Trials@uspto.gov
`571-272-7822
`
`Paper 30
`Entered: January 5, 2022
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`REGENERON PHARMACEUTICALS, INC.,
`Petitioner,
`
`v.
`
`NOVARTIS PHARMA AG, NOVARTIS TECHOLOGY LLC,
`NOVARTIS PHARMACEUTICALS CORPORATION,
`Patent Owner.
`____________
`
`IPR2021-00816
`Patent 9,220,631 B2
`____________
`
`
`
`Before ERICA A. FRANKLIN, ROBERT L. KINDER, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`KINDER, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Patent Owner’s Motion for Admission
`Pro Hac Vice of Nicholas K. Mitrokostas
`37 C.F.R. § 42.10
`
`
`
`
`571-272-7822
`
`Paper 30
`Entered: January 5, 2022
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`REGENERON PHARMACEUTICALS, INC.,
`Petitioner,
`
`v.
`
`NOVARTIS PHARMA AG, NOVARTIS TECHOLOGY LLC,
`NOVARTIS PHARMACEUTICALS CORPORATION,
`Patent Owner.
`____________
`
`IPR2021-00816
`Patent 9,220,631 B2
`____________
`
`
`
`Before ERICA A. FRANKLIN, ROBERT L. KINDER, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`KINDER, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Patent Owner’s Motion for Admission
`Pro Hac Vice of Nicholas K. Mitrokostas
`37 C.F.R. § 42.10
`
`
`
`
`
`IPR2021-00816
`Patent 9,220,631 B2
`
`
`On December 22, 2021, Patent Owner filed a Motion for Admission
`Pro Hac Vice of Nicholas K. Mitrokostas. Paper 25 (“Motion”). Patent
`Owner also filed a Declaration of Nicholas K. Mitrokostas in support of the
`Motion. Ex. 2098 (“Declaration”). Patent Owner attests that Petitioner does
`not oppose the Motion. Paper 25, 1. For the reasons provided below, Patent
`Owner’s Motion is granted.
`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. In its notice
`authorizing motions for pro hac vice admission, the Board requires a
`statement of facts showing there is good cause for the Board to recognize
`counsel pro hac vice and an affidavit or declaration of the individual seeking
`to appear in this proceeding. See Paper 3, 2 (citing Unified Patents, Inc. v.
`Parallel Iron, LLC, IPR2013-00639, Paper 7 (PTAB Oct. 15, 2013)
`(representative “Order – Authorizing Motion for Pro Hac Vice
`Admission”)).
`Based on the facts set forth in the Motion and the accompanying
`Declaration,1 we conclude that Mr. Mitrokostas has sufficient legal and
`
`
`1 Unified Patents indicates that “A motion for pro hac vice admission must:
`. . . Be accompanied by an affidavit or declaration of the individual seeking
`to appear attesting to the following: . . . All other proceedings before the
`Office for which the individual has applied to appear pro hac vice in the last
`three (3) years.” See Unified Patents, Paper 7 at 3. Although the
`Declaration identifies some proceedings in which Mr. Mitrokostas “ha[s]
`successfully applied to appear pro hac vice,” the Declaration fails to indicate
`whether those comprise all proceedings before the Office for which Mr.
`Mitrokostas has applied to appear pro hac vice in the last three years. See
`Ex. 2098 ¶ 4. For the purposes of this Order, we deem this harmless error.
`2
`
`
`
`
`
`IPR2021-00816
`Patent 9,220,631 B2
`
`technical qualifications to represent Patent Owner in this proceeding, that
`Mr. Mitrokostas has demonstrated sufficient familiarity with the subject
`matter of this proceeding, that Mr. Mitrokostas meets all other requirements
`for admission pro hac vice, and that Patent Owner’s intent to be represented
`by counsel with litigation experience is warranted. Accordingly, Patent
`Owner has established good cause for pro hac vice admission of Mr.
`Mitrokostas. Mr. Mitrokostas will be permitted to serve as back-up counsel
`only. See 37 C.F.R. § 42.10(c).
`A Power of Attorney has not been submitted for Mr. Mitrokostas.
`Accordingly, Patent Owner must submit a Power of Attorney for
`Mr. Mitrokostas in accordance with 37 C.F.R. § 42.10(b), and must update
`its Mandatory Notices as required by 37 C.F.R. § 42.8(b)(3), to identify Mr.
`Mitrokostas as back-up counsel.
`Accordingly, it is:
`ORDERED that Patent Owner’s Motion for pro hac vice admission of
`Nicholas K. Mitrokostas is granted;
`FURTHER ORDERED that Patent Owner is to continue to have a
`registered practitioner represent it as lead counsel for this proceeding;
`FURTHER ORDERED that Mr. Mitrokostas is authorized to
`represent Patent Owner as back-up counsel only in this proceeding;
`FURTHER ORDERED that Mr. Mitrokostas is to comply with the
`Consolidated Trial Practice Guide2 (84 Fed. Reg. 64,280 (Nov. 21, 2019)),
`
`
`If Mr. Mitrokostas has applied to appear pro hac vice in additional
`proceedings in the last three years, he shall notify us promptly.
`2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`3
`
`
`
`
`
`IPR2021-00816
`Patent 9,220,631 B2
`
`and the Board’s Rules of Practice for Trials, as set forth in Part 42 of Title
`37, Code of Federal Regulations;
`FURTHER ORDERED that Mr. Mitrokostas shall be subject to the
`Office’s disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and the
`USPTO Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et.
`seq.;
`
`FURTHER ORDERED that, within ten (10) business days of the date
`of this Order, Patent Owner must submit a Power of Attorney for
`Mr. Mitrokostas in this proceeding in accordance with 37 C.F.R. § 42.10(b);
`and
`
`FURTHER ORDERED that, within ten (10) business days of the date
`of this Order, Patent Owner shall file an updated Mandatory Notice in this
`proceeding in accordance with 37 C.F.R. § 42.8(b)(3), identifying
`Mr. Mitrokostas as back-up counsel.
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`IPR2021-00816
`Patent 9,220,631 B2
`
`For PETITIONER:
`
`Elizabeth Weiswasser
`Anish Desai
`Brian Ferguson
`Christopher Pepe
`WEIL, GOTSHAL & MANGES LLP
`elizabeth.weiswasser@weil.com
`anish.desai@weil.com
`brian.ferguson@weil.com
`christopher.pepe@weil.com
`
`
`For PATENT OWNER:
`
`Elizabeth Holland
`William James
`Linnea Cipriano
`Joshua Weinger
`GOODWIN PROCTER LLP
`eholland@goodwinprocter.com
`wjames@goodwinlaw.com
`lcipriano@goodwinlaw.com
`jweinger@goodwinprocter.com
`
`
`
`5
`
`
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