UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`COALITION FOR AFFORDABLE DRUGS VI LLC
`
`PETITIONER
`
`v.
`
`CELGENE CORPORATION
`
`PATENT OWNER
`
`CASE IPR20 15-01102
`
`PATENT NO. 6,315,720
`
`DECLARATION OF PAUL J. SKIERMONT
`IN SUPPORT OF PETITIONER'S UNOPPOSED MOTION FOR PRO HAC
`VICE ADMISSION OF PAUL J. SKIERMONT AS BACK-UP COUNSEL
`
`CFAD VI 1077 - 0001
`CFAD VI v. CELGENE
`IPR2015-01102
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`COALITION FOR AFFORDABLE DRUGS VI LLC
`
`PETITIONER
`
`v.
`
`CELGENE CORPORATION
`
`PATENT OWNER
`
`CASE IPR20 15-01102
`
`PATENT NO. 6,315,720
`
`DECLARATION OF PAUL J. SKIERMONT
`IN SUPPORT OF PETITIONER'S UNOPPOSED MOTION FOR PRO HAC
`VICE ADMISSION OF PAUL J. SKIERMONT AS BACK-UP COUNSEL
`
`CFAD VI 1077 - 0001
`CFAD VI v. CELGENE
`IPR2015-01102
`
`
`
`I, Paul J. Skiermont, declare as follows:
`
`1.
`
`I am a member of good standing with the Texas State Bar (200 1) (Bar
`
`No. 24033073) and the Illinois State Bar (2002) (Bar No. 06278464). I am
`
`admitted to practice in the U.S. Courts of Appeals for the Federal and Eighth
`
`Circuits; the U.S. District Courts for the Northern, Eastern, and Western District of
`
`Texas; the U.S. District Court for the Northern District of Illinois; the U.S. District
`
`Court for the District of Nebraska; the U.S. District Court for the District of
`
`Colorado; the U.S. District Court for the Eastern District of Michigan; the U.S.
`
`District Court for the Southern District of Ohio; and the U.S. District Court for the
`
`Northern District ofNew York.
`
`2.
`
`I have applied to appear pro hac vice before the Office in one other
`
`proceeding within the last three years. On March 3, 2015, I applied to appear pro
`
`hac vice in Coalition For Affordable Drugs (ADROCA) LLC v. Acorda
`
`Therapeutics, IPR2015-00720, and that application was granted on August 21,
`
`2015 (see IPR2015-00720, Paper 13).
`
`3.
`
`I have never been disbarred or suspended from practice before any
`
`court or administrative body.
`
`4.
`
`I have never had any sanctions or contempt citations imposed on me
`
`from any court or administrative body.
`
`1
`
`CFAD VI 1077 - 0002
`
`
`
`5.
`
`I have never been denied any application for admission to practice
`
`before any court or administrative body.
`
`6.
`
`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 37 C.F.R. § 42 et.
`
`seq.
`
`7.
`
`I agree to be subject to the USPTO Rules of Professional
`
`Responsibility set forth in 3 7 C.F .R. 11.101 et. seq., and disciplinary jurisdiction
`
`under 37 C.F.R. 11.19(a).
`
`8.
`
`CFAD's lead counsel in this proceeding, Ms. Sarah Spires, is a
`
`Partner at Skiermont Puckett LLP, and is a registered patent practitioner.
`
`9.
`
`I am an experienced litigation attorney with over 13 years of litigation
`
`experience, including 13 years of experience litigating pharmaceutical-related
`
`patent cases, including cases where the patentability of claims under 35 U.S.C. §§
`
`102 and 103 was or is at issue. This experience includes serving as lead counsel or
`
`co-lead counsel in the following representative pharmaceutical patent matters:
`
`• Laboratoire HRA Pharma v. Teva Pharmaceuticals USA, Inc., C.A. No. 15-
`
`cv-45-RGA (District of Delaware) (lead counsel);
`
`• Andrulis Pharmaceuticals Corp. v. Celgene Corp., C.A. No. 13-cv-01644-
`
`RGA (District of Delaware) (lead counsel), 15-1962 (Federal Circuit) (lead
`
`counsel);
`
`2
`
`CFAD VI 1077 - 0003
`
`
`
`•
`
`In re Loestrin 24 Fe Antitrust Litigation, C.A. No. 1: 13-md-2472-S (MDL,
`
`District of Rhode Island) (co-lead counsel);
`
`• Bayer Schering Pharma AG v. Watson Laboratories, Inc., et al., C.A. No.7-
`
`cv-01472-KJD-GWF (District ofNevada) (lead counsel), 12-1397 (Federal
`
`Circuit) (co-lead counsel);
`
`• Coalition For Affordable Drugs (ADROCA) LLC v. Acorda Therapeutics,
`
`(PTAB), Case No. IPR2015-00720 (back-up counsel);
`
`• Bayer Schering Pharma AG & Bayer Health Care Pharmaceuticals Inc. v.
`
`Teva, et al., C.A. No. 10-cv-03697 (Northern District of Illinois) (co-lead
`
`counsel).
`
`10. Based in part on the aforementioned experience, I have received the
`
`following awards and recognition for my patent litigation work:
`
`• LMG Life Sciences/Managing IP "Life Sciences Star- Patent
`
`Litigation" (2013, 2014, 2015) (LMG states this recognition was based on
`
`more than 1,000 online survey responses, interviews with nearly 600
`
`attorneys, and a review of public information and feedback from clients
`
`within the industry; in 2013, one of 5 Texas attorneys and one of 200
`
`attorneys nationwide to be recognized in this category; in 2014, one of 6
`
`Texas attorneys and one of 220 attorneys nationwide to be recognized in this
`
`3
`
`CFAD VI 1077 - 0004
`
`
`
`category; in 2015, one of 6 Texas attorneys and one of 280 attorneys
`
`nationwide to be recognized in this category).
`
`• Intellectual Asset Managers ("lAM") Patent 1000: The World's
`
`Leading Patent Practitioners- Patent Litigation (2014, 2015) (lAM
`
`states the research used to compile the list was conducted over several
`
`months by a team of full-time analysts, and involved more than 1,500
`
`interviews with patent specialists across the globe; in 2015 one of 12 Texas
`
`attorneys to receive a Gold band ranking in this category).
`
`11.
`
`I am one of the two founders of Skiermont Puckett LLP, the firm that
`
`filed CFAD's Petition for Inter Partes Review of U.S. Patent No. 6,315,720
`
`("Petition"), and I have established deep familiarity with the subject matter at issue
`
`in this proceeding. In addition to my work on the subject matter at issue in this
`
`proceeding described in the following paragraphs, I am lead counsel in litigation
`
`against Celgene inAndrulis Pharmaceuticals Corp. v. Celgene Corp., C.A. No. 13-
`
`cv-01644-RGA (District of Delaware) (currently on appeal to the Federal Circuit;
`
`Case No. 2015-1962). Celgene's REMS distribution program that at least in part
`
`appears to be claimed in U.S. Patent No. 6,315,720 ('"720 Patent") is at issue in
`
`the Andrulis matter in connection with my client's allegation that Celgene directly
`
`or indirectly infringes Andrulis Pharmaceuticals' patent-in-suit.
`
`4
`
`CFAD VI 1077 - 0005
`
`
`
`12.
`
`I have reviewed and analyzed the '720 Patent and its prosecution
`
`history, as well as the prosecution histories of Celgene applications that claim
`
`subject matter similar to the '720 Patent.
`
`13.
`
`I have reviewed and analyzed the Petition and supporting materials,
`
`including supervising and participating in drafting the Petition.
`
`14.
`
`I am the attorney from Skiermont Puckett LLP that led and attended
`
`all meetings between my firm and CF AD related to the Petition.
`
`15.
`
`I am the attorney from Skiermont Puckett LLP that conducted our
`
`firm ' s analysis of the Grounds for invalidity contained in the Petition. I have
`
`analyzed and am deeply familiar with all of the prior art references cited in
`
`CFAD's Petition.
`
`16.
`
`I am the sole attorney from Skiermont Puckett LLP that directs and
`
`supervises the work conducted by CFAD's lead and back-up counsel for the
`
`Petition, all of whom are registered patent practitioners and Partners or Associates
`
`of my firm.
`
`17. On behalf ofCFAD, I retained and worked with the expert (Jeffrey
`
`Fudin) that submitted a Declaration in support of CF AD's Petition.
`
`18.
`
`I also reviewed and analyzed the patent and file history ofU.S Patent
`
`No. 6,045,501 ('"501 Patent"), which shares a common owner and shares subject
`
`matter similar to the '720 Patent. CFAD filed an IPR Petition challenging the '501
`
`5
`
`CFAD VI 1077 - 0006
`
`
`
`Patent (see IPR20 15-01 092), and I personally supervised, reviewed and
`
`participated in drafting the'501 IPR Petition, and have read and analyzed the prior
`
`art references in the '501 IPR Petition. I retained and personally worked with the
`
`expert witness (Jeffrey Fudin) that submitted a declaration in support of the '501
`
`Petition. I am the sole attorney from Skiermont Puckett LLP that directs and
`
`supervises the work conducted by CFAD's lead and back-up counsel for the '501
`
`Petition, all of whom are Partners or Associates of my firm.
`
`Under penalty of perjury, I declare the above statements are true and
`
`accurate to the best of my knowledge. I have been warned that willful false
`
`statements and the like are punishable by fine or imprisonment, or both (18 U.S.C.
`
`§ 1001).
`
`DATED this 30th day ofNovember, 2015.
`
`By:~~
`
`ont
`Paul J. Ski
`(TX Bar No. 24033073)
`SKIERMONT PUCKETT LLP
`2200 Ross A venue, Suite 4800W
`Dallas, TX 75201
`Phone: (214) 978-6600
`Fax: (214) 978-6601
`paul.skiermont@skiermontpuckett.com
`
`6
`
`CFAD VI 1077 - 0007
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