`Tel: 571-272-7822
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`Paper 8
`Entered: November 7, 2018
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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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`BIOFRONTERA INCORPORATED, BIOFRONTERA BIOSCIENCE
`GMBH, BIOFRONTERA PHARMA GMBH, and BIOFRONTERA AG
`Petitioner,
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`v.
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`DUSA PHARMACEUTICALS, INC.,
`Patent Owner.
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` _______________
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`Case IPR2018-01585 (Patent 8,216,289 B2)
`Case IPR2018-01586 (Patent 9,723,991 B2)
`_______________
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`Before WILLIAM V. SAINDON and STEVEN M. AMUNDSON,
`Administrative Patent Judges.
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`SAINDON, Administrative Patent Judge.
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`
`
`ORDER
`Granting Petitioner’s Motions for
`Pro Hac Vice Admission of David E. Finkelson
`37 C.F.R. § 42.10
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`Case IPR2018-01585 (Patent 8,216,289 B2)
`Case IPR2018-01586 (Patent 9,723,991 B2)
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`On October 29, 2018, Petitioner filed a motion requesting pro hac vice
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`admission of David E. Finkelson in each of the above identified proceedings.
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`Paper 7 (“Motion”).1 The Motion is supported by a declaration of Mr. Finkelson.
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`Ex. 1020 (“Declaration”). Petitioner attests that Patent Owner does not oppose the
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`Motion. Motion 3.
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`In accordance with 37 C.F.R. § 42.10(c), we may recognize counsel pro hac
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`vice during a proceeding upon a showing of good cause. In authorizing a motion
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`for pro hac vice admission, the Board requires the moving party to provide a
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`statement of facts showing there is good cause for the Board to recognize counsel
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`pro hac vice and an affidavit or declaration of the individual seeking to appear in
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`the proceeding. See Paper 3, 2 (citing Unified Patents, Inc. v. Parallel Iron, LLC,
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`Case IPR2013-00639 (PTAB Oct. 15, 2013) (Paper 7) (representative “Order –
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`Authorizing Motion for Pro Hac Vice Admission”)).
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`Based on the facts set forth in the Motion, we conclude that Mr. Finkelson
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`has sufficient legal and technical qualifications to represent Petitioner in this
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`proceeding, that Mr. Finkelson has demonstrated sufficient familiarity with the
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`subject matter of these proceedings, and that there is a need for Petitioner to be
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`represented by counsel with litigation experience. Accordingly, Petitioner
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`has established good cause for pro hac vice admission of Mr. Finkelson.
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`Mr. Finkelson will be permitted to serve as back-up counsel only. See 37 C.F.R.
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`§ 42.10(c).
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`1 For purposes of expediency, we refer to papers and exhibits filed in IPR2018-
`01585. Petitioner filed a similar motion (Paper 7) and declaration (Ex. 1023) in
`IPR2018-01586.
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` 2
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`Case IPR2018-01585 (Patent 8,216,289 B2)
`Case IPR2018-01586 (Patent 9,723,991 B2)
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`In consideration of the foregoing, it is hereby:
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`ORDERED that Petitioner’s Motions for Pro Hac Vice Admission of David
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`E. Finkelson are granted, and Mr. Finkelson is authorized to represent Petitioner as
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`back-up counsel only in the above-listed proceedings;
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`FURTHER ORDERED that Petitioner shall continue to have a registered
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`practitioner represent it as lead counsel for the instant proceedings;
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`FURTHER ORDERED that, within ten (10) business days of the date of this
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`order, Petitioner must submit a Power of Attorney for Mr. Finkelson in accordance
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`with 37 C.F.R. § 42.10(b);
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`FURTHER ORDERED that Petitioner must file updated mandatory notices
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`identifying Mr. Finkelson as back-up counsel in accordance with 37 C.F.R.
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`§ 42.8(b)(3);
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`FURTHER ORDERED that Mr. Finkelson shall comply with the Office
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`Patent Trial Practice Guide as updated by the August 2018 Update, 83 Federal
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`Register 39,989 (Aug. 13, 2018), and the Board’s Rules of Practice for Trials, as
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`set forth in Part 42 of Title 37, Code of Federal Regulations; and
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`FURTHER ORDERED that Mr. Finkelson shall be subject to the Office’s
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`disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and the USPTO Rules of
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`Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq.
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`Case IPR2018-01585 (Patent 8,216,289 B2)
`Case IPR2018-01586 (Patent 9,723,991 B2)
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`PETITIONER:
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`Rachelle Thompson
`Rthompson @mcguirewoods.com
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`George Davis
`gdavis@mcguirewoods.com
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`PATENT OWNER:
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`Walter Renner
`Axf-ptab@fr.com
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`Stuart Nelson
`snelson@fr.com
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