Trials@uspto.gov
`571-272-7822
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` Paper 23
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`Entered: February 7, 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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`
`
`DECISION
`Apotex Corp.’s Motion for Pro Hac Vice Admission of
`Paul A. Ainsworth
`37 C.F.R. § 42.10
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`
`
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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.
`
`

`

`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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`Petitioner, Apotex Corp., (“Apotex”), filed a Motion for Pro Hac Vice
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`Admission of Paul A. Ainsworth Under 37 C.F.R. § 42.10(c) (Papers 16, 14, and
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`15),2 accompanied by an Affidavit of Mr. Ainsworth in support of the Motion (Ex.
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`1017 in each proceeding). At the initial conference held on February 3, 2014,
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`Patent Owner indicated that it had no objection to the Motion. For the reasons
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`provided below, Apotex’s Motion is granted.
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`
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`As set forth in 37 C.F.R. § 42.10(c), the Board may recognize counsel pro
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`hac vice during a proceeding upon a showing of good cause, subject to the
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`condition that lead counsel be a registered practitioner. For example, where the
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`lead counsel is a registered practitioner, a non-registered practitioner may be
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`permitted to appear pro hac vice “upon showing that counsel is an experienced
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`litigating attorney and has an established familiarity with the subject matter at issue
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`in the proceeding.” 37 C.F.R. § 42.10(c). In authorizing motions for pro hac vice
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`admission, the Board also requires a statement of facts showing there is good cause
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`for the Board to recognize counsel pro hac vice and an affidavit or declaration of
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`the individual seeking to appear in this proceeding. See Paper 4 in each
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`proceeding (referencing the “Order – Authorizing Motion for Pro Hac Vice
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`Admission,” Paper 6 in IPR2013-00010).
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`
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`In its Motion, Apotex asserts that there is good cause for Mr. Ainsworth’s
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`pro hac vice admission because: (1) Mr. Ainsworth is an experienced patent
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`litigation attorney, and (2) Mr. Ainsworth has an established familiarity with the
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`subject matter at issue in the instant proceedings as he has engaged in hours of
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`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.
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`
`
`2
`
`

`

`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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`strategic and substantive discussions regarding the proceedings with lead counsel
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`for Petitioner in the proceedings, is familiar with ophthalmic compositions such as
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`those covered in the ’299, ’630 and ’941 patents through previous litigation
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`involving similar ophthalmic compositions, and has served as trial counsel for
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`Petitioner in district court litigation concerning patents directed to ophthalmic drug
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`formulations and methods of use. (Papers 16, 14, and 15 at 5-7). In support of the
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`Motion, Mr. Ainsworth attests to these facts in his Affidavit with sufficient
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`explanations. Ex. 1017. Moreover, Apotex’s lead counsel, Eldora L. Ellison, is a
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`registered practitioner. (Papers 16, 14, and 15 at 3).
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`Based on the facts set forth above, we conclude that Mr. Ainsworth has
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`sufficient legal and technical qualifications to represent Apotex in this proceeding
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`and that there is a need for Apotex to have its trial counsel involved in these
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`proceedings. See IPR2013-00639, Paper 7, dated October 15, 2013 (superseding
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`IPR2013-00010, Paper 6, dated October 15, 2012, and setting forth the
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`requirements for pro hac vice admission) (copy available on the Board Web site
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`under “Representative Orders, Decisions, and Notices”). Accordingly, Apotex has
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`established good cause for Mr. Ainsworth’s pro hac vice admission. Mr.
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`Ainsworth will be permitted to appear pro hac vice in the instant proceeding as
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`back-up counsel only. See 37 C.F.R. § 42.10(c).
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`
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`For the foregoing reasons, it is
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`ORDERED that Apotex’s Motion for Pro Hac Vice Admission of
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`Mr. Ainsworth for the instant proceeding is granted; Mr. Ainsworth is authorized
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`to represent Apotex as back-up counsel in the instant proceedings;
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`FURTHER ORDERED that Apotex is to continue to have a registered
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`practitioner as lead counsel in the instant proceedings;
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`
`
`3
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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)
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`
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`FURTHER ORDRED that Mr. Ainsworth 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
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`in Title 37, Part 42 of the Code of Federal Regulations; and
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`
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`FURTHER ORDERED that Mr. Ainsworth is to be subject to the Office’s
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`disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and the USPTO Rules of
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`Professional Conduct set forth in 37 C.F.R. §§ 11.101 et. seq.
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`
`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
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`For PATENT OWNER:
`Stanley E. Fisher
`WILLIAMS & CONNOLLY LLP
`(202) 434-5289
`sfisher@wc.com
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`
`4
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