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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 HEINZ J. SALMEN
`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 “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 Heinz J.
`
`Salmen 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
`
`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.
`
`37 C.F.R. § 42.10(c). The facts herein, supported by the attached Declaration of
`
`Heinz J. Salmen in Support of Patent Owners’ Unopposed Motion for Pro Hac
`
`
`
`1
`
`
`
`Vice Admission in IPR2019-01086 (Exhibit 1) (“Salmen Decl.”), establish good
`
`cause for the Board to recognize Mr. Salmen 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
`
`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.
`
`Heinz J. Salmen is an experienced litigating attorney. Mr. Salmen has
`
`been a litigating attorney for over thirteen (13) years. (Salmen Decl. ¶ 1). Mr.
`
`Salmen has been litigating patent cases for over thirteen (13) years. (Id. ¶ 2). Mr.
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`Salmen is a member in good standing with the Illinois State 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 or
`
`administrative body. (Id. ¶¶ 3-6). Mr. Salmen is admitted to practice in the United
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`States Court of Appeals for the Federal Circuit and the United States District Court
`
`for the Northern District of Illinois. (Id. ¶ 3).
`
`6. Mr. Salmen has familiarity with the subject matter at issue in this
`
`
`
`2
`
`
`
`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”). (Salmen Decl. ¶ 7).
`
`Mr. Salmen is advising Patent Owners on patent matters relating to the subject
`
`matter claimed in the patent-at-issue in this proceeding. (Id.). Mr. Salmen has
`
`been actively involved in the strategy and drafting of Patent Owners’ Preliminary
`
`Response to Regeneron Pharmaceuticals, Inc.’s Petition for Inter Partes Review
`
`and, as a result, Mr. Salmen has become intimately familiar with the subject matter
`
`of the ‘688 patent and the prior art raised therein. (Id.). Additionally, Mr. Salmen
`
`has been actively involved in related Case No. 1:18-cv-02434-DLC (S.D.N.Y.),
`
`which also involves the ‘688 patent.
`
`7. Mr. Salmen has 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., and he agrees 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). (Salmen Decl. ¶¶ 8-9).
`
`8.
`
`In the last three (3) years, Mr. Salmen has applied, and was admitted,
`
`to appear pro hac vice in Novo Nordisk Inc. v. Nektar Therapeutics, Case
`
`IPR2016-01384. (Salmen Decl. ¶ 10).
`
`III. ANALYSIS.
`
`The facts contained in the Statement of Facts above, and contained in the
`
`
`
`3
`
`
`
`Salmen Declaration, establish that there is good cause to admit Mr. Salmen pro hac
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`vice in this proceeding under 37 C.F.R. § 42.10(c). Lead and back-up counsel are
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`registered practitioners, Mr. Salmen is an experienced litigating attorney, and Mr.
`
`Salmen has an established familiarity with the subject matter at issue in the
`
`proceeding, and in other matters relating to the same subject areas. Lead and back-
`
`up counsel will ensure that Mr. Salmen follows the rules as set out by the Board.
`
`IV. CONCLUSION.
`
`For the foregoing reasons, Patent Owners respectfully request that the Board
`
`admit Heinz J. Salmen pro hac vice in this proceeding.
`
`
`
`Dated: June 6, 2019
`
`
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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
`
`4
`
`
`
`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
`
`Heinz J. Salmen 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
`
`
`
`
`
`
`
`
`
`
`
`
`Exhibit 1
`to Patent Owners’ Unopposed Motion for Pro
`Hac Vice Admission of Heinz J. Salmen
`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 HEINZ J. SALMEN IN SUPPORT OF
`PATENT OWNERS’ UNOPPOSED MOTION
`FOR PRO HAC VICE ADMISSION IN IPR2019-01086
`
`
`
`I, Heinz J. Salmen, declare as follows:
`
`1.
`
`I am an experienced litigating attorney with over thirteen (13) years of
`
`experience.
`
`2.
`
`3.
`
`I have been litigating patent cases for over thirteen (13) years.
`
`I am a member in good standing of the Illinois State Bar and am
`
`admitted to practice in the United States Court of Appeals for the Federal Circuit
`
`and the United States District Court for the Northern District of Illinois.
`
`4.
`
`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
`
`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
`
`
`
`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, and was admitted, to appear
`
`pro hac vice in 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
`
`believed to be true; and further that these statements are made with the knowledge
`
`that willful false statements and the like are punishable by fine or imprisonment, or
`
`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.
`
`
`Dated: June 6, 2019
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` /s/Heinz J. Salmen/
`Heinz J. Salmen
`
`
`hsalmen@rmmslegal.com
`RAKOCZY MOLINO MAZZOCHI SIWIK LLP
`6 West Hubbard Street, Suite 500
`Chicago, IL 60654
`(312) 222-7504 (telephone)
`(312) 222-7524 (facsimile)
`
`2
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`
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