Paper No. ____
`Date Filed: November 17, 2014
`
`Filed On Behalf Of:
`
`Novartis AG and LTS Lohmann Therapie-Systeme AG
`
`By:
`
`Raymond R. Mandra
`ExelonPatchIPR@fchs.com
`(212) 218-2100
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NOVEN PHARMACEUTICALS INC.,
`Petitioner
`
`v.
`
`NOVARTIS AG AND LTS LOHMANN THERAPIE-SYSTEME AG,
`Patent Owners
`
`Inter Partes Review No. 2014-00550
`
`U.S. Patent 6,335,031
`
`PATENT OWNERS’ MOTION FOR PRO HAC VICE ADMISSION OF
`CHARLOTTE C. JACOBSEN UNDER 37 C.F.R. § 42.10
`
`
`Date Filed: November 17, 2014
`
`Filed On Behalf Of:
`
`Novartis AG and LTS Lohmann Therapie-Systeme AG
`
`By:
`
`Raymond R. Mandra
`ExelonPatchIPR@fchs.com
`(212) 218-2100
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NOVEN PHARMACEUTICALS INC.,
`Petitioner
`
`v.
`
`NOVARTIS AG AND LTS LOHMANN THERAPIE-SYSTEME AG,
`Patent Owners
`
`Inter Partes Review No. 2014-00550
`
`U.S. Patent 6,335,031
`
`PATENT OWNERS’ MOTION FOR PRO HAC VICE ADMISSION OF
`CHARLOTTE C. JACOBSEN UNDER 37 C.F.R. § 42.10
`
`
`
`I.
`
`RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. § 42.10(c), Patent Owners Novartis AG and LTS
`
`Lohmann Therapie-Systeme AG (collectively, “Novartis”) respectfully request the
`
`pro hac vice admission of Charlotte C. Jacobsen in this proceeding.
`
`This motion is being filed more than twenty one (21) days after service of
`
`the Petition. Petitioner does not oppose the motion.
`
`II.
`
`THE GOVERNING LAW, RULES, AND PRECEDENT
`
`37 C.F.R. § 42.10(c) concerns motions for pro hac vice admission and states
`
`as follows:
`
`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
`
`and to any other conditions as the Board may impose. For
`
`example, where the lead counsel is a registered
`
`practitioner, a motion to appear pro hac vice by counsel
`
`who is not a registered practitioner may be granted upon
`
`showing that counsel is an experienced litigating attorney
`
`and has an established familiarity with the subject matter
`
`at issue in the proceeding.
`
`1
`
`
`
`The Board has stated that motions for pro hac vice admission under 37
`
`C.F.R. § 42.10(c) must be filed in accordance with the “Order – Authorizing
`
`Motion for Pro Hac Vice Admission” entered in Case IPR2013-00010 (Paper 6)
`
`(Informative Opinion).
`
`In that Order, the Board stated that motions for pro hac vice admission must
`
`“[c]ontain a statement of facts showing there is good cause for the Board to
`
`recognize counsel pro hac vice during the proceeding,” and must “[b]e
`
`accompanied by an affidavit or declaration of the individual seeking to appear
`
`attesting to the following:”
`
`i.
`
`Membership in good standing of the Bar of at least one
`
`State or the District of Columbia;
`
`ii.
`
`No suspensions or disbarments from practice before any
`
`court or administrative body;
`
`iii.
`
`No application for admission to practice before any court
`
`or administrative body ever denied;
`
`iv.
`
`No sanctions or contempt citations imposed by any court
`
`or administrative body;
`
`v.
`
`The individual seeking to appear has read and will
`
`comply with the Office Patent Trial Practice Guide and
`
`2
`
`
`
`the Board’s Rules of Practice for Trials set forth in part
`
`42 of the C.F.R.;
`
`vi.
`
`The individual will be subject to the USPTO Code of
`
`Professional Responsibility set forth in 37 C.F.R.
`
`§§ 10.20 et seq. and disciplinary jurisdiction under 37
`
`C.F.R. § 11.19(a);
`
`vii. All other proceedings before the Office for which the
`
`individual has applied to appear pro hac vice in the last
`
`three (3) years; and
`
`viii. Familiarity with the subject matter at issue in the
`
`proceeding.
`
`III.
`
`STATEMENT OF MATERIAL FACTS
`
`Based on the following facts, which are supported by the Declaration of Ms.
`
`Charlotte C. Jacobsen (Ex 2005) filed concurrently with this motion, Patent
`
`Owners request that Charlotte C. Jacobsen be admitted pro hac vice in this
`
`proceeding:
`
`1.
`
`Patent Owners’ lead counsel, Raymond R. Mandra, is a registered
`
`practitioner (Reg. No. 34,382).
`
`2.
`
`Ms. Jacobsen is a partner at the law firm of Fitzpatrick, Cella, Harper
`
`& Scinto. (Ex 2005 at ¶ 3.)
`
`3
`
`
`
`3.
`
`Ms. Jacobsen is an experienced patent litigation attorney. Ms.
`
`Jacobsen has been a patent litigation attorney for more than eleven
`
`(11) years. (Id. at ¶ 4.) Ms. Jacobsen has been litigating patent cases
`
`during this entire time period and has been involved in numerous
`
`cases involving patent validity and infringement in District Courts
`
`across the country as well as at the Federal Circuit. (Id.) She has
`
`extensive experience in bench trials. (Id.)
`
`4.
`
`Ms. Jacobsen is a member in good standing of the State Bar of New
`
`York and the Bar of England and Wales. (Id. at ¶ 5.)
`
`5.
`
`Ms. Jacobsen has never been suspended or disbarred from practice
`
`before any court or administrative body. (Id.)
`
`6.
`
`No application of Ms. Jacobsen for admission to practice before any
`
`court or administrative body has ever been denied. (Id. at ¶ 6.)
`
`7.
`
`No sanctions or contempt citations have ever been imposed against
`
`Ms. Jacobsen by any court or administrative body. (Id. at ¶ 7.)
`
`8.
`
`Ms. Jacobsen has read and will comply with the Office Patent Trial
`
`Practice Guide and the Board’s Rules of Practice for Trials set forth in
`
`part 42 of the C.F.R. (Id. at ¶ 8.)
`
`4
`
`
`
`9.
`
`Ms. Jacobsen understands that she will be subject to the Office’s
`
`Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq.
`
`and disciplinary jurisdiction under 37 C.F.R. § 11.19(a). (Id. at ¶ 9.)
`
`10. Ms. Jacobsen is concurrently seeking pro hac vice admission to
`
`appear in a co-pending related matter, Case IPR2014-00549. (Id. at ¶
`
`10.) Ms. Jacobsen has not applied to appear pro hac vice in another
`
`proceeding before the Office in the last three (3) years. (Id.)
`
`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION OF
`MS. JACOBSEN IN THIS PROCEEDING
`
`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 and to any other conditions as the Board may impose. 37 C.F.R.
`
`§ 42.10(c). Patent Owners’ lead counsel, Raymond R. Mandra, is a registered
`
`practitioner. Based on the facts set forth in this motion, as supported by Ms.
`
`Jacobsen’s Declaration (Ex 2005), there is good cause to admit Ms. Jacobsen pro
`
`hac vice in this proceeding.
`
`Ms. Jacobsen has an established familiarity with the subject matter at issue
`
`in this proceeding. (Ex 2005 at ¶¶ 11-15.) She has been involved consistently and
`
`substantively in this matter for over 7 months, since its inception in April 2014.
`
`(Id. at ¶ 11.) She has read in detail and understands the Petition and the
`
`challenged patent, U.S. Patent 6,335,031 (“the ’031 patent”). (Id.) She has also
`
`5
`
`
`
`reviewed in detail all the exhibits relied upon by Petitioner in this proceeding. (Id.)
`
`Additionally, Ms. Jacobsen has engaged in extensive strategic and substantive
`
`discussions regarding this proceeding with Raymond R. Mandra, who is the lead
`
`counsel for Patent Owners in this proceeding and in Case IPR2014-00549, and
`
`Nicholas K. Kallas, who is the back-up counsel for Patent Owners in this
`
`proceeding. (Id. at ¶ 12.) She has engaged in extensive substantive discussions
`
`with experts concerning issues relevant to this proceeding and Case IPR2014-
`
`00549. (Id.) Since January 2012, she has served as counsel for Patent Owners in
`
`several related lawsuits in which the ’031 patent is and was asserted. (Id. at ¶ 13.)
`
`Two of those lawsuits are against Petitioner. (Id.) In those two lawsuits, she
`
`recently deposed one of Petitioner’s declarants from this proceeding. (Id.)
`
`Thus, Ms. Jacobsen has an established familiarity with the subject matter at
`
`issue in this proceeding as well as significant litigation experience and expertise.
`
`For these reasons, good cause exists to admit Ms. Jacobsen pro hac vice in this
`
`proceeding.
`
`Dated: November 17, 2014
`
`Respectfully submitted,
`
`/Raymond R. Mandra /
`Raymond R. Mandra
`Registration No. 34,382
`Lead Counsel for Patent Owners
`
`6
`
`
`
`FITZPATRICK, CELLA, HARPER
`& SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`Tel. 212-218-2100
`
`7
`
`
`
`CERTIFICATE OF SERVICE
`
`I certify that a copy of the Patent Owners’ Motion For Pro Hac Vice
`
`Admission of Charlotte C. Jacobsen Under 37 C.F.R. § 42.10 was served on
`
`November 17, 2014 by causing it to be sent by email to counsel for Petitioner at
`
`the following email addresses:
`
`Steven J. Lee (slee@kenyon.com)
`
`Michael K. Levy (mlevy@kenyon.com)
`
`Dated: November 17, 2014
`
`/Raymond R. Mandra /
`Raymond R. Mandra
`Registration No. 34,382
`FITZPATRICK, CELLA, HARPER
`& SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`Tel. 212-218-2100
`
`8
`
`
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