`571-272-7822
`
`
`
`
`
`
`
`Paper 69
`Entered: April 5, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________
`
`REGENERON PHARMACEUTICALS, INC.,
`Petitioner,
`
`v.
`
`NOVARTIS PHARMA AG,
`NOVARTIS TECHNOLOGY LLC,
`NOVARTIS PHARMACEUTICALS CORPORATION,
`Patent Owner.
`_____________________________
`
`IPR2021-00816
`Patent 9,220,631 B2
`_____________________________
`
`
`
`Before ERICA A. FRANKLIN, ROBERT L. KINDER, and JAMIE T. WISZ,
`Administrative Patent Judges.
`
`KINDER, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Patent Owner’s Motion for
`Admission Pro Hac Vice of John T. Bennett and Daniel P. Margolis
`37 C.F.R. § 42.10
`
`
`
`
`
`
`
`
`
`IPR2021-00816
`Patent 9,220,631 B2
`
`
`On March 24, 2022, Patent Owner filed a motion requesting admission pro
`hac vice of John T. Bennett and Daniel P. Margolis. See Paper 66 (“Motion”).
`Patent Owner submitted a Declaration from Mr. Bennett in support of the Motion.
`Ex. 2333. Patent Owner also submitted a Declaration from Mr. Margolis in
`support of the Motion. Ex. 2334. Patent Owner attests that Petitioner does not
`oppose the Motion. Motion 1.
`In accordance with 37 C.F.R. § 42.10(c), we may recognize counsel pro hac
`vice during a proceeding upon a showing of good cause. In authorizing a motion
`for admission pro hac vice, the Board requires the moving party to provide 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
`the proceeding. See Unified Patents, Inc. v. Parallel Iron, LLC, IPR2013-00639,
`Paper 7 (PTAB Oct. 15, 2013) (setting forth the requirements for admission pro
`hac vice).
`Based on the facts set forth in the Motion and the accompanying
`Declarations, we conclude that Mr. Bennett and Mr. Margolis have sufficient legal
`and technical qualifications to represent Patent Owner in this proceeding, that
`Mr. Bennett and Mr. Margolis have demonstrated sufficient litigation experience
`and familiarity with the subject matter of this proceeding, and that Mr. Bennett and
`Mr. Margolis meet all other requirements for admission pro hac vice. See
`Ex. 2333 ¶¶ 2–10; Ex. 2334 ¶¶ 2–10. Accordingly, Patent Owner has established
`good cause for pro hac vice admission of Mr. Bennett and Mr. Margolis.
`Mr. Bennett and Mr. Margolis both will be permitted to appear pro hac vice as
`back-up counsel only. See 37 C.F.R. § 42.10(c).
`A Power of Attorney has not been submitted for Mr. Bennett and
`Mr. Margolis. Accordingly, Patent Owner must submit a Power of Attorney for
`
`
`
`IPR2021-00816
`Patent 9,220,631 B2
`
`Mr. Bennett and Mr. Margolis 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. Bennett and Mr. Margolis as back-up counsel.
`In consideration of the foregoing, it is hereby
`ORDERED that Patent Owner’s Motion (Paper 66) for admission pro hac
`vice of John T. Bennett and Daniel P. Margolis is granted;
`FURTHER ORDERED that Patent Owner continue to have a registered
`practitioner represent it as lead counsel for the instant proceeding, and that
`Mr. Bennett and Mr. Margolis are authorized to act only as back-up counsel;
`FURTHER ORDERED that Mr. Bennett and Mr. Margolis comply with the
`Patent Trial and Appeal Board’s Consolidated Trial Practice Guide1 (84 Fed. Reg.
`64,280 (Nov. 21, 2019)), 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. Bennett and Mr. Margolis are 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. §§ 11.101–11.901;
`FURTHER ORDERED that Patent Owner shall submit, within ten (10)
`business days of the date of this order, a Power of Attorney for Mr. Bennett and
`Mr. Margolis in accordance with 37 C.F.R. § 42.10(b) in this proceeding; and
`FURTHER ORDERED that Patent Owner shall file an updated mandatory
`notice in this proceeding, within ten (10) business days of the date of this order,
`according to 37 C.F.R. § 42.8(a)–(b), providing updated information regarding
`back-up counsel.
`
`
`
`
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`
`
`IPR2021-00816
`Patent 9,220,631 B2
`
`
`FOR PETITIONER:
`
`Anish Desai
`Elizabeth Weiswasser
`Christopher Pepe
`WEIL, GOTSHAL & MANGES LLP
`anish.desai@weil.com
`elizabeth.weiswasser@weil.com
`christopher.pepe@weil.com
`
`
`
`For PATENT OWNER:
`
`Elizabeth Holland
`Nicholas Mitrokostas
`William G. James
`ALLEN & OVERY LLP
`elizabeth.holland@allenovery.com
`nicholas.mitrokostas@allenovery.com
`william.james@allenovery.com
`
`
`Linnea Cipriano
`Duncan Greenhalgh
`Joshua Weinger
`GOODWIN PROCTER LLP
`lcipriano@goodwinlaw.com
`dgreenhalgh@goodwinlaw.com
`jweinger@goodwinprocter.com
`
`
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