Trials@uspto.gov
`571-272-7822
`
`Paper 26
`Entered: January 26, 2024
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HOPEWELL PHARMA VENTURES, INC.,
`Petitioner,
`
`v.
`
`MERCK SERONO S.A.,
`Patent Owner.
`____________
`
`IPR2023-00480 (Patent 7,713,947 B2)
`IPR2023-00481 (Patent 8,377,903 B2)
`____________
`
`
`
`Before ZHENYU YANG, ROBERT A. POLLOCK, and TIMOTHY G.
`MAJORS, Administrative Patent Judges.
`
`MAJORS, Administrative Patent Judge.
`
`
`
`ORDER1
`Granting Petitioner’s Motions for Pro Hac Vice Admission of
`Christina E. Dashe and John Christopher Rozendaal
`37 C.F.R. § 42.10
`
`
`
`
`1 This Order addresses issues that are the same in all above-captioned
`proceedings. We exercise our discretion to issue one Order to be filed in
`each proceeding. The parties are not authorized to use this style heading in
`subsequent papers.
`
`

`

`IPR2023-00480 (Patent 7,713,947 B2)
`IPR2023-00481 (Patent 8,377,903 B2)
`
`
`On January 5, 2024, Hopewell Pharma Ventures, Inc. (“Petitioner”)
`filed motions requesting pro hac vice admission of Christina E. Dashe and
`John Christopher Rozendaal in each of the above-identified proceedings.
`Papers 24 and 25 (collectively “Motions”).2 Petitioner also submitted
`Declarations from Christina E. Dashe (Ex. 1053) and John Christopher
`Rozendaal (Ex. 1054) in support of the Motions (collectively
`“Declarations”).3 Petitioner attests that Merck Serono S.A. (“Patent
`Owner”) does not oppose the Motions. Paper 24, 1; Paper 25, 1. For the
`reasons provided below, Petitioner’s Motions are 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,4 we conclude that Ms. Dashe and Mr. Rozendaal each have
`
`
`2 For purposes of expediency, we cite to Papers filed in IPR2023-00480.
`Petitioner filed similar Motions in IPR2023-00481 (Papers 24 and 25).
`3 We cite to Exhibits filed in IPR2023-00480. Petitioner filed similar
`Declarations in IPR2023-00481 (Exs. 1053 and 1054).
`4 Unified Patents indicates that “A motion for pro hac vice admission must:
`. . . Be accompanied by an affidavit or declaration of the individual seeking
`to appear attesting to the following: . . . All other proceedings before the
`Office for which the individual has applied to appear pro hac vice in the last
`2
`
`
`
`

`

`IPR2023-00480 (Patent 7,713,947 B2)
`IPR2023-00481 (Patent 8,377,903 B2)
`
`sufficient legal and technical qualifications to represent Petitioner in these
`proceedings, have demonstrated sufficient litigation experience and
`familiarity with the subject matter of these proceedings, and meet all other
`requirements for admission pro hac vice. See Exs. 1053 and 1054.
`Accordingly, Petitioner has established good cause for pro hac vice
`admission of Ms. Dashe and Mr. Rozendaal. Ms. Dashe and Mr. Rozendaal
`will be permitted to serve as back-up counsel only. See 37 C.F.R.
`§ 42.10(c).
`We note that Petitioner has filed a Power of Attorney including Ms.
`Dashe and Mr. Rozendaal in accordance with 37 C.F.R. § 42.10(b).
`IPR2023-00480, Paper 22; and IPR2023-00481, Paper 22. Petitioner has
`also filed Mandatory Notices identifying Ms. Dashe and Mr. Rozendaal as
`back-up counsel in accordance with 37 C.F.R. § 42.8(b)(3). IPR2023-
`00480, Paper 23; and IPR2023-00481, Paper 23.
`In consideration of the foregoing, it is hereby
`ORDERED that Petitioner’s Motions for pro hac vice admission of
`Christina E. Dashe and John Christopher Rozendaal are granted;
`FURTHER ORDERED that Petitioner is to continue to have a
`registered practitioner represent it as lead counsel for the above-identified
`proceedings;
`
`
`three (3) years.” See Unified Patents, Paper 7 at 3. The Declaration of Ms.
`Dashe fails to identify any other proceedings before the Office for which
`Ms. Dashe has applied to appear pro hac vice. See Ex. 1053. For the
`purposes of this Order, we deem this harmless error, and treat the omission
`as a representation that Ms. Dashe has not applied to appear pro hac vice in
`any other proceedings before the Office (aside from IPR2023-00480 and
`IPR2023-00481) in the last three years.
`3
`
`
`
`

`

`IPR2023-00480 (Patent 7,713,947 B2)
`IPR2023-00481 (Patent 8,377,903 B2)
`
`
`FURTHER ORDERED that Ms. Dashe and Mr. Rozendaal are
`authorized to represent Petitioner as back-up counsel only in the above-
`identified proceedings;
`FURTHER ORDERED that Ms. Dashe and Mr. Rozendaal comply
`with the Patent Trial and Appeal Board Consolidated Trial Practice Guide5
`(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 Ms. Dashe and Mr. Rozendaal are 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.
`
`
`5 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`4
`
`
`
`

`

`IPR2023-00480 (Patent 7,713,947 B2)
`IPR2023-00481 (Patent 8,377,903 B2)
`
`PETITIONER:
`
`Eldora Ellison
`Eellison-ptab@sternekessler.com
`
`Olga Partington
`Opartington-ptab@sternekessler.com
`
`Chandrika Vira
`Cvira-ptab@sternekessler.com
`
`
`PATENT OWNER:
`
`Emily Whelan
`Emily.whelan@wilmerhale.com
`
`Deric Geng
`Deric.geng@wilmerhale.com
`
`Cindy Kan
`Cindy.kan@wilmerhale.com
`
`
`
`
`5
`
`