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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`COALITION FOR AFFORDABLE DRUGS VI LLC
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`PETITIONER
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`V.
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`CELGENE CORPORATION
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`PATENT OWNER
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`CASE IPR20 15-01103
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`PATENT NO. 6,315,720
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`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
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`CFAD VI 1077 - 0001
`CFAD VI v. CELGENE
`IPR2015-01103
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`
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`I, Paul J. Skiermont, declare as follows:
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`1.
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`I am a member of good standing with the Texas State Bar (200 1) (Bar
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`No. 24033073) and the Illinois State Bar (2002) (Bar No. 06278464). I am
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`admitted to practice in the U.S. Courts of Appeals for the Federal and Eighth
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`Circuits; the U.S. District Courts for the Northern, Eastern, and Western District of
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`Texas; the U.S. District Court for the Northern District of Illinois; the U.S. District
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`Court for the District of Nebraska; the U.S. District Court for the District of
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`Colorado; the U.S. District Court for the Eastern District of Michigan; the U.S.
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`District Court for the Southern District of Ohio; and the U.S. District Court for the
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`Northern District of New York.
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`2.
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`I have applied to appear pro hac vice before the Office in one other
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`proceeding within the last three years. On March 3, 2015, I applied to appear pro
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`hac vice in Coalition For Affordable Drugs (ADROCA) LLC v. Acorda
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`Therapeutics, IPR2015-00720, and that application was granted on August 21,
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`2015 (see IPR2015-00720, Paper 13).
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`3.
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`I have never been disbarred or suspended from practice before any
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`court or administrative body.
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`4.
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`I have never had any sanctions or contempt citations imposed on me
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`from any court or administrative body.
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`1
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`CFAD VI 1077 - 0002
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`5.
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`I have never been denied any application for admission to practice
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`before any court or administrative body.
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`6.
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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 37 C.F.R. § 42 et.
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`seq.
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`7.
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`I agree to be subject to the USPTO Rules of Professional
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`Responsibility set forth in 37 C.F.R. 11.101 et. seq., and disciplinary jurisdiction
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`under 37 C.F.R. 11.19(a).
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`8.
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`CF AD's lead counsel in this proceeding, Ms. Sarah Spires, is a
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`Partner at Skiermont Puckett LLP, and is a registered patent practitioner.
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`9.
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`I am an experienced litigation attorney with over 13 years of litigation
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`experience, including 13 years of experience litigating pharmaceutical-related
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`patent cases, including cases where the patentability of claims under 35 U.S.C. §§
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`102 and 103 was or is at issue. This experience includes serving as lead counsel or
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`co-lead counsel in the following representative pharmaceutical patent matters:
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`• Laboratoire HRA Pharma v. Teva Pharmaceuticals USA, Inc., C.A. No. 15-
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`cv-45-RGA (District ofDelaware) (lead counsel);
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`• Andrulis Pharmaceuticals Corp. v. Celgene Corp., C.A. No. 13-cv-01644-
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`RGA (District of Delaware) (lead counsel), 15-1962 (Federal Circuit) (lead
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`counsel);
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`2
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`CFAD VI 1077 - 0003
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`•
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`In re Loestrin 24 Fe Antitrust Litigation, C.A. No. 1: 13-md-2472-S (MDL,
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`District of Rhode Island) (co-lead counsel);
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`• Bayer Schering Pharma AG v. Watson Laboratories, Inc., et al., C.A. No.7-
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`cv-01472-KJD-GWF (District ofNevada) (lead counsel), 12-1397 (Federal
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`Circuit) (co-lead counsel);
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`• Coalition For Affordable Drugs (ADROCA) LLC v. Acorda Therapeutics,
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`(PTAB), Case No. IPR2015-00720 (back-up counsel);
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`• Bayer Schering Pharma AG & Bayer HealthCare Pharmaceuticals Inc. v.
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`Teva, et al., C.A. No. 10-cv-03697 (Northern District of Illinois) (co-lead
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`counsel).
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`10. Based in part on the aforementioned experience, I have received the
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`following awards and recognition for my patent litigation work:
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`• LMG Life Sciences/Managing IP "Life Sciences Star- Patent
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`Litigation" (2013, 2014, 2015) (LMG states this recognition was based on
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`more than 1,000 online survey responses, interviews with nearly 600
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`attorneys, and a review of public information and feedback from clients
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`within the industry; in 2013, one of 5 Texas attorneys and one of 200
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`attorneys nationwide to be recognized in this category; in 2014, one of 6
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`Texas attorneys and one of 220 attorneys nationwide to be recognized in this
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`3
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`CFAD VI 1077 - 0004
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`category; in 2015, one of 6 Texas attorneys and one of 280 attorneys
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`nationwide to be recognized in this category).
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`• Intellectual Asset Managers ("lAM") Patent 1000: The World's
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`Leading Patent Practitioners- Patent Litigation (2014, 2015) (lAM
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`states the research used to compile the list was conducted over several
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`months by a team of full-time analysts, and involved more than 1,500
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`interviews with patent specialists across the globe; in 2015 one of 12 Texas
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`attorneys to receive a Gold band ranking in this category).
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`11.
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`I am one of the two founders of Skiermont Puckett LLP, the firm that
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`filed CFAD's Petition for Inter Partes Review of U.S. Patent No. 6,315,720
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`("Petition"), and I have established deep familiarity with the subject matter at issue
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`in this proceeding. In addition to my work on the subject matter at issue in this
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`proceeding described in the following paragraphs, I am lead counsel in litigation
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`against Celgene inAndrulis Pharmaceuticals Corp. v. Celgene Corp., C.A. No. 13-
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`cv-01644-RGA (District of Delaware) (currently on appeal to the Federal Circuit;
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`Case No. 2015-1962). Celgene's REMS distribution program that at least in part
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`appears to be claimed in U.S. Patent No. 6,315,720 ('"720 Patent") is at issue in
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`the Andrulis matter in connection with my client's allegation that Celgene directly
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`or indirectly infringes Andrulis Pharmaceuticals' patent-in-suit.
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`4
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`CFAD VI 1077 - 0005
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`12.
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`I have reviewed and analyzed the '720 Patent and its prosecution
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`history, as well as the prosecution histories of Celgene applications that claim
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`subject matter similar to the '720 Patent.
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`13.
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`I have reviewed and analyzed the Petition and supporting materials,
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`including supervising and participating in drafting the Petition.
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`14.
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`I am the attorney from Skiermont Puckett LLP that led and attended
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`all meetings between my firm and CF AD related to the Petition.
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`15.
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`I am the attorney from Skiermont Puckett LLP that conducted our
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`firm's analysis of the Grounds for invalidity contained in the Petition. I have
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`analyzed and am deeply familiar with all of the prior art references cited in
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`CFAD's Petition.
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`16.
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`I am the sole attorney from Skiermont Puckett LLP that directs and
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`supervises the work conducted by CF AD's lead and back-up counsel for the
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`Petition, all of whom are registered patent practitioners and Partners or Associates
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`of my firm.
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`17. On behalf ofCFAD, I retained and worked with the expert (Jeffrey
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`Fudin) that submitted a Declaration in support ofCFAD's Petition.
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`18.
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`I also reviewed and analyzed the patent and file history of U.S Patent
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`No. 6,045,501 ("'501 Patent"), which shares a common owner and shares subject
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`matter similar to the '720 Patent. CF AD filed an IPR Petition challenging the '50 I
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`5
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`CFAD VI 1077 - 0006
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`
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`Patent (see IPR20 15-01 092), and I personally supervised, reviewed and
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`participated in drafting the' 501 IPR Petition, and have read and analyzed the prior
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`art references in the '50 1 IPR Petition. I retained and personally worked with the
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`expert witness (Jeffrey Fudin) that submitted a declaration in support of the '501
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`Petition. I am the sole attorney from Skiermont Puckett LLP that directs and
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`supervises the work conducted by CF AD's lead and back-up counsel for the '501
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`Petition, all of whom are Partners or Associates of my firm.
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`Under penalty of perjury, I declare the above statements are true and
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`accurate to the best of my knowledge. I have been warned that willful false
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`statements and the like are punishable by fine or imprisonment, or both (18 U.S.C.
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`§ 1001).
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`DATED this 301h day of November, 2015.
`
`"'
`-~
`
`By:
`PaulJ.SkiOilt
`(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
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`6
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`CFAD VI 1077 - 0007