Paper No. ____
`Filed: May 10, 2017
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`Filed on behalf of: Sumitomo Dainippon Pharma Co., Ltd.
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`By: Preston K. Ratliff II (PH-Par-Sunovion-IPR@paulhastings.com)
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`Joseph M. O’Malley, Jr. (PH-Par-Sunovion-IPR@paulhastings.com)
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`Naveen Modi (PH-Par-Sunovion-IPR@paulhastings.com)
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`Michael A. Stramiello, Ph.D. (PH-Par-Sunovion-IPR@paulhastings.com)
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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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`PAR PHARMACEUTICAL, INC.,
`Petitioner
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`v.
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`SUMITOMO DAINIPPON PHARMA CO., LTD.,
`Patent Owner
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`Case IPR2017-01292
`U.S. Patent No. 9,555,027
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`PATENT OWNER’S MOTION FOR PRO HAC VICE ADMISSION OF
`JOSEPH M. O’MALLEY, JR.
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`Filed: May 10, 2017
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`Filed on behalf of: Sumitomo Dainippon Pharma Co., Ltd.
`
`By: Preston K. Ratliff II (PH-Par-Sunovion-IPR@paulhastings.com)
`
`Joseph M. O’Malley, Jr. (PH-Par-Sunovion-IPR@paulhastings.com)
`
`Naveen Modi (PH-Par-Sunovion-IPR@paulhastings.com)
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`Michael A. Stramiello, Ph.D. (PH-Par-Sunovion-IPR@paulhastings.com)
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`
`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`
`
`PAR PHARMACEUTICAL, INC.,
`Petitioner
`
`v.
`
`SUMITOMO DAINIPPON PHARMA CO., LTD.,
`Patent Owner
`
`
`
`
`Case IPR2017-01292
`U.S. Patent No. 9,555,027
`
`
`
`PATENT OWNER’S MOTION FOR PRO HAC VICE ADMISSION OF
`JOSEPH M. O’MALLEY, JR.
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`Case IPR2017-01292
`U.S. Patent 9,555,027
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`I.
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`INTRODUCTION AND PRECISE RELIEF REQUESTED
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`Sumitomo Dainippon Pharma Co., Ltd. (“Patent Owner”) requests that the
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`Board recognize Joseph M. O’Malley as counsel pro hac vice during this
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`proceeding. This motion was authorized in the Notice of Filing Date Accorded to
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`Petition and Time for Filing Patent Owner Preliminary Response. Paper No. 3
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`at 2. Because this motion meets all of the Board’s requirements, Patent Owner
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`requests that the Board grant this motion.
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`II.
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`STATEMENT OF FACTS
`Patent Owner has been authorized to file motions seeking admission pro hac
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`vice under 37 C.F.R. §42.10(c). See Paper 3 at 2. Patent Owner’s lead counsel and
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`two back-up counsel are registered practitioners. Paper 4 at 2. As set forth in the
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`accompanying declaration, Mr. O’Malley is an attorney at Paul Hastings LLP.
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`Ex. 2001 at ¶ 2. He is an experienced litigating attorney with more than twenty-
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`four years of experience and has served as lead counsel in numerous patent
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`infringement lawsuits before the district courts and the Court of Appeals for the
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`Federal Circuit. Id.
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`Mr. O’Malley has an established familiarity with the subject matter at issue
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`in this proceeding. Id. at ¶ 9. Mr. O’Malley has reviewed U.S. Patent No.
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`9,555,027 (“the ’027 patent”), the patent-at-issue, and other papers associated with
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`this matter. Id.
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`1
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`Case IPR2017-01292
`U.S. Patent 9,555,027
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`In addition, Mr. O’Malley is a member in good standing of the Bar for the
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`State of New York. Id. at ¶ 1. He has never been suspended or disbarred from
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`practice before any court or administrative body. Id. at ¶ 3. He has never had an
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`application for admission to practice before any court or administrative body
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`denied. Id. at ¶ 4. He has never had sanctions or contempt citations imposed by
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`any court or administrative body. Id. at ¶ 5. He has read and will comply with the
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`Office Patent Trial Practice Guide and the Board’s Rules of Practice for Trials set
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`forth in part 42 of title 37 of the Code of Federal Regulations. Id. at ¶ 6. He agrees
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`to be subject to the USPTO 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. at
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`¶ 7. He has not applied to appear pro hac vice in any other proceeding before the
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`Office in the last three years. Id. at ¶ 8.
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`III. REASONS FOR GRANTING THE MOTION
`The Board may recognize counsel pro hac vice during a proceeding “upon a
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`showing of good cause, subject to the condition that lead counsel be a registered
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`practitioner and to any other conditions as the Board may impose.” 37 C.F.R.
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`§ 42.10(c). For example, where the lead counsel is a registered practitioner, a
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`motion to appear pro hac vice may be granted upon showing that counsel who is
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`seeking pro hac vice admission is “an experienced litigating attorney and has an
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`established familiarity with the subject matter at issue in the proceeding.” Id. The
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`2
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`Case IPR2017-01292
`U.S. Patent 9,555,027
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`motion for pro hac vice admission must contain a statement of facts showing good
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`cause and be accompanied by a declaration of the individual who is seeking
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`admission. See Unified Patents, Inc. v. Parallel Iron, LLC, IPR2013-00639, Paper
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`No. 7 at 3-4 (P.T.A.B. Oct. 15, 2013). The declaration in turn must contain certain
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`attestations. Id.
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`This motion and the accompanying declaration meet all of the Board’s
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`requirements. The lead counsel in this proceeding, Preston K. Ratliff II, is a
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`registered practitioner. Paper 4 at 2. Mr. O’Malley is an experienced litigating
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`attorney and has an established familiarity with the subject matter at issue in the
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`proceeding. See Ex. 2001 at ¶¶ 2, 9. For example, Mr. O’Malley has handled
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`patent litigation matters involving lurasidone, an ingredient in the oral preparations
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`claimed in the ’027 patent. See, e.g., id. at ¶ 9. Mr. O’Malley’s declaration makes
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`the necessary attestations. Id. at ¶ 10.
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`IV. CONCLUSION
`For the foregoing reasons, Patent Owner submits that there is good cause for
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`the Board to recognize Mr. O’Malley as counsel pro hac vice in this proceeding.
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`3
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`Date: May 10, 2017
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`Case IPR2017-01292
`U.S. Patent 9,555,027
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`Respectfully submitted,
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`/Preston K. Ratliff II/
`Preston K. Ratliff II, Reg. No. 43,034
`Naveen Modi, Reg. No. 46,224
`Joseph M. O’Malley, Jr. (pro hac vice pending)
`Michael A. Stramiello, Ph.D., Reg. No. 67,195
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`Counsel for Patent Owner
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`4
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`Case IPR2017-01292
`U.S. Patent 9,555,027
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`CERTIFICATE OF SERVICE
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`I hereby certify that on May 10, 2017, a copy of the foregoing Patent
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`Owner’s Motion for Pro Hac Vice Admission of Joseph M. O’Malley, Jr. was
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`served by e-mail on the following counsel of record for Petitioner:
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`Daniel G. Brown (daniel.brown@lw.com)
`Jonathan M. Strang (jonathan.strang@lw.com)
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`Respectfully submitted,
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`/Preston K. Ratliff II/
`Preston K. Ratliff II, Reg. No. 43,034
`Naveen Modi, Reg. No. 46,224
`Joseph M. O’Malley, Jr. (pro hac vice pending)
`Michael A. Stramiello, Ph.D., Reg. No. 67,195
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`Counsel for Patent Owner
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`Date: May 10, 2017
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