Trials@uspto.gov
`571-272-7822
`
`Paper 31
`Entered: April 11, 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)
`____________
`
`Before ULRIKE W. JENKS, ZHENYU YANG, and TINA E. HULSE,
`Administrative Patent Judges.
`
`JENKS, Administrative Patent Judge.
`
`
`ORDER1
`Conditionally Granting Petitioner’s Motions for
`Pro Hac Vice Admission of Don J. Mizerk
`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.
`
`
`571-272-7822
`
`Paper 31
`Entered: April 11, 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)
`____________
`
`Before ULRIKE W. JENKS, ZHENYU YANG, and TINA E. HULSE,
`Administrative Patent Judges.
`
`JENKS, Administrative Patent Judge.
`
`
`ORDER1
`Conditionally Granting Petitioner’s Motions for
`Pro Hac Vice Admission of Don J. Mizerk
`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)
`
`
`On February 28, 2024, Petitioner filed motions requesting pro hac
`vice admission of Don J. Mizerk in each of the above-identified proceedings
`(collectively “Motions”). Paper 26.2 Petitioner also submitted Declarations
`from Don J. Mizerk in support of the Motions (collectively “Declarations”).
`Ex. 1036.3 Petitioner attests that Patent Owner does not oppose the Motions.
`Paper 26, 1.
`For the reasons provided below, Petitioner’s Motions are
`conditionally granted.
`In accordance with 37 C.F.R. § 42.10(c), the 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. 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 Unified Patents,
`Inc. v. Parallel Iron, LLC, IPR2013-00639 (PTAB Oct. 15, 2013) (Paper 7)
`(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. Mizerk has sufficient legal and technical
`qualifications to represent Petitioner in these proceedings, has demonstrated
`sufficient litigation experience and familiarity with the subject matter of
`these proceedings, and meets all other requirements for admission pro hac
`vice. See Ex. 1036. Accordingly, Petitioner has established good cause for
`
`2 For purposes of expediency, we cite to Papers filed in IPR2023-00049.
`Petitioner filed a similar Motion in IPR2023-00050 (Paper 25).
`3 We cite to Exhibits filed in IPR2023-00049. Petitioner filed a similar
`Declaration in IPR2023-00050 (Ex. 1036).
`2
`
`
`
`
`
`IPR2023-00049 (Patent 7,713,947 B2)
`IPR2023-00050 (Patent 8,377,903 B2)
`
`pro hac vice admission of Mr. Mizerk. Mr. Mizerk will be permitted to
`serve as back-up counsel only. See 37 C.F.R. § 42.10(c).
`Upon review of the record before us, we note that a Power of Attorney
`in accordance with 37 C.F.R. § 42.10(b) has not been submitted for Mr.
`Mizerk. In view thereof, and for the reasons set forth below, Petitioner’s
`Motions are conditionally granted, and are to be effective after Petitioner
`files the aforementioned Power of Attorney.
`Petitioner has not filed updated mandatory notices identifying Mr.
`Mizerk as back-up counsel. Therefore, Petitioner must update its mandatory
`notices as required by 37 C.F.R. § 42.8(b)(3), to identify Mr. Mizerk as
`back-up counsel.
`In consideration of the foregoing, it is hereby
`ORDERED that Petitioner’s Motions for pro hac vice admission of
`Don J. Mizerk are conditionally granted, provided that within ten (10)
`business days of the date of this order, Petitioner submits a Power of
`Attorney for Mr. Mizerk in accordance with 37 C.F.R. § 42.10(b) in the
`above-identified proceedings;
`FURTHER ORDERED that Petitioner must file updated mandatory
`notices identifying Mr. Mizerk as back-up counsel in accordance with
`37 C.F.R. § 42.8(b)(3);
`FURTHER ORDERED that Petitioner is to continue to have a
`registered practitioner represent it as lead counsel for the above-identified
`proceedings;
`FURTHER ORDERED that Mr. Mizerk is authorized to represent
`Petitioner as back-up counsel only in the above-identified proceedings;
`
`
`
`3
`
`
`
`IPR2023-00049 (Patent 7,713,947 B2)
`IPR2023-00050 (Patent 8,377,903 B2)
`
`
`FURTHER ORDERED that Mr. Mizerk comply with the Patent Trial
`and Appeal Board Consolidated Trial Practice Guide4 (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. Mizerk is subject to the Office’s
`disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and the USPTO Rules
`of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et. seq.
`
`
`
`
`4 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`4
`
`
`
`
`
`IPR2023-00049 (Patent 7,713,947 B2)
`IPR2023-00050 (Patent 8,377,903 B2)
`
`FOR PETITIONER:
`
`Philip Segrest
`Nathan Sportel
`Stephen Howe
`HUSCH BLACKWELL, LLP
`philip.segrest@huschblackwell.com
`nathan.sportel@huschblackwell.com
`steve.howe@huschblackwell.com
`
`
`FOR PATENT OWNER:
`
`Emily Whelan
`Deric Geng
`Cindy Kan
`Asher McGuffin
`WILMER CUTLER PICKERING HALE AND DORR LLP
`emily.whelan@wilmerhale.com
`deric.geng@wilmerhale.com
`cindy.kan@wilmerhale.com
`asher.mcguffin@wilmerhale.com
`
`
`
`5
`
`
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