`
`
`Filed: March 21, 2016
`
`Filed on behalf of Petitioners,
`Lupin Limited and Lupin Pharmaceuticals, Inc.
`By: Christy G. Lea
`
`Kerry S. Taylor
`
`Benjamin Anger
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`
`
`Irvine, CA 92614
`
`Tel.: (949) 760-0404
`
`Fax: (949) 760-9502
`
`Email: BoxLupin15B@knobbe.com
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`LUPIN LIMITED
`AND LUPIN PHARMACEUTICALS INC.,
`Petitioners
`
`v.
`iCEUTICA PTY LTD.
`
`Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2016-00399
`U.S. Patent No. 9,017,721
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`MOTION FOR WILLIAM R. ZIMMERMAN TO
`APPEAR PRO HAC VICE ON BEHALF OF PETITIONERS
`
`
`
`
`
`Lupin v. iCeutica Pty Ltd
`IPR2016-00399
`
`
`I. STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`
`
`Pursuant
`
`to
`
`the Board’s Notice of Filing Date
`
`(Paper 3) and
`
`37 C.F.R. §§ 42.10(c) and 42.22, Petitioners Lupin Limited and Lupin
`
`Pharmaceuticals Inc. (collectively, “Lupin”) hereby move for an Order allowing
`
`William R. Zimmerman of Knobbe, Martens, Olson & Bear, LLP to appear pro
`
`hac vice on behalf of Lupin in the above-captioned case.
`
`II. LIST OF EXHIBITS RELIED UPON FOR THIS MOTION
`
`
`
`Lupin Exhibit 1039 – Declaration of William R. Zimmerman in Support of
`
`Motion to Appear Pro Hac Vice on Behalf of Petitioners.
`
`III. REASONS THE REQUESTED RELIEF SHOULD BE GRANTED
`
`
`
`As set forth below in the Statement of Material Facts, Lupin has made all of
`
`the showings required under 37 C.F.R. § 42.10(c) for recognizing Mr. Zimmerman
`
`pro hac vice. In particular, Mr. Zimmerman is an experienced litigating attorney
`
`who has represented clients in numerous patent litigation cases in various United
`
`States District Courts and the Court of Appeals for the Federal Circuit, including
`
`technically and legally complex matters such as will be present in this proceeding.
`
`Accordingly, allowing Mr. Zimmerman to appear pro hac vice on behalf of Lupin
`
`is appropriate in this proceeding.
`
`- 1 -
`
`
`
`Lupin v. iCeutica Pty Ltd
`IPR2016-00399
`
`
`IV. STATEMENT OF MATERIAL FACTS
`
`1.
`
`37 C.F.R. § 42.10(c) provides that “[t]he 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.”
`
`2.
`
`Lead counsel in this inter partes review proceeding is Christy G. Lea.
`
`Ms. Lea is registered to practice before the United States Patent and Trademark
`
`Office and holds Registration No. 51,754.
`
`3.
`
`As set forth
`
`in Lupin Exhibit 1039 (the “Zimmeran Decl.”),
`
`Mr. Zimmerman is an experienced litigating attorney and has an established
`
`familiarity with the subject matter at issue in this proceeding. (Zimmerman Decl.
`
`¶ 4.) In particular, Mr. Zimmerman has over 16 years of experience as a patent
`
`litigator and has represented clients in numerous patent litigation cases in various
`
`United States District Courts and the Court of Appeals for the Federal Circuit. (Id.
`
`¶¶ 2, 3.) In addition, Mr. Zimmerman has experience in inter partes review
`
`proceedings, for example, IPR2013-00024, IPR2013-00128, IPR2013-00266,
`
`
`
`Lupin v. iCeutica Pty Ltd
`IPR2016-00399
`
`IPR2013-00517, IPR2013-00518, IPR2014-01093, IPR2015-00265, and IPR2015-
`
`00268.
`
`4.
`
`Further, Mr. Zimmerman holds a Bachelor of Science degree in
`
`Chemical Engineering from the University of Notre Dame and served as a law
`
`clerk to the Honorable Alvin A. Schall, Circuit Judge of the United States Court of
`
`Appeals for the Federal Circuit. (Id. ¶ 3.) Moreover, Mr. Zimmerman is
`
`experienced with technically and legally complex matters in the field of chemistry
`
`and biotechnology. (Id.)
`
`5. With regard to U.S. Patent No. 9,017,721 (the “’721 patent”), the
`
`patent at issue in this proceeding, Mr. Zimmerman is familiar with the ’721 patent,
`
`and with the legal subject matter, technical subject matter, and prior art discussed
`
`in Petitioners’ request for inter partes review of the ’721 patent, which forms the
`
`basis of this proceeding. (Id. ¶ 4.) In view of his legal experience, technical
`
`background, and familiarity with the issues in the present matter, Lupin has
`
`requested his services in the present matter. Denial of his appearance in this case
`
`would create an undue burden on Lupin. (Id.)
`
`6. Mr. Zimmerman 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. ¶ 9.) Mr. Zimmerman also agrees to be subject to the United States
`
`Patent and Trademark Office Rules of Professional Conduct set forth in 37 C.F.R.
`
`
`
`Lupin v. iCeutica Pty Ltd
`IPR2016-00399
`
`§§ 11.101 et seq., and disciplinary jurisdiction under 37 C.F.R. § 11.19(a). (Id.
`
`¶ 10.)
`
`7.
`
`Finally, Mr. Zimmerman has attested to the remaining elements of
`
`Paragraph 2(b) of the representative “Order – Authorizing Motion for Pro Hac
`
`Vice Admission” in Case IPR2013-00639, Paper 7. (Id. ¶¶ 4-11; see Notice of
`
`Filing Date Accorded to Petition and Time for Filing Patent Owner Preliminary
`
`Response (Paper 3) at 2.)
`
`V. CONCLUSION
`
`
`
`In view of the foregoing, and having satisfied the requirements of 37 C.F.R.
`
`§ 42.10(c), Lupin hereby moves for an Order allowing William R. Zimmerman of
`
`Knobbe, Martens, Olson, & Bear, LLP to appear pro hac vice on behalf of Lupin in
`
`the above-captioned case.
`
`
`
`
`
`
`
`Dated: March 21, 2016
`
`
`
`Respectfully submitted,
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`
`
`By:/Benjamin Anger/
`Christy G. Lea (Reg. No. 51,754)
`Kerry Taylor (Reg. No. 43,947)
`Benjamin B. Anger (Reg. No. 62,207)
`
`Attorneys for Petitioners, Lupin Limited
`and Lupin Pharmaceuticals, Inc.
`
`
`
`Lupin v. iCeutica Pty Ltd
`IPR2016-00399
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing MOTION
`
`
`
`FOR WILLIAM R. ZIMMERMAN TO APPEAR PRO HAC VICE ON
`
`BEHALF OF PETITIONERS is being served on March 21, 2016, via email
`
`pursuant to 37 C.F.R. § 42.6(e), per agreement of the parties, to counsel for
`
`iCeutica Pty Ltd. at the address below:
`
`
`
`Dorothy P. Whelan
`FISH & RICHARDSON P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Email: IPR31215-0011IP4@fr.com
`
`
`Martina Tyreus Hufnal
`FISH & RICHARDSON P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Email: IPR31215-0011IP4@fr.com
`
`
`
`
`Dated: March 21, 2016
`
`
`22367291
`
`
`
`
`
`/Benjamin Anger/
`Christy G. Lea (Reg. No. 51,754)
`Kerry Taylor (Reg. No. 43,947)
`Benjamin B. Anger (Reg. No. 62,207)
`
`Attorneys for Petitioners, Lupin Limited
`and Lupin Pharmaceuticals, Inc.
`
`- 5 -
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
