UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`ARADIGM CORPORATION
`Petitioner
`
`v.
`
`INSMED INCORPORATED
`Patent Owner
`
`____________
`
`
`Case PGR2017-00021
`U.S. Patent No. 9,402,845
`
`____________
`
`
`
`PETITIONER’S MOTION FOR PRO HAC VICE ADMISSION OF
`PETER H. NOH, ESQ., UNDER 37 C.F.R. § 42.10(c)
`
`
`
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`ARADIGM CORPORATION
`Petitioner
`
`v.
`
`INSMED INCORPORATED
`Patent Owner
`
`____________
`
`
`Case PGR2017-00021
`U.S. Patent No. 9,402,845
`
`____________
`
`
`
`PETITIONER’S MOTION FOR PRO HAC VICE ADMISSION OF
`PETER H. NOH, ESQ., UNDER 37 C.F.R. § 42.10(c)
`
`
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`
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`I.
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`
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`Relief Requested
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`Pursuant to 37 C.F.R. § 42.10(c), Petitioner Aradigm Corporation
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`(“Petitioner” or “Aradigm”) respectfully requests that the Patent Trial and Appeal
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`Board (“the Board”) recognize Peter H. Noh, Esq., as counsel pro hac vice on
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`behalf of Petitioner during this proceeding.
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`In an Inter Partes Review (“IPR”), the Board has discretion under 37 C.F.R.
`
`§ 42.10(c) to recognize counsel pro hac vice. 37 C.F.R. § 42.10(c) provides that:
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`The Board may recognize counsel pro hac vice during a
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`proceeding upon a showing of good cause, subject to the
`
`condition that lead counsel be a registered practitioner and to
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`any other conditions as the Board may impose. For example,
`
`where the lead counsel is a registered practitioner, a motion to
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`appear pro hac vice by counsel who is not a registered
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`practitioner may be granted upon showing that counsel is an
`
`experienced litigating attorney and has an established
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`familiarity with the subject matter at issue in the proceeding.
`
`In support of this motion, a declaration of Peter H. Noh is submitted
`
`herewith (Exhibit 1) showing that Mr. Noh satisfies the requirements for pro hac
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`vice admission as set forth in IPR2013-00639, Paper 7, dated October 15, 2013.
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`This motion is being filed no sooner than twenty-one (21) days after service
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`of the petition.
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`
`
`1
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`
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`II.
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`Statement of Facts
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`Based on the following facts, and supported by the Declaration of Peter H.
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`Noh (Exhibit 1) submitted herewith, Petitioner has established good cause for the
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`Board to recognize Mr. Noh pro hac vice in this matter:
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`1.
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`Lead counsel, Ms. Arlene L. Chow, is a registered practitioner.
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`2. Mr. Noh is a Senior Associate with the law firm Hogan Lovells U.S.
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`LLP. See Noh Declaration, ¶1.
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`3. Mr. Noh has been a litigating attorney for more than eight (8) years.
`
`See Noh Declaration, ¶2. He has been litigating patent cases during that entire
`
`time period. Id.
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`4. Mr. Noh is a member in good standing of the State Bar of New York
`
`and the State Bar of New Jersey. See Noh Declaration, ¶3.
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`5. Mr. Noh has never been suspended from, disbarred from, or denied
`
`admission to practice before any court or administrative body. See Noh
`
`Declaration, ¶¶4-5.
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`6.
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`No sanctions or contempt citations have ever been imposed against
`
`Mr. Noh by any court or administrative body. See Noh Declaration, ¶6.
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`7. Mr. Noh 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 37 C.F.R. See Noh Declaration, ¶7.
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`2
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`
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`
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`8. Mr. Noh understands that he will be subject to the USPTO Rules of
`
`Professional Conduct set forth in 37 C.F.R. § 11.101 et seq. and disciplinary
`
`jurisdiction under 37 C.F.R. § 11.19(a). See Noh Declaration, ¶8.
`
`9.
`
`In the past three (3) years, Mr. Noh has applied to appear pro hac vice
`
`before the United States Patent and Trademark Office in IPR2016-01542, which is
`
`pending before the Board. See Noh Declaration, ¶9. Prior to that, Mr. Noh
`
`appeared pro hac vice in the following proceedings: IPR2014-00651, IPR2014-
`
`00652, IPR2014-00653, IPR2014-00654, IPR2014-00655, and IPR2014-00656.
`
`Id.
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`10. Mr. Noh has reviewed the patent at issue in this proceeding, U.S.
`
`Patent No. 9,402,845, and was intimately involved in the preparation of the
`
`Petition. See Noh Declaration, ¶10. He has also participated in the strategic
`
`discussions with co-counsel. Id. As such Mr. Noh has gained a familiarity and
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`detailed understanding of the subject matter at issue here.
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`III. Good Cause Exists for Pro Hac Vice Admission
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`In accordance with 37 C.F.R. § 42.10(c), the Board may recognize counsel
`
`pro hac vice during a proceeding upon showing of good cause, subject to the
`
`condition that lead counsel be a registered practitioner and to any other condition
`
`the Board may impose. 37 C.F.R. § 42.10(c). Petitioner’s lead counsel, Ms.
`
`Arlene L. Chow, is a registered practitioner. Furthermore, as supported by his
`
`3
`
`
`
`
`
`Declaration, for the past eight (8) years, Mr. Noh has been litigating patent cases.
`
`Mr. Noh also has developed an established familiarity with the subject matter at
`
`issue in this proceeding. He has reviewed the patent at issue in this proceeding,
`
`and was intimately involved in the preparation of the Petition. He has also
`
`participated in strategic discussions with Aradigm’s counsel. Given his knowledge
`
`of the subject matter at issue in this proceeding, Aradigm would benefit from Mr.
`
`Noh’s expertise and involvement in this proceeding.
`
`III. Conclusion
`
`Petitioner respectfully submits that, in light of the foregoing, there is good
`
`cause for the Board to recognize Mr. Noh as counsel pro hac vice for Petitioner
`
`during this proceeding. This Motion for Pro Hac Vice Admission is accompanied
`
`by a Declaration of Peter H. Noh, Esq. (Exhibit 1).
`
`
`Dated: June 30, 2017
`
`
`
`
`
`Respectfully submitted,
`
` /
`
` Arlene Chow /
`Arlene L. Chow
`Registration No. 47,489
`Peter H. Noh
`(pro hac vice pending)
`HOGAN LOVELLS US LLP
`875 Third Avenue
`New York, New York 10022
`Tel: (212) 918-3000
`Fax: (212) 918-3100
`
`Counsel for Petitioner Aradigm Corporation
`
`
`4
`
`
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`
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`
`
`EXHIBIT 1
`EXHIBIT 1
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`ARADIGM CORPORATION
`Petitioner
`
`v.
`
`INSMED INCORPORATED
`Patent Owner
`
`____________
`
`
`Case PGR2017-00021
`U.S. Patent No. 9,402,845
`
`____________
`
`
`
`DECLARATION OF PETER H. NOH, ESQ., IN SUPPORT OF
`PETITIONER’S MOTION FOR PRO HAC VICE ADMISSION OF
`PETER H. NOH, ESQ., UNDER 37 C.F.R. § 42.10(c)
`
`
`
`
`
`
`
`I, Peter H. Noh, being duly sworn and upon oath, hereby attest to the
`
`following:
`
`1.
`
`I am an attorney-at-law and a Senior Associate with the law firm
`
`Hogan Lovells U.S. LLP.
`
`2.
`
`I have been a litigating attorney for more than eight (8) years. I
`
`have been litigating patent cases during that entire time period.
`
`3.
`
`I am a member in good standing of the State Bar of New York and the
`
`State Bar of New Jersey.
`
`4.
`
`I have never been suspended or disbarred from practice before any
`
`court or administrative body.
`
`5.
`
`I have never been denied admission to practice before any court or
`
`administrative body.
`
`6.
`
`No sanctions or contempt citations have ever been imposed against
`
`me by any court or administrative body.
`
`7.
`
`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 37
`
`C.F.R.
`
`8.
`
`I understand that I will be subject to the USPTO Rules of Professional
`
`Conduct set forth in 37 C.F.R. § 11.101 et seq. and disciplinary jurisdiction under
`
`37 C.F.R. § 11.19(a).
`
`1
`
`
`
`
`
`9.
`
`In the past three (3) years, I have applied to appear pro hac vice
`
`before the United States Patent and Trademark Office in IPR2016-01542, which is
`
`pending before the Board. Prior to that, I have appeared pro hac vice in the
`
`following proceedings: IPR2014-00651; IPR2014-00652; IPR2014-00653;
`
`IPR2014-00654; IPR2014-00655; and IPR2014-00656.
`
`10.
`
`I have an established familiarity with the subject matter at issue in this
`
`proceeding. I have reviewed the patent at issue in this proceeding, U.S. Patent No.
`
`9,402,845, and was intimately involved in the preparation of the Petition. I have
`
`also participated in the strategic decisions with co-counsel.
`
`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 so made are punishable by fine or imprisonment, or both
`
`under section 1001 of Title 18 of the United States Code and that such willful false
`
`statements may jeopardize the validity of U.S. Patent No. 9,402,845.
`
`
`
`
`
`
`2
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`
`
`Executed on June 30, 2017, in New York, New York.
`
`/@ @
`
`Peter H. Noh
`
`HOGAN LOVELLS US LLP
`
`875 Third Avenue
`
`New York, New York 10022
`Telephone: (212) 918-3000
`Fax: (212) 918-3100
`
`Email: peter.noh@hoganlovells.com
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on June 30,
`
`2017, a true and correct copy of the foregoing PETITIONER’S MOTION FOR
`
`PRO HAC VICE ADMISSION OF PETER H. NOH, ESQ. UNDER 37 C.F.R. §
`
`42.10(c), along with all exhibits supporting and filed with that motion, was served
`
`by email on the following counsel of record for Insmed Incorporated:
`
`
`
`Bonnie Weiss McLeod
`Michael Tuscan
`Adam Pivovar
`Sandhya Deo
`Jason Valentine
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., N.W., Ste. 700
`Washington, D.C. 20004
`
`Email:
`
`bweissmcleod@cooley.com
`mtuscan@cooley.com
`apivovar@cooley.com
`sdeo@cooley.com
`jvalentine@cooley.com
`
`
`
` /
`
` Arlene Chow /
`Arlene L. Chow
`Registration No. 47,489
`
`
`
`
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