`571-272-7822
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` Paper 37
`Entered: April 28, 2014
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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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`APOTEX CORP.
`Petitioner,
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`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.
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`GREEN, Administrative Patent Judge.
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`
`DECISION
`Alcon Research, Ltd.’s Motion for Pro Hac Vice Admission of
`Christopher J. Mandernach
`37 C.F.R. § 42.10
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`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.
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`
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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)
`
`
`Patent Owner, Alcon Research, Ltd., (“Alcon”), filed Motions for Pro Hac
`Vice Admission of Christopher J. Mandernach under 37 C.F.R. § 42.10(c) (Papers
`34, 32, and 34),2 accompanied by Declarations of David M. Mandernach in support
`of the Motions (Exs. 2075, 2075, 2058). Alcon represents that Petitioner does not
`object to the Motions. Papers 34, 32, and 34, at 1. For the reasons provided
`below, Alcon’s Motions are granted.
`As set forth in Section 42.10(c), we may recognize counsel pro hac vice
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`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, we also
`require a statement of facts showing there is good cause for us 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,” in Motorola Mobility LLC v.
`Arnouse, Case IPR2013-00010 (PTAB October 15, 2012) (Paper 6 at 3-4)
`(expanded panel)).
`
`In its Motions, Alcon asserts that there is good cause for Mr. Mandernach’s
`pro hac vice admission because: (1) Mr. Mandernach is a litigation attorney, and
`(2) Mr. Mandernach has an established familiarity with the subject matter at issue
`
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`2 All references to the papers or exhibits refer to the three proceedings in numerical
`order; i.e., the first paper or exhibit number refers to the number in IPR2013-
`00428, the second paper or exhibit number refers to the number in IPR2013-00429,
`and the third paper or exhibit number refers to the number in IPR2013-00430.
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`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)
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`in the instant proceedings based on his representation of Alcon in three litigations
`in the U.S. District Court for the District of Delaware in which the ’299, ’630, and
`’941 patents are at issue, and also based on his work directly with Alcon’s fact and
`expert witnesses on the matters at issue in these proceedings. Papers 34, 32 and
`34, at 4, 6. In support of the Motions, Mr. Mandernach attests to these facts in his
`Declarations with sufficient explanations. Exs. 2075 ¶ 10, 2075 ¶ 10, 2058 ¶ 10.
`Additionally, as trial counsel for Alcon, Mr. Mandernach has experience litigating
`the precise subject matter raised in the Petitions; thus the admission of Mr.
`Mandernach will avoid unnecessary expense and duplication of work for Alcon.
`Papers 34, 32, and 34 at 4, 6-7. Moreover, Alcon’s lead counsel, Stanley E. Fisher,
`and back-up counsel, David M. Krinsky and Barry L. Copeland, are registered
`practitioners. Papers 34, 32, and 34, at 4-6.
`Based on the facts set forth above, we are persuaded that Mr. Mandernach
`has sufficient legal and technical qualifications to represent Alcon in these
`proceedings. We are persuaded also that there is a need for Alcon to have its
`litigation counsel, who possesses knowledge of the precise subject matter at issue
`in these proceedings stemming from his involvement in district court litigations
`involving the same patents as those at issue herein, involved in these proceedings.
`We conclude, therefore, that the criteria for pro hac vice admission are satisfied.
`See Unified Patents, Inc. v. Parallel Iron, LLC, Case IPR2013-00639 (PTAB Oct.
`15, 2013) (Paper 7) (expanded panel), (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, Alcon has established good cause for Mr.
`Mandernach’s pro hac vice admission. Mr. Mandernach will be permitted to
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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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`appear pro hac vice in the instant proceedings as back-up counsel only. See 37
`C.F.R. § 42.10(c).
`
`For the foregoing reasons, it is
`ORDERED that Alcon’s Motions for Pro Hac Vice Admission of
`
`Mr. Mandernach for the involved proceedings is granted; Mr. Mandernach is
`authorized to represent Alcon as back-up counsel in the proceedings;
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`FURTHER ORDERED that Alcon is to continue to have a registered
`practitioner as lead counsel in the instant proceedings;
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`FURTHER ORDRED that Mr. Mandernach is to comply with the Office
`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. Mandernach 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. §§ 11.101-11.901.
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`4
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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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`For PETITIONER:
`
`Eldora L. Ellison
`Ralph W. Powers, III
`David Holman
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`eellison-PTAB@skgf.com
`tpowers-PTAB@skgf.com
`dholman-PTAB@skgf.com
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`For PATENT OWNER:
`
`Stanley E. Fisher
`David Krinsky
`WILLIAMS & CONNOLLY LLP
`sfisher@wc.com
`dkrinsky@wc.com
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`Barry Copeland
`ALCON RESEARCH, LTD.
`barry.copeland@alcon.com
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`5
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