UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APOTEX CORP.
`Petitioner
`V.
`ALCON RESEARCH, LTD.
`Patent Owner
`
`CASE 1PR2013-00428
`
`U.S. Patent No. 8,268,299
`
`AFFIDAVIT IN SUPPORT OF MOTION FOR PRO HAG VICE ADMISSION
`OF H. KEETO SABHARWAL UNDER 37 C.F.R. § 42.10(c)
`
`Mail Slop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APOTEX CORP.
`Petitioner
`V.
`ALCON RESEARCH, LTD.
`Patent Owner
`
`CASE 1PR2013-00428
`
`U.S. Patent No. 8,268,299
`
`AFFIDAVIT IN SUPPORT OF MOTION FOR PRO HAG VICE ADMISSION
`OF H. KEETO SABHARWAL UNDER 37 C.F.R. § 42.10(c)
`
`Mail Slop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`AFFIDAVIT OF H. KEETO SABHARWAL
`CASE IPR20 13-00428
`
`1.
`
`I, H. Keeto Sabharwal, am more than twenty-one years of age, am
`
`competent to present this affidavit, and have personal knowledge of the facts set forth
`
`herein.
`
`2.
`
`This affidavit is given in support of the Petitioner Apotex Corp.’s
`
`Motion for Pro Hac Vice Admission.
`
`3.
`
`I am a director at the law firm of Sterne, Kessler, Goldstein and Fox
`
`P.L.L.C.
`
`4.
`
`I have been a patent litigation attorney for nearly 20 years, and I’ve been
`
`litigating patent cases during that entire time period. I served as lead trial counsel in
`
`a large majority of these patent cases. Most of the patent cases in which I served as
`
`lead trial counsel involved pharmaceutical products. I have litigated at least 30 patent
`
`infringement actions involving a variety of pharmaceutical and life science matters.
`
`5.
`
`I am a member in good standing of the State Bar of New York and the
`
`Bar of the District of Columbia. I have never been suspended or disbarred from
`
`practice before any court or administrative body.
`
`-1-
`
`
`
`AFFIDAVIT OF H. KEETO SABHARWAL
`CASE 1PR2013-00428
`
`6.
`
`I have never been ultimately denied admission to practice before any
`
`court or administrative body. I was temporarily denied pro hac vice admission
`
`without prejudice and with permission to re-file in a single instance by the PTAB in
`
`Cases 1PR2012-00022 and 1PR2013-00250 because the moving papers did not fully
`
`articulate my familiarity with the subject matter at issue in the proceedings (where I
`
`was not serving as trial counsel in the corresponding litigation).’ After I provided
`
`additional detail showing my familiarity with the subject matter at issue in those
`
`proceedings, the Board granted my pro hac vice admission in both cases. See Case
`
`1PR2012-00022, Paper 53; Case 1PR2013-00250, Paper 21.
`
`7.
`
`No court or administrative body has ever imposed sanctions or
`
`contempt citations on me.
`
`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.
`
`Case 1PR2012-00022 and Case 1PR2013-00250 were parallel cases
`
`concerning a single patent at issue. The cases were later joined by the PTAB in a
`
`single proceeding. See Case 1PR2012-00022, Paper 104.
`
`-2-
`
`
`
`AFFIDAVIT OF H. KEETO SABHARWAL
`CASE 1PR2013-00428
`
`9.
`
`I understand that I will be subject to the Office’s Rules of Professional
`
`Conduct set forth in 37 C.F.R. §S 11.10 1 et seq. and disciplinary jurisdiction under
`
`37 C.F.R. § 11.19(a).
`
`10.
`
`I am concurrently seeking pro hac vice admission to appear in
`
`Petitioner’s co-pending related matters against Patent Owner, Case 1PR2013-00429 2
`
`and Case 1PR2013-00430. 3 I have applied to appear pro hac vice in seven other
`
`proceedings before the Office in the last three (3) years: Case 1PR2013-00012, Case
`
`1PR2013-00015, Case 1PR2012-00022, Case 1PR2013-00250, Case 1PR2013-00368,
`
`Case 1PR2013-00371, and Case IPR 2013-00372. I was admittedpro hac vice in all
`
`seven cases and participated in IPR depositions in the cases.
`
`2 Case 1PR2013-00429 challenges claims of U.S. Patent No. 8,323,630 ("the
`
`’630 patent"), which is in the same patent family as the patent at issue in this
`
`proceeding.
`
`Case 1PR2013-00430 challenges claims of U.S. Patent No. 8,388,941 ("the
`
`’941 patent"), which concerns the same subject matter as the patent at issue in this
`
`proceeding.
`
`-3-
`
`
`
`AFFIDAVIT OF H. KEETO SABHARWAL
`CASE 1PR2013-00428
`
`11.
`
`I have an established familiarity with the subject matter at issue in this
`
`proceeding. I have read and understand the pleadings submitted by Petitioner and
`
`Patent Owner in this proceeding and in Cases 1PR2013-00429 and 1PR2013-00430. I
`
`have engaged in hours of strategic and substantive discussions regarding this
`
`proceeding with Eldora L. Ellison, Ph.D., who is the lead counsel for Petitioner in
`
`this proceeding and in Case 1PR2013-00429 and Case 1PR2013-00430. Through my
`
`nearly 20 years of patent litigation experience, I am very familiar with the legal
`
`theories advanced in this case.
`
`12.
`
`I have reviewed in detail U.S. Patent No. 8,268,299 ("the ’299 patent"),
`
`which is the patent challenged in this proceeding. I have also reviewed Exhibits
`
`submitted by Petitioner in this proceeding, such as Exhibit 1002 (Declaration of
`
`Michael J. Miller, Ph.D.); Exhibit 1003 (Xia et al., WO 2005/097067, "Zinc
`
`Preservative Composition and Method of Use"); Exhibit 1004 (Chowhan
`
`et al., U.S.
`
`Patent No. 6,143,799, "Use of Borate-Polyol Complexes in Ophthalmic
`
`Compositions"); Exhibit 1005 (Gadd et al., "Microorganisms and Heavy Metal
`
`Toxicity," Microbial Ecology, 4:303-317 (1978)); and Exhibit 1006 (FDA Approved
`
`Drug Label "TRAVATANfi (travoprost ophthalmic solution) 0.004% Sterile"
`
`(2001)).
`
`A
`
`
`
`AFFIDAVIT OF H. KEETO SABHARWAL
`CASE 1PR2013-00428
`
`13. Through previous litigation involving similar products, I have
`
`significant familiarity with ophthalmic formulations such as those claimed by the
`
`’299 patent. I served as Petitioner’s lead trial counsel in A icon Pharms. Ltd. v. Apotex
`
`Inc., Case no. 1:12-cv-00960-UNA (D. Delaware), which concerned U.S. Patent
`
`Nos. 6,716,830 and 7,671,070 (directed to ophthalmic drug formulations and
`
`methods of use). I also represented Petitioner in the extensive inter partes review
`
`proceedings concerning the same patents: Case 1PR2013-00012 and Case
`
`1PR2013-00015.
`
`14.
`
`Therefore, I have an established familiarity with the subject matter at
`
`issue in this proceeding.
`
`15.
`
`I understand that IPR counsel for Patent Owner has agreed not to oppose
`
`Petitioner’s motion for my pro hac vice admission in this proceeding.
`
`H. eto bharwat’
`
`Sworn to and subscribed before me
`this 3Aek.. day of February, 2014.
`
`Notary Public
`I 8O25 (cid:9)
`
`ESS
`July 142Oi$ (cid:9)
`
`-5-
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
