`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`BIOFRONTERA INCORPORATED, BIOFRONTERA BIOSCIENCE GMBH,
`BIOFRONTERA PHARMA GMBH, and BIOFRONTERA AG
`Petitioner
`
`v.
`
`DUSA PHARMACEUTICALS, INC.
`Patent Owner
`
`___________________
`
`Case IPR2018-01585
`U.S. Patent No. 8,216,289
`
`___________________
`
`PETITIONER’S MOTION FOR ADMISSION PRO HAC VICE OF
`DAVID E. FINKELSON
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.10 and the Board’s authorization to file motions
`
`for pro hac vice admission in Inter Partes Review Case No. IPR2018-01585 (Paper
`
`No. 3), Petitioner requests that the Board admit David E. Finkelson pro hac vice in
`
`this proceeding.1
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`The Board may recognize counsel pro hac vice during a proceeding on a
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`showing of good cause. “[W]here lead counsel is a registered practitioner, a motion
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`to appear pro hac vice may be granted upon a showing that counsel is an experienced
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`litigation attorney and has an established familiarity with the subject matter at issue
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`in the proceeding.” 37 C.F.R. § 42.10(c).
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`Here, lead counsel, Rachelle Thompson is a registered practitioner (Reg. No.
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`50,860). Mr. Finkelson has over 18 years of patent litigation experience, and he is
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`familiar with the subject matter at issue in this proceeding. United States Patent Nos.
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`8,261,289 and 9,723,991 are currently asserted against Petitioner in a co-pending
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`litigation, DUSA Pharmaceuticals, Inc. v. Biofrontera, Inc., Biofrontera Bioscience
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`GmbH, Biofrontera Pharma GmbH, and Biofrontera AG, Case No. 1:18-cv-10568-
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`RGS (D. Mass.) (the “District Court Litigation”). Mr. Finkelson is lead counsel for
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`
`1 Pursuant to the Order Authorizing Motion for Pro Hac Vice Admission in
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`IPR2013-00639, Paper No. 7 (PTAB Oct. 15, 2013), Petitioners are filing this
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`motion no sooner than twenty one (21) days after service of the petition.
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`
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`Petitioner in the District Court Litigation, responsible for overseeing all aspects of
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`Petitioner’s defense in the District Court Litigation. Mr. Finkelson is also a senior
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`member of the team that prepared the following Petitions for Inter Partes Review:
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`IPR2018-01585 and IPR2018-01586 (the “Petitions”). In the foregoing capacities,
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`Mr. Finkelson has overseen the review of the prior art references set forth in the
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`Petitions, and is intimately familiar with the disclosures of these prior art references,
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`the asserted grounds of invalidity, and the subject matter in this proceeding
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`Accompanying this motion is the Declaration of David E. Finkelson (Ex. A),
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`where Mr. Finkelson attests to his aforementioned experience and established
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`familiarity with the subject matter of this proceeding. Petitioner already has
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`expended significant resources in the District Court Litigation with Mr. Finkelson
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`as lead counsel, and Petitioner wishes to continue using Mr. Finkelson as counsel in
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`this proceeding.
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`Further, counsel for Patent Owner does not oppose Mr. Finkelson appearing
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`pro hac vice during this proceeding.
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`Therefore, Petitioner submits that there is good cause for the Board to
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`recognize Mr. Finkelson as backup counsel pro hac vice during this proceeding.
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`Dated: October 29, 2018
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`Respectfully submitted,
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`By: /Rachelle H. Thompson/_____________
`Rachelle H. Thompson
`Reg. No. 50,860
`McGuireWoods LLP
`434 Fayetteville St., Suite 1400
`Raleigh, NC 27601
`Telephone: (919) 755-6600
`Facsimile: (919) 755-6591
`Email:
`rthompson@mcguirewoods.com
`
`George B. Davis
`Reg. No. 68,205
`MCGUIREWOODS LLP
`Gateway Plaza
`800 East Canal Street
`Richmond, VA 23219
`Telephone: (804) 775-1000
`Facsimile: (804) 775-2016
`Email:
`
`gdavis@mcguirewoods.com
`
`Attorneys for Petitioner
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on October 29,
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`2018, a true and correct copy of this Motion to Appear Pro Hac Vice, and all
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`supporting exhibits, was served electronically on the following counsel of record for
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`Patent Owner:
`
`Counsel of Record for Patent Owner
`W. Karl Renner
`Registration No. 41,265
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 202-783-5070
`Email: IPR46697-0001IP1@fr.com
`Fax: 877-769-7945
`
`Stuart A. Nelson
`Registration No. 63,947
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 612-337-2538
`Email: PTABInbound@fr.com
`Fax: 877-769-7945
`
`
`By: /Rachelle H. Thompson/
`Rachelle H. Thompson
`Reg. No. 50,860
`rthompson@mcguirewoods.com
`Attorney for Petitioner
`
`
`
`
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