UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MYLAN PHARMACEUTICALS INC.
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`Petitioner
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`v.
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`YEDA RESEARCH AND DEVELOPMENT CO. LTD.
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`Patent Owner
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`Case No. IPR2015-00644
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`Patent No. 8,399,413
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`DECLARATION OF NICHOLAS K. MITROKOSTAS IN SUPPORT OF
`PATENT OWNER’S MOTION FOR PRO HAC VICE ADMISSION OF
`NICHOLAS K. MITROKOSTAS UNDER 37 C.F.R. § 42.10(c)
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`Page 1 of 5
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`YEDA EXHIBIT NO. 2138
`MYLAN PHARM. v YEDA
`IPR2015-00644
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`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MYLAN PHARMACEUTICALS INC.
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`Petitioner
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`v.
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`YEDA RESEARCH AND DEVELOPMENT CO. LTD.
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`Patent Owner
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`Case No. IPR2015-00644
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`Patent No. 8,399,413
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`DECLARATION OF NICHOLAS K. MITROKOSTAS IN SUPPORT OF
`PATENT OWNER’S MOTION FOR PRO HAC VICE ADMISSION OF
`NICHOLAS K. MITROKOSTAS UNDER 37 C.F.R. § 42.10(c)
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`Page 1 of 5
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`YEDA EXHIBIT NO. 2138
`MYLAN PHARM. v YEDA
`IPR2015-00644
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`
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`Case No. IPR2015-00644
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`I, Nicholas K. Mitrokostas, declare as follows:
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`1.
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`I obtained a B.A. from Harvard College in 1999, and a J.D. from
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`Georgetown University Law Center in 2003.
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`2.
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`I am currently a partner in the law firm of Goodwin Procter LLP, a
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`position which I have held since 2011. In my 12 years of law practice, I have
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`focused primarily on representing clients in patent litigations involving the
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`pharmaceutical and chemical arts in United States district courts and the Court of
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`Appeals for the Federal Circuit. Through this work, I have gained extensive
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`experience as a litigating attorney, particularly in patent cases.
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`3.
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`I am a member in good standing of the Bars of the Commonwealth of
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`Massachusetts and the State of New York. I am admitted to practice before the
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`United States District Court for the District of Massachusetts. I am also admitted
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`to practice before the United States Court of Appeals for the Federal Circuit, and
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`the Supreme Court of the United States.
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`4.
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`Concurrently with this application, I am applying to appear pro hac
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`vice in IPR2015-00643 and IPR2015-00830. I have not applied to appear pro hac
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`vice in any other proceeding before the Office in the last three years.
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`5.
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`I have represented Teva generally in litigating a number of
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`pharmaceutical patent cases, including as:
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`D1
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`Page 2 of 5
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`YEDA EXHIBIT NO. 2138
`MYLAN PHARM. v YEDA
`IPR2015-00644
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`
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`Case No. IPR2015-00644
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`a. trial counsel in Teva Branded Pharmaceutical Products R&D Inc. et al v.
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`Perrigo Pharmaceuticals Co. et al., Case No. 1:12-cv-01101-GMS in the U.S.
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`District Court for the District of Delaware.
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`b. trial counsel in Pfizer Inc. et al. v. IVAX Pharmaceuticals Inc., Case No.
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`2:07-cv-00174-DMC-MF in the U.S. District Court for the District of New
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`Jersey.
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`c. trial counsel in Cephalon Inc. v. Eagle Pharmaceuticals Inc., Case No. 1:13-
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`cv-02046-GMS in the U.S. District Court for the District of Delaware.
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`6.
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`I have been litigating issues relating to Copaxone and/or GA for more
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`than 6 years.
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`7.
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`I have represented Teva generally in litigating a number of cases
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`related to GA/Copolymer 1, as well as the Copaxone 20mg product, including as:
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`a. trial and appellate counsel in Teva Pharmaceuticals USA, Inc. et al v. Mylan
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`Pharmaceuticals Inc. et al., Case No. 1:09-cv-08824-WHP in the U.S. District
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`Court for the Southern District of New York.
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`b. trial and appellate counsel in Teva Pharmaceuticals USA, Inc. et al v. Mylan
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`Pharmaceuticals Inc. et al., Case No. 1:10-cv-07246-KBF in the U.S. District
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`Court for the Southern District of New York.
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`8.
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`I have substantial familiarity with the subject matter at issue in this
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`proceeding. Patent Owner has asserted U.S. Patent No. 8,399,413 (“the ’413
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`D2
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`Page 3 of 5
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`YEDA EXHIBIT NO. 2138
`MYLAN PHARM. v YEDA
`IPR2015-00644
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`Case No. IPR2015-00644
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`patent”), the patent at issue in this proceeding, against Petitioner and several other
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`defendants in Teva Pharmaceuticals USA, Inc. et al. v. Mylan Pharmaceuticals
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`Inc. et al., Civil Action No. 1:14-cv-01278-GMS in the U.S. District Court for the
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`District of Delaware (consolidated as In re Copaxone 40 MG Consolidated Cases,
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`Case No. 1:14-cv-01171-GMS (D. Del.)). I serve as litigation counsel for Teva
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`Pharmaceuticals USA, Inc., Teva Pharmaceutical Industries Ltd., Teva
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`Neuroscience, Inc. and Yeda Research and Development Co., Ltd., in that
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`litigation, as well as in Teva Pharmaceuticals USA, Inc. et al. v. Mylan
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`Pharmaceuticals Inc. et al., Civil Action No. 1:14-cv-00167-IMK in the U.S.
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`District Court for the Northern District of West Virginia. In the course of these
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`proceedings, I have developed a strong familiarity with the ’413 patent, its
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`prosecution history, the general subject matter to which the ’413 patent is directed,
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`and the prior art references relied upon by Petitioner in support of its invalidity
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`grounds in this proceeding. Furthermore, I have thoroughly reviewed the Petition
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`and accompanying Exhibits submitted in this proceeding.
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`9.
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`I have never been suspended or disbarred from practice before any
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`court or administrative body.
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`10.
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`I have never had an application for admission to practice before any
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`court or administrative body denied.
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`D3
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`Page 4 of 5
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`YEDA EXHIBIT NO. 2138
`MYLAN PHARM. v YEDA
`IPR2015-00644
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`Case No. IPR2015-00644
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`11.
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`I have never been subject to any sanction or contempt citation
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`imposed by any court or administrative body.
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`12.
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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 37 C.F.R.
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`13.
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`I agree to be subject to the USPTO Rules of Professional Conduct set
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`forth in 37 C.F.R. §§ 11.101 et. seq. and disciplinary jurisdiction under 37 C.F.R. §
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`11.19(a).
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`14.
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`I declare under penalty of perjury that the foregoing is true and
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`correct. I further declare that all statements made herein of my own knowledge are
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`true and that all statements made on information and belief are believed to be true;
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`and further that these statements were made with the knowledge that willful false
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`statements and the like so made are punishable by fine or imprisonment, or both,
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`under section 1001 of title 18 of the United States Code, and that such willful false
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`statements may jeopardize the validity of the application or any patent issued
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`thereon.
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`Executed on: December 21, 2015
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`/Nicholas K. Mitrokostas/
`Nicholas K. Mitrokostas
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`D4
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`Page 5 of 5
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`YEDA EXHIBIT NO. 2138
`MYLAN PHARM. v YEDA
`IPR2015-00644
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