UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________
`
`MYLAN PHARMACEUTICALS INC.,
`
`Petitioner
`
`v.
`
`BOEHRINGER INGELHEIM INTERNATIONAL GMBH,
`
`Patent Owner
`
`____________________________
`
`IPR2016-01566
`
`U.S. Patent No. 9,173,859
`
`____________________________
`
`PATENT OWNER’S MOTION FOR PRO HAC VICE ADMISSION OF
`JEANNA WACKER PURSUANT TO 37 C.F.R. § 42.10(C)
`
`
`
`____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________
`
`MYLAN PHARMACEUTICALS INC.,
`
`Petitioner
`
`v.
`
`BOEHRINGER INGELHEIM INTERNATIONAL GMBH,
`
`Patent Owner
`
`____________________________
`
`IPR2016-01566
`
`U.S. Patent No. 9,173,859
`
`____________________________
`
`PATENT OWNER’S MOTION FOR PRO HAC VICE ADMISSION OF
`JEANNA WACKER PURSUANT TO 37 C.F.R. § 42.10(C)
`
`
`
`IPR2016-01566
`U.S. Patent No. 9,173,859
`Boehringer Ingelheim International Gmbh (“Boehringer”) requests, pursuant
`
`
`
`to 37 C.F.R. §§ 42.10(b) and (c), the Board to recognize Jeanna Wacker as co-
`
`counsel pro hac vice during this proceeding. A power of attorney from Patent
`
`Owner so appointing her, was filed on August 31, 2016. (Paper 5) This motion is
`
`being filed no sooner than 21 days after service of the IPR petition.
`
`
`
`
`
`Boehringer’s lead and back-up counsel are registered practitioners:
`
`• Leora Ben-Ami (Reg. No. 32,455)
`• Eugene Goryunov (Reg. No. 61,579)
`• Mira Mulvaney (Reg. No. 69,850)
`As demonstrated below, there is good cause for the Board to recognize Ms.
`
`Wacker pro hac vice.
`
`
`
`First, Ms. Wacker is an experienced patent litigation attorney with more
`
`than 13 years of experience. She has been involved in numerous litigations in
`
`federal district courts in District of Massachusetts, Southern District of New York,
`
`District of New Jersey, Northern District of California, Northern District of
`
`Illinois, Eastern District of Missouri and the District of Delaware. Ms. Wacker
`
`has served as lead counsel equivalent in her cases, both in crafting complex
`
`litigation strategy and at trial. She has never been suspended, disbarred, sanctioned,
`
`denied admission to practice or cited for contempt by any court or administrative
`
`body.
`
`1
`
`
`
`IPR2016-01566
`U.S. Patent No. 9,173,859
`Second, Ms. Wacker has an established familiarity with the subject matter at
`
`
`
`issue
`
`in
`
`this proceeding.
`
` She has appeared
`
`in Boehringer Ingelheim
`
`Pharmaceauticals Inc. et al v. HEC Pharm Co. Ltd. et al, Case No. 3:15-cv-05982-
`
`PGS-TJB (D.N.J.) (consolidated) where U.S. Patent No. 9,173,859 is currently
`
`being asserted. As counsel in this case, Ms. Wacker is deeply involved in all
`
`aspects of the litigation, including all issues related to the invalidity of U.S. Patent
`
`No. 9,173,859, such as, for example, claim construction, prior art, and inventor
`
`testimony.
`
`
`
`In sum, Boehringer’s lead and backup counsel are registered practitioners,
`
`Ms. Wacker is an experienced patent litigation attorney, and Ms. Wacker has an
`
`established familiarity with the subject matter at issue in this proceeding.
`
`Boehringer submits that there is good cause for the Board to recognize Ms. Wacker
`
`as counsel pro hac vice in this proceeding.
`
`
`
`This Motion for Admission Pro Hac Vice is accompanied and supported by
`
`a Declaration of Ms. Jeanna Wacker, which is appended to this motion.
`
`
`
`Date: November 10, 2016
`
`
`
`Respectfully submitted,
`
`/s/ Leora Ben-Ami
`Leora Ben-Ami (Reg. No. 32,455)
`Mira Mulvaney (Reg. No. 69,850)
`KIRKLAND & ELLIS LLP
`
`2
`
`
`
`IPR2016-01566
`U.S. Patent No. 9,173,859
`601 Lexington Avenue
`New York, New York 10022
`Telephone: (212) 446-4800
`Facsimile: (212) 446-4900
`leora.benami@kirkland.com
`mira.mulvaney@kirkland.com
`
`Eugene Goryunov (Reg. No. 61,579)
`KIRKLAND & ELLIS LLP
`300 North LaSalle
`Chicago, Illinois 60654
`Telephone: (312) 862-2000
`Fax: (312) 862-2200
`eugene.goryunov@kirkland.com
`
`Attorneys For Patent Owner
`
`
`
`3
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________
`
`MYLAN PHARMACEUTICALS INC.,
`
`Petitioner
`
`v.
`
`BOEHRINGER INGELHEIM INTERNATIONAL GMBH,
`
`Patent Owner
`
`____________________________
`
`IPR2016-01566
`
`U.S. Patent No. 9,173,859
`
`____________________________
`
`DECLARATION OF JEANNA WACKER IN SUPPORT OF PATENT
`OWNER’S MOTION FOR PRO HAC VICE ADMISSION OF JEANNA
`WACKER PURSUANT TO 37 C.F.R. § 42.10(C)
`
`
`
`
`
`
`IPR2016-01566
`U.S. Patent No. 9,173,859
`
`I, Jeanna Wacker, do hereby declare as follows:
`
`1.
`
`I am an attorney with the law firm of Kirkland & Ellis LLP. I have been a
`
`practicing attorney since 2003.
`
`I am a member in good standing of the Bar of New York.
`
`I have never been suspended or disbarred from practice before any court or
`
`2.
`
`3.
`
`administrative body.
`
`4.
`
`I have never had an application for admission to practice before any court or
`
`administrative body denied.
`
`5.
`
`I have had no sanctions or contempt citations imposed against me by any
`
`court or administrative body.
`
`6.
`
`I have 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 37 C.F.R.
`
`7.
`
`I agree to be subject to the USPTO 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).
`
`8.
`
`I have not applied to appear pro hac vice before the Office in any other
`
`proceeding in the last three (3) years. I am, however, filing concurrent
`
`motions for pro hac vice admission in the following proceedings: IPR 2016-
`
`01563, IPR2016-01564 and IPR2016-01565.
`
`2
`
`
`
`IPR2016-01566
`U.S. Patent No. 9,173,859
`I am an experienced patent litigation attorney with more than 13 years of
`
`9.
`
`experience. In that time, I have served as counsel in numerous patent
`
`infringement litigations in federal district courts in District of Massachusetts,
`
`Southern District of New York, District of New Jersey, Northern District of
`
`California, Northern District of Illinois, Eastern District of Missouri and the
`
`District of Delaware..
`
`10.
`
`I have acted as lead counsel equivalent in cases both in crafting complex
`
`litigation strategy and at trial.
`
`11.
`
`I have an established familiarity with the subject matter at issue in this
`
`proceeding, specifically, U.S. Patent No. 9,173,859 and the relevant prior
`
`art.
`
`12.
`
`I have appeared in Boehringer Ingelheim Pharmaceauticals Inc. et al v.
`
`HEC Pharm Co. Ltd. et al, Case No. 3:15-cv-05982-PGS-TJB (D.N.J.)
`
`(consolidated) where U.S. Patent No. 9,173,859 is currently being asserted.
`
`13. As counsel in this case, I am deeply involved in all aspects of the litigation
`
`related to the invalidity of U.S. Patent No. 9,173,859, including claim
`
`construction, prior art, and inventor testimony.
`
`14. Pursuant to 28 U.S.C. § 1746, I hereby declare under penalty of perjury
`
`under the laws of the United States of America that the foregoing is true and
`
`correct, and that all statements made of my own knowledge are true and that
`
`3
`
`
`
`IPR2016-01566
`U.S. Patent No. 9,173,859
`all statements made on information and belief are believed to be true. I
`
`understand
`
`that willful false statements are punishable by fine or
`
`imprisonment or both. See 18 U.S.C. § 1001.
`
`Date: November 10, 2016
`
`
`
`
`
`Respectfully submitted,
`Kirkland & Ellis LLP
`
`/s/ Jeanna Wacker
`Jeanna Wacker
`
`
`4
`
`
`
`IPR2016-01566
`U.S. Patent No. 9,173,859
`CERTIFICATE OF SERVICE
`I hereby certify that a true and correct copy of the foregoing PATENT
`
`OWNER'S PRO HAC VICE MOTION FOR JEANNA WACKER was
`served on November 10, 2016, via email to counsel for Petitioners at the following:
`
`
`Thomas J. Parker
`Reg. No. 42,062
`thomas.parker@alston.com
`ALSTON & BIRD LLP
`90 Park Avenue, 15th Floor
`New York, NY 10016
`T: (212) 210-9529
`F: (212) 210-9444
`
`Ellen Y. Cheong (Reg. No. 71,852)
`ellen.cheong@alston.com
`ALSTON & BIRD LLP
`90 Park Avenue, 15th Floor
`New York, NY 10016
`T: (212) 210-1277
`F: (212) 210-9444
`
`Christopher L. McArdle
`(pro hac vice motion to be filed)
`chris.mcardle@alston.com
`ALSTON & BIRD LLP
`90 Park Avenue, 15th Floor
`New York, NY 10016
`T: (212) 210-9542
`F: (212) 922-3843
`
`Charles A. Naggar
`(pro hac vice motion to be filed)
`charles.naggar@alston.com
`ALSTON & BIRD LLP
`90 Park Avenue, 15th Floor
`New York, NY 10016
`T: (212) 210-1275
`F: (212) 210-9444
`
`
`
`
`
` /s/ Leora Ben-Ami
`
`Leora Ben-Ami (Reg. No. 32455)
`KIRKLAND & ELLIS LLP
`Tel: (212) 446-4800
`Fax: (212) 446-4900
`
`
`
`5
`
`
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