UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`NOVEN PHARMACEUTICALS INC.,
`Petitioner
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`v.
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`NOVARTIS AG AND LTS LOHMANN THERAPIE-SYSTEME AG,
`Patent Owners
`
`Inter Partes Review No. 2014-00550
`
`U.S. Patent 6,335,031
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`DECLARATION IN SUPPORT OF PATENT OWNERS’ MOTION
`FOR PRO HAC VICE ADMISSION OF CHARLOTTE C. JACOBSEN
`UNDER 37 C.F.R. § 42.10
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` NOVARTIS EXHIBIT 2005
` Noven v. Novartis and LTS Lohmann
` IPR2014-00550
` Page 1 of 5
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`1.
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`I, Charlotte C. Jacobsen, am more than twenty-one years of age, am
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`competent to present this declaration, and have personal knowledge of the facts
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`set forth herein.
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`2.
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`This declaration is given in support of Patent Owners’ Motion for
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`Pro Hac Vice Admission.
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`3.
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`I am a partner at the law firm of Fitzpatrick, Cella, Harper & Scinto
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`in the New York office.
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`4.
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`I have been a patent litigation attorney for more than eleven years.
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`I have been litigating patent cases for this entire time period and have been
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`involved in numerous cases involving patent validity and infringement in
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`District Courts across the country as well as at the Federal Circuit. I have
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`extensive experience in bench trials. A significant portion of my work has
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`involved biological and chemical arts, with particular emphasis on
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`pharmaceuticals. I am, therefore, an experienced litigating attorney.
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`5.
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`I am a member in good standing of the State Bar of New York and
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`the Bar of England and Wales. I have never been suspended or disbarred from
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`practice before any court or administrative body.
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`6.
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`No court or administrative body has ever denied my application for
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`admission to practice before it.
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`1
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` IPR2014-00550
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`7.
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`No court or administrative body has ever imposed sanctions or
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`contempt citations on me.
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`8.
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`I have read and will comply with the Office Patent Trial Practice
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`Guide and the Board’s Rules of Practice for Trials set forth in part 42 of the
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`C.F.R.
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`9.
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`I understand that I will be subject to the Office’s Rules of
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`Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary
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`jurisdiction under 37 C.F.R. § 11.19(a).
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`10.
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`I am concurrently seeking pro hac vice admission to appear in a co-
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`pending case brought by the Petitioner against Patent Owners, Case IPR2014-
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`00549. I have not applied to appear pro hac vice in another proceeding before
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`the Office in the last three (3) years.
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`11.
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`I have an established familiarity with the subject matter at issue in
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`this proceeding. I have been involved consistently and substantively in this
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`inter partes review proceeding since its inception in April 2014 and was
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`engaged by Patent Owners to work on the proceeding from the outset. I have
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`read in detail and understand the Petition filed by Petitioner and the challenged
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`patent, U.S. Patent 6,335,031 (“the ’031 patent”). I have also reviewed in detail
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`all the exhibits relied upon by Petitioner in this proceeding.
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`2
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` Noven v. Novartis and LTS Lohmann
` IPR2014-00550
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`12.
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`I have engaged in extensive strategic and substantive discussions
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`regarding this proceeding with Raymond R. Mandra, who is the lead counsel for
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`Patent Owners in this proceeding and in Case IPR2014-00549, and Nicholas K.
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`Kallas, who is the back-up counsel for Patent Owners in this proceeding. I have
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`also engaged in extensive substantive discussions with experts concerning issues
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`relevant to this proceeding and Case IPR2014-00549.
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`13.
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`Since January 2012, I have served as counsel for Patent Owners in
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`several related lawsuits in which the ’031 patent is or was asserted, including (1)
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`Novartis Pharm. Corp. et al. v. Par Pharm. Inc. et al., 1:11-cv-01077 (D. Del.); (2)
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`Novartis Pharm. Corp. et al. v. Watson Labs. Inc. et al., 1:11-cv-01112 (D. Del.);
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`(3) Novartis Pharm. Corp. et al. v. Alvogen Pine Brook Inc. et al., 1:13-cv-00052
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`(D. Del.); (4) Novartis Pharm. Corp. et al. v. Alvogen Pine Brook Inc. et al., 1:13-
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`cv-00370 (D. Del.); (5) Novartis Pharm. Corp. et al. v. Actavis, Inc. et al., 1:13-cv-
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`00371 (D. Del.); (6) Novartis Pharm. Corp. et al. v. Noven Pharm. Inc. et al., 1:13-
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`cv-00527 (D. Del.); (7) Novartis Pharm. Corp. et al. v. Noven Pharm. Inc., 1:14-
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`cv-00111 (D. Del.); (8) Novartis Pharm. Corp. et al. v. Mylan Inc. et al., 1:14-cv-
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`00777 (D. Del.); (9) Novartis Pharm. Corp. et al. v. Mylan Inc. et al., 1:14-cv-
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`00106 (N.D.W.V.); (10) Novartis Pharm. Corp. et al. v. Zydus Noveltech Inc. et
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`al., 1:14-cv-01104 (D. Del.); (11) Novartis Pharm. Corp. et al. v. Zydus Noveltech
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`Inc. et al., 1:14-cv-05405 (D.N.J.); (12) Watson Labs. Inc. et al. v. Novartis
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`3
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