`571-272-7822
`
`
`
`
`Paper: 25
`Entered: February 20, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TWI PHARMACEUTICALS, INC.,
`Petitioner,
`
`v.
`
`MERCK SERONO SA,
`Patent Owner.
`____________
`
`IPR2023-00049 (Patent 7,713,947 B2)
` IPR2023-00050 (Patent 8,377,903 B2)1
`____________
`
`Before ULRIKE W. JENKS, ZHENYU YANG, and TINA E. HULSE,
`Administrative Patent Judges.
`
`JENKS, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Patent Owner’s Motion for Pro Hac Vice Admission
`of Mary Pheng
`37 C.F.R. § 42.10
`
`
`
`
`1 This Order addresses issues common to each captioned case. Thus, we
`enter the same Order in each case. The parties are not authorized to use this
`style caption unless directed otherwise.
`
`
`
`IPR2023-00049 (Patent 7,713,947 B2)
`IPR2023-00050 (Patent 8,377,903 B2)
`
`
`Patent Owner filed a Motion for Admission Pro Hac Vice of Mary
`Pheng (“Motion”) in each of the above-identified proceedings. Paper 22. 2
`The Motion is supported by Declaration of Ms. Pheng. Ex. 2003. Patent
`Owner represents that Petitioner does not oppose the Motion. Paper 22, 1.
`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 3, 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”)) (“Notice”).
`Based on the facts set forth in the Motion and the accompanying
`Declaration, we conclude that Ms. Pheng has sufficient legal and technical
`qualifications to represent Patent Owner in these proceedings, that Ms.
`Pheng has demonstrated sufficient litigation experience and familiarity with
`the subject matter of these proceedings, and that Ms. Pheng meets all other
`requirements for admission pro hac vice. See Ex. 2003 ¶¶ 1–12.
`Accordingly, Patent Owner has established good cause for pro hac vice
`admission of Ms. Pheng. Ms. Pheng will be permitted to serve as back-up
`counsel only. See 37 C.F.R. § 42.10(c).
`We note that Patent Owner has filed a Power of Attorney including
`Ms. Pheng in accordance with 37 C.F.R. § 42.10(b). See Paper 5, 1 (stating
`
`2 For expediency, we cite to papers and exhibits in IPR2023-00049. Similar
`papers and exhibits were filed in IPR2023-00050.
`
`2
`
`
`
`IPR2023-00049 (Patent 7,713,947 B2)
`IPR2023-00050 (Patent 8,377,903 B2)
`
`“Patent Owner Merck Serono SA here by appoints the following attorneys
`. . . All attorneys at Wilmer Cutler Pickering Hale and Dorr LLP for whom a
`motion to appear pro hac vice is filed”). We also note that Patent Owner has
`filed an updated Mandatory Notice identifying Ms. Pheng as back-up
`counsel in accordance with 37 C.F.R. § 42.8(b)(3). See Paper 23, 2.
`Accordingly, it is:
`ORDERED that the Motion is granted and Mary Pheng is authorized
`to represent Patent Owner as back-up counsel in the above-identified
`proceedings;
`FURTHER ORDERED that a registered practitioner will continue to
`represent Patent Owner as lead counsel in the above-identified proceedings;
`FURTHER ORDERED that Mary Pheng shall comply with the
`USPTO’s Consolidated Trial Practice Guide (84 Fed. Reg. 64,280 (Nov. 21,
`2019)),3 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 that Mary Pheng is subject to the
`USPTO’s Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et
`seq. and to the USPTO’s disciplinary jurisdiction under 37 C.F.R.
`§ 11.19(a).
`
`
`
`
`
`
`3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`3
`
`
`
`IPR2023-00049 (Patent 7,713,947 B2)
`IPR2023-00050 (Patent 8,377,903 B2)
`
`PETITIONER:
`
`Philip Segrest
`Nathan Sportel
`Stephen Howe
`HUSCH BLACKWELL, LLP
`philip.segrest@huschblackwell.com
`nathan.sportel@huschblackwell.com
`steve.howe@huschblackwell.com
`
`PATENT OWNER:
`
`Emily Whelan
`Deric Geng
`Cindy Kan
`WILMER CUTLER PICKERING HALE AND DORR LLP
`emily.whelan@wilmerhale.com
`deric.geng@wilmerhale.com
`cindy.kan@wilmerhale.com
`
`4
`
`
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