involving the ’833 patent and served as counsel in Mylan
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`Institutional LLC v. Novo Nordisk A/S, IPR2020-00324, which also concerned the
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`’833 patent. Id.
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`6. Mr. Johnson has read and will comply with the Office Patent Trial
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`Practice Guide and updates thereto and the Board’s Rules for Practices for Trials set
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`forth in part 42 of title 37 of the Code of Federal Regulations, and he agrees to be
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`subject to the USPTO Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101
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`et seq. and to disciplinary jurisdiction under 37 C.F.R. § 11.19(a). EX2001 at ¶¶ 5-
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`6.
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`III. STATEMENT OF REASONS FOR THE RELIEF REQUESTED
`The facts stated above, as supported by the Declaration of Ryan P. Johnson
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`(EX2001), establish that there is good cause to admit Mr. Johnson pro hac vice in
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`3
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`IPR2022-00657
`Patent 8,114,833
`this proceeding under 37 C.F.R. § 42.10(c). Patent Owner’s Lead Counsel, Jeffrey
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`Oelke, is a registered practitioner. Mr. Johnson is an experienced litigating
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`attorney who has familiarity with the subject matter at issue in the proceeding.
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`IV. CONCLUSION
`For all of the reasons set forth above, Patent Owner respectfully requests
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`that the Board admit Ryan P. Johnson pro hac vice in this proceeding.
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`Dated: June 13, 2022
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`Respectfully submitted,
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`/Jeffrey J. Oelke/
`Jeffrey J. Oelke (Reg. No. 37,409)
`FENWICK & WEST LLP
`902 Broadway, Suite 14
`New York, NY 10010
`(212) 430-2600 (tel)
`joelke@fenwick.com
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`Counsel for Patent Owner Novo Nordisk A/S
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`4
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`
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`CERTIFICATE OF SERVICE
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`IPR2022-00657
`Patent 8,114,833
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`Pursuant to 37 C.F.R. §§ 42.6 and 42.105, I hereby certify that the foregoing
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`document was served on June 13, 2022, by filing this document through the Patent
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`Trial and Appeal Board End to End System, as well as delivering a copy via
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`electronic mail upon the following attorneys of record for the Petitioner:
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`Linnea Cipriano (Reg. No. 67,729)
`GOODWIN PROCTER LLP
`620 Eighth Avenue
`New York, NY 10018
`Tel: (212) 813 8800
`Fax: (212) 355 3333
`lcipriano@goodwinlaw.com
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`Daryl Wiesen (pro hac vice
`application to be filed)
`GOODWIN PROCTER LLP
`100 Northern Ave.
`Boston, MA 02210
`Tel: (617) 570 1000
`Fax: (617) 523 1231
`dwiesen@goodwinlaw.com
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`Date: June 13, 2022
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`Respectfully submitted,
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`/Jeffrey J. Oelke/
`Jeffrey J. Oelke (Reg. No. 37,409)
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`Counsel for Patent Owner Novo Nordisk A/S
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`5
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