Filed on behalf of:
`Mylan Pharmaceuticals Inc.
`Joseph M. Reisman
`Jay R. Deshmukh
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Fax: (949) 760-9502
`Ph.: (949) 760-0404
`E-mail: BoxMylan2@knobbe.com
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`By:
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`Filed: December 10, 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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`MYLAN PHARMACEUTICALS INC.,
`Petitioner
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`v.
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`NOVARTIS AG AND LTS LOHMANN THERAPIE-SYSTEME AG,
`Patent Owners
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`Case No. IPR2015-00268
`Patent 6,335,031
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`MOTION FOR WILLIAM R. ZIMMERMAN TO APPEAR
`PRO HAC VICE ON BEHALF OF PETITIONER
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`
`Mylan Pharmaceuticals Inc.
`Joseph M. Reisman
`Jay R. Deshmukh
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Fax: (949) 760-9502
`Ph.: (949) 760-0404
`E-mail: BoxMylan2@knobbe.com
`
`By:
`
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`
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`Filed: December 10, 2014
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner
`
`v.
`
`NOVARTIS AG AND LTS LOHMANN THERAPIE-SYSTEME AG,
`Patent Owners
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`
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`Case No. IPR2015-00268
`Patent 6,335,031
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`
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`
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`MOTION FOR WILLIAM R. ZIMMERMAN TO APPEAR
`PRO HAC VICE ON BEHALF OF PETITIONER
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`
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`IPR2015-00268
`Mylan v. Novartis
`
`
`I.
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`STATEMENT OF THE PRECISE RELIEF REQUESTED
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`Pursuant to the Board’s Notice of Filing Date (Paper 6) and 37 C.F.R. §§
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`42.10(c) and 42.22, Petitioner Mylan Pharmaceuticals Inc. (“Mylan”) hereby
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`moves for an Order allowing William R. Zimmerman of Knobbe, Martens, Olson
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`& Bear, LLP to appear pro hac vice on behalf of Mylan in the above-captioned
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`case.
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`II. LIST OF EXHIBITS RELIED UPON FOR THIS MOTION
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`
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`Mylan Ex. 1026 - Declaration of William R. Zimmerman in Support
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`of Motion to Appear Pro Hac Vice on Behalf of Petitioner.
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`III. REASONS THE REQUESTED RELIEF SHOULD BE GRANTED
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`As set forth below in the Statement of Material Facts, Mylan has made all of
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`the showings required under 37 C.F.R. § 42.10(c) for recognizing Mr. Zimmerman
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`pro hac vice. In particular, Mr. Zimmerman is an experienced litigating attorney
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`who has represented clients in numerous patent litigation cases in various United
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`States District Courts and the Court of Appeals for the Federal Circuit, including
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`technically and legally complex matters such as will be present in this proceeding.
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`Accordingly, allowing Mr. Zimmerman to appear pro hac vice on behalf of Mylan
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`is appropriate in this proceeding.
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`1
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`
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`IPR2015-00268
`Mylan v. Novartis
`
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`IV. STATEMENT OF MATERIAL FACTS
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`1.
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`37 C.F.R. § 42.10(c) provides that “[t]he Board may recognize
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`counsel pro hac vice during a proceeding upon a showing of good cause, subject
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`to the condition that lead counsel be a registered practitioner and to any other
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`conditions as the Board may impose. For example, where the lead counsel is a
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`registered practitioner, a motion to appear pro hac vice by counsel who is not a
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`registered practitioner may be granted upon showing that counsel is an
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`experienced litigating attorney and has an established familiarity with the subject
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`matter at issue in the proceeding.”
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`2.
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`Lead counsel in this inter partes review proceeding is Joseph M.
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`Reisman. Mr. Reisman is registered to practice before the United States Patent and
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`Trademark Office and holds Registration No. 43,878.
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`3.
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`As set forth in Mylan Exhibit 1026 (the “Zimmerman Decl.”), Mr.
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`Zimmerman is an experienced litigating attorney and has an established familiarity
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`with the subject matter at issue in this proceeding. Zimmerman Decl. ¶ 4. In
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`particular, Mr. Zimmerman has over 16 years of experience as a patent litigator
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`and has represented clients in numerous patent litigation cases in various United
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`States District Courts and the Court of Appeals for the Federal Circuit. Id. ¶¶ 2, 3.
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`In addition, Mr. Zimmerman has experience in inter partes review proceedings, for
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`2
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`IPR2015-00268
`Mylan v. Novartis
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`example, IPR2013-00024, IPR2013-00128, IPR2013-00266, IPR2013-00517,
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`IPR2013-00518, and IPR2014-01093. Id. ¶ 2.
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`4.
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`Further, Mr. Zimmerman holds a Bachelor of Science degree in
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`Chemical Engineering from the University of Notre Dame and served as a law
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`clerk to the Honorable Alvin A. Schall, Circuit Judge of the United States Court of
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`Appeals for the Federal Circuit. Id. ¶ 3. Moreover, Mr. Zimmerman is
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`experienced with technically and legally complex matters in the field of chemistry
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`and biotechnology. Id.
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`5. With regard to U.S. Patent No. 6,335,031 (“the ’031 patent”), the
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`patent at issue in this proceeding, Mr. Zimmerman is familiar with the ’031 patent,
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`and with the legal subject matter, technical subject matter, and prior art discussed
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`in Mylan’s petition for inter partes review of the ’031 patent, which forms the
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`basis of this proceeding. Id. ¶ 4. In view of his legal experience, technical
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`background, and familiarity with the issues in the present matter, Mylan has
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`requested his services in the present matter. Denial of his appearance in this case
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`would create an undue burden on Mylan. Id.
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`3
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`IPR2015-00268
`Mylan v. Novartis
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`
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`6. Mr. Zimmerman has read and will comply with the Office Patent Trial
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`Practice Guide and the Board’s Rules of Practice for Trials set forth in Part 42 of
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`the C.F.R. Id. ¶ 9. Mr. Zimmerman also agrees to be subject to the United States
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`Patent and Trademark Office Rules of Professional Conduct set forth in 37 C.F.R.
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`§§ 11.101 et seq., and disciplinary jurisdiction under 37 C.F.R. § 11.19(a). Id. ¶ 10.
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`7.
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`Finally, Mr. Zimmerman has attested to the remaining elements of
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`Paragraph 2(b) of the representative “Order – Authorizing Motion for Pro Hac
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`Vice Admission” in Case IPR2013-00639, Paper 7. Id. ¶¶ 4-11; see Notice of
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`Filing Date Accorded to Petition and Time for Filing Patent Owner Preliminary
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`Response (Paper 6) at 2.
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`V. CONCLUSION
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`In view of the foregoing, and having satisfied the requirements of 37 C.F.R.
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`§ 42.10(c), Mylan hereby moves for an Order allowing William R. Zimmerman
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`of Knobbe, Martens, Olson, & Bear, LLP to appear pro hac vice on behalf of
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`Mylan in the above-captioned case.
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`4
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`IPR2015-00268
`
`Mylan V. Novartis
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`Respectfully submitted,
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`KNOBBE, MARTENS, OLSON & BEAR, LLP
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`MA
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` By:
`
`Dated: December 10 2014
`
`oseph M. Reisman
`Reg. No. 43,878
`Customer No. 20,995
`
`Attorneys for Petitioner
`MYLAN PHARMACEUTICALS INC.
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`(949) 760—0404
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`
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`IPR2015-00268
`
`Mylan V. Novartis
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct 'copy of the foregoing MOTION
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`FOR WILLIAM R. ZIMMERMAN TO APPEAR PRO HAC VICE ON
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`BEHALF OF PETITIONER is being served on December 10, 2014, Via email
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`pursuant to 37 CPR. § 42.6(e) per agreement of the parties, to counsel for
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`Novartis AG and LTS Lohmann Therapie-Systeme AG at the address below:
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`ExelonPatchIPR@fchs.com
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`Raymond R. Mandra
`Fitzpatrick, Cella, Harper & Scinto
`1290 Avenue of the Americas
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`,
`
`New York, NY 10104 M
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`Dated: December 10 2014
`
`oseph M. Reisman, Reg. No. 43,878
`Attorney for Petitioner
`Mylan Pharmaceuticals Inc.
`
`
`
`19390039
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`
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