`571-272-7822
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` Paper 23
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`Entered: February 21, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APOTEX CORP.
`Petitioner
`
`
`
`v.
`
`ALCON RESEARCH, LTD
`Patent Owner.
`____________
`
`Cases IPR2013-00428 (Patent 8,268,299 B2)
`IPR2013-00429 (Patent 8,323,630 B2)
`IPR2013-00430 (Patent 8,388,941 B2) 1
`
`____________
`
`Before LORA M. GREEN, FRANCISCO C. PRATS, and RAMA G. ELLURU,
`Administrative Patent Judges.
`
`GREEN, Administrative Patent Judge.
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`
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`
`
`
`DECISION
`Apotex Corp.’s Motion for Pro Hac Vice Admission of
`H. Keeto Sabharwal
`37 C.F.R. § 42.10
`
`
`1 This order addresses issues that are the same in all three cases. We exercise our
`discretion to issue one order to be filed in each case. The parties, however, are not
`authorized to use this style heading in subsequent papers.
`
`
`
`Cases IPR2013-00428 (Patent 8,268,299 B2)
`IPR2013-00429 (Patent 8,323,630 B2)
`IPR2013-00430 (Patent 8,388,941 B2)
`
`
`Petitioner, Apotex Corp., (“Apotex”), filed a Motion for Pro Hac Vice
`Admission of H. Keeto Sabharwal under 37 C.F.R. § 42.10(c) (Papers 20, 18, and
`19),2 accompanied by an Affidavit of Mr. Sabharwal in support of the Motion (Ex.
`1018 in each proceeding). Apotex represents that Patent Owner has agreed not to
`oppose this Motion. Paper 20, 18, and 19 at 1. For the reasons provided below,
`Apotex’s Motion is granted.
`As set forth in Section 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. For example, where the lead counsel
`is a registered practitioner, a non-registered practitioner may be permitted to
`appear pro hac vice “upon showing that counsel is an experienced litigating
`attorney and has an established familiarity with the subject matter at issue in the
`proceeding.” 37 C.F.R. § 42.10(c). In authorizing motions for pro hac vice
`admission, the Board also requires 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 this proceeding. See Paper 4 in each
`proceeding (referencing the “Order – Authorizing Motion for Pro Hac Vice
`Admission,” Paper 6 in IPR2013-00010).
`
`In its Motion, Apotex asserts that there is good cause for Mr. Sabharwal’s
`pro hac vice admission because: (1) Mr. Sabharwal is an experienced patent
`litigation attorney, and (2) Mr. Sabharwal has an established familiarity with the
`subject matter at issue in the instant proceedings as he has engaged in hours of
`
`
`2 All references to the papers refer to the three proceedings in numerical order; i.e.,
`the first paper number refers to the paper number in IPR2013-00428, the second
`paper number refers to the paper number in IPR2013-00429, and the third paper
`number refers to the paper number in IPR2013-00430.
`
`
`
`2
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`
`
`Cases IPR2013-00428 (Patent 8,268,299 B2)
`IPR2013-00429 (Patent 8,323,630 B2)
`IPR2013-00430 (Patent 8,388,941 B2)
`
`strategic and substantive discussions regarding these proceedings with lead counsel
`for Petitioner, is familiar with ophthalmic compositions such as those covered in
`the ’299, ’630, and ’941 patents through previous litigation involving similar
`ophthalmic compositions, and has served as trial counsel for Petitioner in district
`court litigation concerning patents directed to ophthalmic drug formulations and
`methods of use. Papers 20, 18, and 19 at 6-8. In support of the Motion, Mr.
`Sabharwal attests to these facts in his Affidavit with sufficient explanations. Ex.
`1018. Moreover, Apotex’s lead counsel, Eldora L. Ellison, is a registered
`practitioner. (Papers 20, 18, and 19 at 3).
`Based on the facts set forth above, we conclude that Mr. Sabharwal has
`sufficient legal and technical qualifications to represent Apotex in this proceeding
`and that there is a need for Apotex to have its trial counsel involved in these
`proceedings. See IPR2013-00639, Paper 7, dated October 15, 2013 (superseding
`IPR2013-00010, Paper 6, dated October 15, 2012, and setting forth the
`requirements for pro hac vice admission) (copy available on the Board Web site
`under “Representative Orders, Decisions, and Notices”). Accordingly, Apotex has
`established good cause for Mr. Sabharwal’s pro hac vice admission. Mr.
`Sabharwal will be permitted to appear pro hac vice in the instant proceeding as
`back-up counsel only. See 37 C.F.R. § 42.10(c).
`
`For the foregoing reasons, it is
`ORDERED that Apotex’s Motion for Pro Hac Vice Admission of
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`Mr. Sabharwal for the instant proceeding is granted; Mr. Sabharwal is authorized
`to represent Apotex as back-up counsel in the instant proceedings;
`
`FURTHER ORDERED that Apotex is to continue to have a registered
`practitioner as lead counsel in the instant proceedings;
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`
`
`3
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`
`
`Cases IPR2013-00428 (Patent 8,268,299 B2)
`IPR2013-00429 (Patent 8,323,630 B2)
`IPR2013-00430 (Patent 8,388,941 B2)
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`FURTHER ORDRED that Mr. Sabharwal is to comply with the Office
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`Patent Trial Practice Guide and the Board’s Rules of Practice for Trials, as set forth
`in Title 37, Part 42 of the Code of Federal Regulations; and
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`FURTHER ORDERED that Mr. Sabharwal is to be 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.
`
`For PETITIONER:
`Eldora L. Ellison
`Ralph W. Powers, III
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`(202) 371-2600
`eellison-PTAB@skgf.com
`tpowers-PTAB@skgf.com
`
`For PATENT OWNER:
`Stanley E. Fisher
`WILLIAMS & CONNOLLY LLP
`(202) 434-5289
`sfisher@wc.com
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`
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`
`4
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`