Trials@uspto.gov
`571-272-7822
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` Paper 38
`Entered: April 28, 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
`Alcon Research, Ltd.’s Motion for Pro Hac Vice Admission of
`David M. Horniak
`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.
`
`

`

`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 David M. Horniak under 37 C.F.R. § 42.10(c) (Papers 33, 31,
`and 33),2 accompanied by Declarations of David M. Horniak in support of the
`Motions (Exs. 2074, 2074, 2057). Alcon represents that Petitioner does not object
`to the Motions. Papers 33, 31, and 33, 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. Horniak’s pro
`
`hac vice admission because: (1) Mr. Horniak is a litigation attorney, and (2) Mr.
`Horniak has an established familiarity with the subject matter at issue in the instant
`
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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)
`
`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 33, 31 and
`33, at 4, 6. In support of the Motions, Mr. Horniak attests to these facts in his
`Declarations with sufficient explanations. Exs. 2074, ¶ 10; 2074, ¶ 10; 2057, ¶ 10.
`Additionally, according to the Motions, as trial counsel for Alcon, Mr. Horniak has
`experience litigating the precise subject matter raised in the Petitions; thus, the
`admission of Mr. Horniak will avoid unnecessary expense and duplication of work
`for Alcon. Papers 33, 31, and 33 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 33, 31, and 33, at 4-6.
`Based on the facts set forth above, we are persuaded that Mr. Horniak has
`sufficient legal and technical qualifications to represent Alcon in this proceeding.
`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. Horniak’s
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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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`pro hac vice admission. Mr. Horniak will be permitted to 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. Horniak for the involved proceedings is granted; Mr. Horniak 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;
`
`FURTHER ORDRED that Mr. Horniak 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. Horniak 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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`

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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:
`
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`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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