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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`————————————————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`————————————————
`
`REGENERON PHARMACEUTICALS, INC.,
`Petitioner,
`
`v.
`
`NOVARTIS VACCINES AND DIAGNOSTICS, INC., GRIFOLS WORLDWIDE
`OPERATIONS LIMITED,
`Patent Owners.
`
`————————————————
`
`Case IPR2019-01086
`Patent 5,688,688
`
`————————————————
`
`
`PATENT OWNERS’ UNOPPOSED MOTION FOR
`PRO HAC VICE ADMISSION OF WILLIAM A. RAKOCZY
`PURSUANT TO 37 C.F.R. § 42.10(c)
`
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`I.
`
`RELIEF REQUESTED.
`
`Pursuant to 37 C.F.R. § 42.10(c) and in accordance with the Board’s
`
`“Order—Authorizing Motion for Pro Hac Vice Admission” in Case IPR2013-
`
`00639, Paper 7, entered October 15, 2013, incorporated by Paper No. 3 in the
`
`present case, Patent Owners Novartis Vaccines and Diagnostics, Inc. and Grifols
`
`Worldwide Operations Limited (“Patent Owners”) request that the Board admit
`
`William A. Rakoczy pro hac vice in this proceeding. Counsel for Patent Owners
`
`have met and conferred with counsel for Petitioner, and Petitioner does not oppose
`
`this motion.
`
`II.
`
`STATEMENT OF FACTS.
`
`Pursuant to 37 C.F.R. § 42.10(c), the Board
`
`may recognize counsel pro 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
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`other conditions as the Board may impose. For example,
`
`where the lead counsel is a registered practitioner, a
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`motion to appear pro hac vice by counsel who is not a
`
`registered practitioner may be granted upon showing that
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`counsel is an experienced litigating attorney and has an
`
`established familiarity with the subject matter at issue in
`
`the proceeding.
`
`37 C.F.R. § 42.10(c). The facts herein, supported by the attached Declaration of
`
`
`
`1
`
`
`
`William A. Rakoczy in Support of Patent Owners’ Unopposed Motion for Pro Hac
`
`Vice Admission in IPR2019-01086 (Exhibit 1) (“Rakoczy Decl.”), establish good
`
`cause for the Board to recognize Mr. Rakoczy pro hac vice in this proceeding.
`
`1.
`
`Lead counsel, Deanne M. Mazzochi, is a registered practitioner before
`
`the USPTO, having USPTO Registration No. 50,158.
`
`2.
`
`Back-up counsel, Paul J. Molino, is a registered practitioner before the
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`USPTO, having USPTO Registration No. 45,350.
`
`3.
`
`Back-up counsel, Neil B. McLaughlin, is a registered practitioner
`
`before the USPTO, having USPTO Registration No. 70,810.
`
`4.
`
`Back-up counsel, Matthew V. Anderson, is a registered practitioner
`
`before the USPTO, having USPTO Registration No. 64,963.
`
`5. William A. Rakoczy is an experienced litigating attorney. Mr.
`
`Rakoczy has been a litigating attorney for more than seventeen (17) years.
`
`(Rakoczy Decl. ¶ 1). Mr. Rakoczy has been litigating patent cases for at least
`
`seventeen (17) years. (Id. ¶ 2). Mr. Rakoczy is a member in good standing with
`
`the Illinois State Bar and the District of Columbia Bar, with no suspensions or
`
`disbarments from practice, nor any application for admission to practice denied,
`
`nor any sanctions or contempt citations by any court of administrative body. (Id.
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`¶¶ 3-6). Mr. Rakoczy is admitted to practice in the United States Supreme Court,
`
`United States Court of Appeals for the Federal Circuit, United States Court of
`
`
`
`2
`
`
`
`Appeals for the District of Columbia Circuit, United States Court of Appeals for
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`the Third Circuit, United States Court of Appeals for the Fourth Circuit, United
`
`States Court of Appeals for the Seventh Circuit, and United States District Court
`
`for the Northern District of Illinois, Western District of Wisconsin, District of
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`Columbia, Western District of Michigan, and District of Colorado. (Id. ¶ 3).
`
`6. Mr. Rakoczy has familiarity with the subject matter at issue in this
`
`proceeding and, more specifically, he is familiar with the patent-at-issue in this
`
`proceeding—U.S. Patent No. 5,688,688 (“the ‘688 patent”). (Rakoczy Decl. ¶ 7).
`
`Mr. Rakoczy is advising Patent Owners on patent matters relating to the subject
`
`matter claimed in the patent-at-issue in this proceeding. (Id.). Mr. Rakoczy has
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`been actively involved in the strategy and drafting of Patent Owner’s Preliminary
`
`Response to Regeneron Pharmaceuticals, Inc.’s Petition for Inter Partes Review
`
`and, as a result, Mr. Rakoczy has become intimately familiar with the subject
`
`matter of the ‘688 patent and the prior art raised therein. (Id.). Additionally, Mr.
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`Rakoczy has been actively involved in related Case No. 1:18-cv-02434-DLC
`
`(S.D.N.Y.), which also involves the ‘688 patent.
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`7. Mr. Rakoczy has read and will comply with the Office Patent Trial
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`Practice Guide and the Board’s Rules of Practice for Trials set forth in Part 42 of
`
`the C.F.R., and he agrees to be subject to the USPTO Rules of Professional
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`Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and to disciplinary jurisdiction
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`
`
`3
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`
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`under 37 C.F.R. § 11.19(a). (Rakoczy Decl. ¶¶ 8-9).
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`8.
`
`In the past three (3) years, Mr. Rakoczy has applied to appear pro hac
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`vice in three (3) inter partes review proceedings: Lupin Limited v. Janssen R&D
`
`Ireland, Case IPR2015-01030, Mylan Pharmaceuticals Inc. v. Genentech, Inc. &
`
`City of Hope, Case IPR2016-00710, and Novo Nordisk Inc. v. Nektar Therapeutics,
`
`Case IPR2016-01384. (Rakoczy Decl. ¶ 10).
`
`III. ANALYSIS.
`
`The facts contained in the Statement of Facts above, and contained in the
`
`Rakoczy Declaration, establish that there is good cause to admit Mr. Rakoczy pro
`
`hac vice in this proceeding under 37 C.F.R. § 42.10(c). Lead and back-up counsel
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`are registered practitioners, Mr. Rakoczy is an experienced litigating attorney, and
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`Mr. Rakoczy has an established familiarity with the subject matter at issue in the
`
`proceeding. Admission of Mr. Rakoczy will further enable Patent Owners to be
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`effectively and efficiently represented before the Board in this proceeding. Lead
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`and back-up counsel will ensure that Mr. Rakoczy follows the rules as set out by
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`the Board.
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`IV. CONCLUSION.
`
`For the foregoing reasons, Patent Owners respectfully request that the Board
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`admit William A. Rakoczy pro hac vice in this proceeding.
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`
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`
`
`4
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`
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`Dated: June 6, 2019
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`
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`Respectfully submitted,
`
` /s/Deanne M. Mazzochi/
` Deanne M. Mazzochi (Reg. No. 50,158)
`dmazzochi@rmmslegal.com
`RAKOCZY MOLINO MAZZOCHI SIWIK LLP
`6 West Hubbard Street, Suite 500
`Chicago, Illinois 60654
` Telephone: (312) 222-6305
`Facsimile: (312) 222-6325
`
`Attorney for Novartis Vaccines and
`Diagnostics, Inc. and Grifols Worldwide
`Operations Limited
`
`
`
`5
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true and correct copy of the
`
`foregoing Patent Owners’ Unopposed Motion for Pro Hac Vice Admission of
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`William A. Rakoczy pursuant to 37 C.F.R. § 42.10(c) and accompanying exhibit
`
`(Exhibit 1) was served on counsel for Regeneron Pharmaceuticals, Inc., via
`
`electronic mail by agreement of the parties, on the following counsel of record
`
`for Petitioner:
`
`
`
`
`
`
`
`
`Irena Royzman
`Patterson Belknap Webb & Tyler LLP
`1133 Avenue of the Americas
`New York, NY 10036
`Email: iroyzman@pbwt.com
`Reg. No. 73,354
`
`
`
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`
` Dated: June 6, 2019
`
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`
` /s/Deanne M. Mazzochi/
`Deanne M. Mazzochi (Reg. No. 50,158)
`dmazzochi@rmmslegal.com
`RAKOCZY MOLINO MAZZOCHI SIWIK LLP
`6 West Hubbard Street, Suite 500
`Chicago, Illinois 60654
`Telephone: (312) 222-6305
`Facsimile: (312) 222-6325
`
`
`
`
`
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`
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`
`
`
`
`Exhibit 1
`to Patent Owners’ Unopposed Motion for Pro
`Hac Vice Admission of William A. Rakoczy
`Pursuant to 37 C.F.R. § 42.10(c)
`
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`————————————————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`————————————————
`
`REGENERON PHARMACEUTICALS, INC.,
`Petitioner,
`
`v.
`
`NOVARTIS VACCINES AND DIAGNOSTICS, INC., GRIFOLS WORLDWIDE
`OPERATIONS LIMITED,
`Patent Owners.
`
`————————————————
`
`Case IPR2019-01086
`Patent 5,688,688
`
`————————————————
`
`
`DECLARATION OF WILLIAM A. RAKOCZY IN SUPPORT OF
`PATENT OWNERS’ UNOPPOSED MOTION
`FOR PRO HAC VICE ADMISSION IN IPR2019-01086
`
`
`
`I, William A. Rakoczy, declare as follows:
`
`1.
`
`I am an experienced litigating attorney with more than seventeen (17)
`
`years of experience.
`
`2.
`
`3.
`
`I have been litigating patent cases for at least seventeen (17) years.
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`I am a member in good standing of the Illinois State Bar and the
`
`District of Columbia Bar and am admitted to practice in the United States Supreme
`
`Court, United States Court of Appeals for the Federal Circuit, United States Court
`
`of Appeals for the District of Columbia Circuit, United States Court of Appeals for
`
`the Third Circuit, United States Court of Appeals for the Fourth Circuit, United
`
`States Court of Appeals for the Seventh Circuit, and the United States District
`
`Court for the Northern District of Illinois, Western District of Wisconsin, District
`
`of Columbia, Western District of Michigan, and District of Colorado.
`
`4.
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`I have never been suspended or disbarred from practice before any
`
`court or administrative body.
`
`5.
`
`I have never had an application for admission to practice before any
`
`court or administrative body denied.
`
`6.
`
`I have had no sanctions or contempt citations imposed against me by
`
`any court or administrative body.
`
`7.
`
`I am familiar with the subject matter at issue in this proceeding.
`
`Specifically, I am familiar with the patent-at-issue in this proceeding—U.S. Patent
`
`
`
`1
`
`
`
`No. 5,688,688 (“the ‘688 patent”). I am advising Patent Owners on patent matters
`
`relating to the subject matter claimed in the ‘688 patent and involved in the
`
`strategy and drafting of Patent Owners’ Preliminary Response to Regeneron
`
`Pharmaceuticals, Inc.’s Petition for Inter Partes Review, including the prior art
`
`raised therein. Additionally, I have been actively involved in related Case No.
`
`1:18-cv-02434-DLC in the United States District Court for the Southern District of
`
`New York, which also involves the ‘688 patent.
`
`8.
`
`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 the C.F.R.
`
`9.
`
`I agree to be subject to the USPTO Rules of Professional Conduct set
`
`forth in 37 C.F.R. §§ 11.101 et seq. and to disciplinary jurisdiction under 37 C.F.R.
`
`§11.19(a).
`
`10.
`
`In the last three (3) years, I have applied to appear pro hac vice in
`
`three (3) inter partes review proceedings, Lupin Limited v. Janssen R&D Ireland,
`
`Case IPR2015-01030, Mylan Pharmaceuticals Inc. v. Genentech, Inc. & City of
`
`Hope, Case IPR2016-00710, and Novo Nordisk Inc. v. Nektar Therapeutics, Case
`
`IPR2016-01384.
`
`11.
`
`I hereby declare that all statements made herein of my own
`
`knowledge are true and that all statements made on information and belief are
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`believed to be true; and further that these statements are made with the knowledge
`
`
`
`2
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`
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`that willful false statements and the like are punishable by fine or imprisonment, or
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`both, under Section 1001 of Title 18 of the United States Code and that such
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`willful false statements may jeopardize the validity of the ‘688 patent.
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`Dated: June 6, 2019
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` /s/William A. Rakoczy/
`William A. Rakoczy
`
`
`wrakoczy@rmmslegal.com
`RAKOCZY MOLINO MAZZOCHI SIWIK LLP
`6 West Hubbard Street, Suite 500
`Chicago, IL 60654
`(312) 222-6301 (telephone)
`(312) 222-6321 (facsimile)
`
`3
`
`
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