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`Filed: November 20, 2018
`Paper No. 10
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`
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`Filed On Behalf Of:
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`Alnylam Pharmaceuticals, Inc.
`
`By:
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`Scott K. Reed
`sreed@venable.com
`212-218-2100
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`ALNYLAM PHARMACEUTICALS, INC.,
`Petitioner,
`v.
`SILENCE THERAPEUTICS GMBH,
`Patent Owner.
`________________
`
`Case PGR2018-00075
`U.S. Patent No. 9,783,802
`________________
`
`
`
`PETITIONER’S MOTION FOR PRO HAC VICE ADMISSION OF
`ROBERT S. SCHWARTZ UNDER 37 C.F.R. § 42.10
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`I.
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`RELIEF
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`Pursuant to 37 C.F.R. § 42.10(c), Petitioner Alnylam Pharmaceuticals, Inc.
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`(“Petitioner”) respectfully requests the pro hac vice admission of Robert S.
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`Schwartz in this proceeding.
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`This motion is being filed more than twenty one (21) days after service of
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`the Petition.
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`II. THE GOVERNING LAW, RULES, AND PRECEDENT
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`37 C.F.R. § 42.10(c) concerns motions for pro hac vice admission and states
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`as follows:
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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
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`condition that lead counsel be a registered practitioner and
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`to any other conditions as the Board may impose. For
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`example, where the lead counsel is a registered
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`practitioner, a motion to appear pro hac vice by counsel
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`who is not a registered practitioner may be granted upon
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`showing that counsel is an experienced litigating attorney
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`and has an established familiarity with the subject matter at
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`issue in the proceeding.
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`1
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`The Board has stated that motions for pro hac vice admission under 37
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`C.F.R. § 42.10(c) should be filed in accordance with the “Order – Authorizing
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`Motion for Pro Hac Vice Admission” entered in Case IPR2013-00639 (Paper 7)
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`(Representative Opinion).
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`In that Order, the Board stated that motions for pro hac vice admission must
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`“[c]ontain a statement of facts showing there is good cause for the Board to
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`recognize counsel pro hac vice during the proceeding,” and must “[b]e
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`accompanied by an affidavit or declaration of the individual seeking to appear
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`attesting to the following:
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`i. Membership in good standing of the Bar of at least one State
`
`or the District of Columbia;
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`ii. No suspensions or disbarments from practice before any
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`court or administrative body;
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`iii. No application for admission to practice before any court or
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`administrative body ever denied;
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`iv. No sanctions or contempt citations imposed by any court or
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`administrative body;
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`v.
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`The individual seeking to appear has read and will comply
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`with the Office Patent Trial Practice Guide and the Board’s
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`Rules of Practice for Trials set forth in part 42 of 37 C.F.R.;
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`
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`2
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`
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`vi.
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`The individual will be subject to the USPTO Rules of
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`Professional Conduct set forth in 37 C.F.R. §§ 11.101 et. seq.
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`and disciplinary jurisdiction under 37 C.F.R. § 11.19(a);
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`vii. All other proceedings before the Office for which the
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`individual has applied to appear pro hac vice in the last three
`
`(3) years; and
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`viii.
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`Familiarity with the subject matter at issue in the
`
`proceeding.”
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`III. STATEMENT OF MATERIAL FACTS
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`Based on the following facts, which are supported by the Declaration of
`
`Robert S. Schwartz (Exh. 1085) filed concurrently with this motion, Petitioner
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`requests that Robert S. Schwartz be admitted pro hac vice in this proceeding:
`
`1.
`
`Petitioner’s lead counsel, Scott K. Reed, is a registered practitioner
`
`(Reg. No. 32,433).
`
`2. Mr. Schwartz is a partner at the law firm of Venable LLP. (Exh. 1085
`
`at ¶ 3.)
`
`3. Mr. Schwartz is an experienced patent litigation attorney. Mr.
`
`Schwartz has been a patent litigation attorney for almost 14 years. (Id.
`
`at ¶ 4.) Mr. Schwartz has been litigating patent cases during this entire
`
`time period and has been involved in numerous cases involving patent
`
`
`
`3
`
`
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`validity and infringement in District Courts across the country. (Id.)
`
`He has extensive experience in bench trials. (Id.)
`
`4. Mr. Schwartz is a member in good standing of the bar of the State of
`
`New York. He is also admitted to the bars of the United States District
`
`Courts for the Southern and Western Districts of New York, and
`
`United States Court of Appeals for the Federal Circuit. (Id. at ¶ 5.)
`
`5. Mr. Schwartz has never been suspended or disbarred from practice
`
`before any court or administrative body. (Id.)
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`6. No application of Mr. Schwartz for admission to practice before any
`
`court or administrative body has ever been denied. (Id. at ¶ 6.)
`
`7. No sanctions or contempt citations have ever been imposed against
`
`Mr. Schwartz by any court or administrative body. (Id. at ¶ 7.)
`
`8. Mr. Schwartz has read and will comply with the Office Patent Trial
`
`Practice Guide and the Board’s Rules of Practice for Trials set forth in
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`part 42 of 37 C.F.R. (Id. at ¶ 8.)
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`9. Mr. Schwartz understands that he will be subject to the Office’s Rules
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`of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and
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`disciplinary jurisdiction under 37 C.F.R. § 11.19(a). (Id. at ¶ 9.)
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`10.
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` Mr. Schwartz has applied to appear and was admitted pro hac vice in
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`eight other proceedings before the Office in the last three (3) years:
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`
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`4
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`
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`IPR2017-01712, IPR2017-01753, IPR2017-02005, IPR2018-00291,
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`IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-
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`00797. (Id. at ¶ 10.)
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`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION OF
`MR. SCHWARTZ IN THIS PROCEEDING
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`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. 37 C.F.R.
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`§ 42.10(c). Petitioner’s lead counsel, Scott K. Reed, is a registered practitioner.
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`Based on the facts set forth in this motion, as supported by Mr. Schwartz’s
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`Declaration (Exh. 1085), there is good cause to admit Mr. Schwartz pro hac vice in
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`this proceeding.
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`Mr. Schwartz has an established familiarity with the subject matter at issue
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`in this proceeding. (Exh. 1085 at ¶¶ 11-13.) He has been involved consistently and
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`substantively in this matter since its inception in July 2018. (Id. at ¶ 11.)
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`Additionally, Mr. Schwartz has engaged in extensive strategic and substantive
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`discussions regarding this proceeding with Scott K. Reed, who is the lead counsel
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`for Petitioner; Prajakta A. Sonalker, who is designated as back-up counsel for
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`Petitioner; and Ha Kung Wong and Melinda R. Roberts, who are concurrently
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`seeking pro hac vice admission to appear in this proceeding. (Id. at ¶ 12.) Mr.
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`
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`5
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`
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`Schwartz has engaged in extensive substantive discussions with Petitioner’s expert
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`concerning issues relevant to this proceeding. (Id.)
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`Thus, Mr. Schwartz has an established familiarity with the subject matter at
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`issue in this proceeding as well as significant litigation experience and expertise.
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`For these reasons, good cause exists to admit Mr. Schwartz pro hac vice in this
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`proceeding.
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`
`
`Dated: November 20, 2018
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`Respectfully submitted,
`
`
`
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`
`
` /s/ Scott K. Reed
`
`Scott K. Reed (Reg. No. 32,433)
`Prajakta A. Sonalker (Reg. No. 65,406)
`VENABLE LLP
`1290 Avenue of the Americas
`New York, NY 10104-3800
`Tel: (212) 218-2100
`
`Counsel for Petitioner Alnylam
`Pharmaceuticals, Inc.
`
`6
`
`
`
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`
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`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the foregoing PETITIONER’S
`
`MOTION FOR PRO HAC VICE ADMISSION OF ROBERT S.
`
`SCHWARTZ UNDER 37 C.F.R. § 42.10 was served electronically via email on
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`November 20, 2018 at the following addresses of record:
`
`Lead Counsel
`
`Back-up Counsel
`
`Matthew Kreeger, Reg. No. 56,398
`MKreeger@mofo.com
`MORRISON & FOERSTER LLP
`425 Market Street
`San Francisco, CA 94105
`Tel: (415) 268-6467
`Fax: (415) 268-7522
`
`Jian Xiao, Reg. No. 55,748
`JXiao@mofo.com
`MORRISON & FOERSTER LLP
`755 Page Mill Road
`Palo Alto, CA 94304
`Tel: (650) 813-5736
`Fax: 650) 494-0792
`
`
`
`
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`Patent Owner has consented to service by electronic mail to
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`68013-802-PGR@mofo.com.
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`
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`Dated: November 20, 2018
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`Respectfully submitted,
`
` /s/ Scott K. Reed
`
`Scott K. Reed (Reg. No. 32,433)
`VENABLE LLP
`1290 Avenue of the Americas
`New York, NY 10104-3800
`Tel: (212) 218-2100
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