UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`FRESENIUS KABI USA, LLC and FRESENIUS KABI SWISSBIOSIM GmbH
`Petitioners,
`v.
`AMGEN, INC. and AMGEN MANUFACTURING LIMITED
`Patent Owner
`______________
`
`Case IPR2019-00971
`Patent 9,856,287 B1
`
`Title: REFOLDING PROTEINS USING A CHEMICALLY CONTROLLED
`REDOX STATE
`______________
`
`PETITIONERS’ MOTION FOR PRO HAC VICE ADMISSION OF
`ROBERT V. CERWINSKI UNDER 37 C.F.R. § 42.10(c)
`
`
`
`
`
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`FRESENIUS KABI USA, LLC and FRESENIUS KABI SWISSBIOSIM GmbH
`Petitioners,
`v.
`AMGEN, INC. and AMGEN MANUFACTURING LIMITED
`Patent Owner
`______________
`
`Case IPR2019-00971
`Patent 9,856,287 B1
`
`Title: REFOLDING PROTEINS USING A CHEMICALLY CONTROLLED
`REDOX STATE
`______________
`
`PETITIONERS’ MOTION FOR PRO HAC VICE ADMISSION OF
`ROBERT V. CERWINSKI UNDER 37 C.F.R. § 42.10(c)
`
`
`
`
`
`
`
`IPR2019-00971
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`Pursuant to the Board’s “Notice of Filing Date Accorded /Defective
`
`Petition,” dated December 15, 2015 (Paper No. 3), authorizing the parties to file
`
`motions for pro hac vice admission under 37 C.F.R. § 42.10(c), Petitioners
`
`Fresenius Kabi USA, LLC and Fresenius Kabi SwissBioSIM GmBH respectfully
`
`request that the Board allow Robert V. Cerwinski to appear pro hac vice on their
`
`behalf in this proceeding. Patent Owner has stated that it will not oppose this
`
`motion.
`
`II. REASONS THE REQUESTED RELIEF SHOULD BE GRANTED
`As set forth in the Statement of Material Facts below, and as required by 37
`
`C.F.R. § 42.10(c), Petitioners have demonstrated good cause to admit Mr.
`
`Cerwinski pro hac vice in this proceeding. In particular, Petitioners’ lead counsel
`
`is a registered practitioner, and Mr. Cerwinski is an experienced litigating attorney
`
`having an established familiarity with the subject matter at issue in this proceeding.
`
`Furthermore, this motion is being filed more than twenty one days after
`
`service of the petition; includes a statement of facts showing good cause for the
`
`Board to recognize Mr. Cerwinski pro hac vice; and is being filed concurrently
`
`with Exhibit 1047, the Declaration of Robert V. Cerwinski in Support of
`
`Petitioners’ Motion for Pro Hac Vice Admission of Robert V. Cerwinski
`
`(“Cerwinski Decl.”), all in accordance with the “Order Authorizing Motion for Pro
`
`
`
`
`1
`
`
`
`IPR2019-00971
`
`Hac Vice Admission” in Unified Patents, Inc. v. Parallel Iron, LLC, IPR2013-
`
`00639, Paper 7 at 3 (P.T.A.B. Oct. 15, 2013).
`
`III. STATEMENT OF MATERIAL FACTS
`37 C.F.R. § 42.10(c) provides that “[t]he Board may recognize counsel pro
`
`1.
`
`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. Huiya Wu, lead counsel for Petitioners Fresenius Kabi USA, LLC and
`
`Fresenius Kabi SwissBioSIM GmBH in this proceeding, is a registered
`
`practitioner holding Registration No. 44,411.
`
`3. As set forth in the Cerwinski Decl., Mr. Cerwinski is an experienced
`
`litigating attorney. Specifically, Mr. Cerwinski has over 20 years of experience
`
`representing clients in patent litigations, in United States District Courts and the
`
`Court of Appeals for the Federal Circuit. Mr. Cerwinski is a member in good
`
`standing of the Bar of the New York Bar. Mr. Cerwinski has never been
`
`suspended or disbarred from practice before any court or administrative body.
`
`
`
`
`2
`
`
`
`IPR2019-00971
`
`No application of Mr. Cerwinski for admission to practice before any court or
`
`administrative body has ever been denied. No sanctions or contempt citations
`
`have been imposed against Mr. Cerwinski by any court or Administrative Body.
`
`(Cerwinski Decl., ¶¶ 2-3).
`
`4. Mr. Cerwinski also has an established familiarity with the precise subject
`
`matter at issue in this proceeding. Petitioner and Patent Owner are currently
`
`involved in IPR2019-00971 concerning U.S. Patent No. 9,856,287 (the “’287
`
`patent”). Mr. Cerwinski is counsel for Fresenius Kabi USA, LLC and Fresenius
`
`Kabi SwissBioSIM GmBH, and in the course of that representation, he has
`
`developed a strong familiarity with the ’287 patent, its prosecution history, the
`
`general subject matter to which the ’287 patent is directed, and the prior art
`
`references relied upon by both Petitioner and Patent Owner. Additionally, Mr.
`
`Cerwinski has thoroughly reviewed the Petition and accompanying Exhibits
`
`submitted in this proceeding.
`
`5. Mr. Cerwinski has attested to the each of the requirements set forth in
`
`paragraph 2(b)(i)-(viii) of the “Order Authorizing Motion for Pro Hac Vice
`
`Admission” in Case IPR2013-00639, Paper 7 at 3. (Cerwinski Decl., ¶¶ 3, 4, 6-8,
`
`9-13).
`
`IV. CONCLUSION
`
`
`
`
`3
`
`
`
`IPR2019-00971
`
`In view of the foregoing, Petitioners respectfully submit that the
`
`requirements of 37 C.F.R. § 42.10(c) have been satisfied, and requests an Order
`
`permitting Robert V. Cerwinski to appear pro hac vice on its behalf in this
`
`proceeding.
`
`Dated: August 6, 2019
`
`Respectfully submitted,
`
`
`
`/Huiya Wu/
`Huiya Wu (Reg. No. 44,411)
`Goodwin Procter LLP
`The New York Times Building
`620 Eighth Avenue
`New York, NY 10018
`Tel: 212-813-8800
`Fax: 212-355-3333
`
`Counsel for Petitioners
`
`
`
`
`4
`
`
`
`
`
`CERTIFICATION OF SERVICE
`The undersigned hereby certifies that “PETITIONERS’ MOTION FOR
`
`PRO HAC VICE ADMISSION OF ROBERT V. CERWINSKI UNDER 37 C.F.R.
`
`§ 42.10(c)” and “EXHIBIT 1047 DECLARATION OF ROBERT V. CERWINSKI
`
`IN SUPPORT OF PETITIONERS’ MOTION FOR PRO HAC VICE ADMISSION
`
`OF ROBERT V. CERWINSKI UNDER 37 C.F.R. § 42.10(c)” were served
`
`electronically via email on the following:
`
`AMGEN, INC.
`Law - Patent Operations, M/S 35-1-B
`One Amgen Center Drive
`Thousand Oaks, CA 91320-1799
`
`
`Dated: August 6, 2019
`
`Respectfully submitted,
`
`
`
`/Huiya Wu/
`Huiya Wu (Reg. No. 44,411)
`Goodwin Procter LLP
`The New York Times Building
`620 Eighth Avenue
`New York, NY 10018
`Tel: 212-813-8800
`Fax: 212-355-3333
`
`Counsel for Petitioner
`
`
`
`
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
