Paper No. _____
`Filed: November 30, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
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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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`___________________
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`Case IPR2015-01103
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`Patent No. 6,315,720
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`PETITIONER’S UNOPPOSED MOTION FOR PRO HAC VICE
`ADMISSION OF PAUL J. SKIERMONT AS BACK-UP COUNSEL
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`Filed: November 30, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
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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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`___________________
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`Case IPR2015-01103
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`
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`Patent No. 6,315,720
`___________________
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`PETITIONER’S UNOPPOSED MOTION FOR PRO HAC VICE
`ADMISSION OF PAUL J. SKIERMONT AS BACK-UP COUNSEL
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`Pursuant to 37 C.F.R. § 42.10(c), Petitioner Coalition for Affordable Drugs
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`VI LLC (“CFAD”) hereby respectfully requests that the Board grant admission pro
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`hac vice to Mr. Paul J. Skiermont to act as back-up counsel in this proceeding.
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`I.
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`Introduction and Background
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`Counsel for CFAD consulted with counsel for Patent Owner, Celgene
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`Corporation (“Celgene”), and Celgene agreed it would not oppose the present
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`motion for pro hac vice admission of Mr. Skiermont.
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`On October 27, 2015, the Patent Trial and Appeal Board (the “Board”)
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`instituted inter partes review of Celgene’s U.S. Patent No. 6,315,720. (See Paper
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`21.) The Board had previously authorized the parties to file motions for pro hac
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`vice admission under 37 C.F.R. § 42.10(c). (See Paper 3 at 2.) Therefore, the
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`present motion is proper at this time.
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`II.
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`Statement of Facts Showing Good Cause for the Present Motion
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`37 C.F.R. § 42.10(c) states that:
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`“The Board may recognize counsel pro hac vice during a proceeding
`upon a showing of good cause, subject to the condition that lead
`counsel be a registered practitioner and to any other conditions as the
`Board may impose. For example, where the lead counsel is a
`registered practitioner, a motion to appear pro hac vice by counsel
`who is not a registered practitioner may be granted upon showing that
`counsel is an experienced litigating attorney and has an established
`familiarity with the subject matter at issue in the proceeding.”
`1
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`As explained and attested to in the accompanying Declaration of Paul J.
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`Skiermont, Mr. Skiermont has an established familiarity of the subject matter at
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`issue in this inter partes review. (Ex. 1077 ¶¶ 11-18.) Mr. Skiermont is an
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`experienced patent litigation attorney with specific experience serving as lead or
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`co-lead trial counsel in cases related to pharmaceutical patents, and has received
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`awards and recognition related to this work. (Ex. 1077 ¶¶ 9–10.)
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`Mr. Skiermont is a Member in good standing with the Illinois (2002) and
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`Texas (2002) State Bars and is admitted to practice in numerous Federal Courts,
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`including the U.S. Courts of Appeals for the Federal and Eighth Circuits; the U.S.
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`District Courts for the Northern, Eastern, and Western District of Texas; the U.S.
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`District Court for the Northern District of Illinois; the U.S. District Court for the
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`District of Nebraska; the U.S. District Court for the District of Colorado; the U.S.
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`District Court for the Eastern District of Michigan; the U.S. District Court for the
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`Southern District of Ohio; and the U.S. District Court for the Northern District of
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`New York.(Id. ¶ 1.)
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`Mr. Skiermont has applied to appear pro hac vice before the Office in one
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`other proceeding within the last three years. (Id. ¶ 2.) On March 3, 2015, Mr.
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`Skiermont applied to appear pro hac vice in IPR2015-00720, and that application
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`was granted on August 21, 2015 (see IPR2015-00720, Paper 13). (Ex. 1077 ¶ 2.)
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`Concurrently with the motion, Petitioner is also filing motions for pro hac vice
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`admission for Mr. Skiermont in IPR2015-01092, IPR2015-01096, and IPR2015-
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`01102.
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`Mr. Skiermont has never been disbarred or suspended from practice before
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`any court or administrative body. (Id. ¶ 3.)
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`Mr. Skiermont has never had any sanctions or contempt citations imposed on
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`him from any court or administrative body. (Id. ¶ 4.)
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`Mr. Skiermont has never been denied any application for admission to
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`practice before any court or administrative body. (Id. ¶ 5.)
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`CFAD’s lead counsel for this proceeding, Ms. Sarah Spires, is a registered
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`patent practitioner. (Id. ¶ 8.)
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`Mr. Skiermont has established deep familiarity with the subject matter at
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`issue in this proceeding. (Id. ¶¶ 11–18.) Mr. Skiermont has read and analyzed the
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`Petition and supporting materials, and has read and analyzed U.S. Patent No.
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`6,315,720 (’720 Patent) as well as its prosecution history. (Id. ¶¶ 12–13.) Mr.
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`Skiermont is the attorney from Skiermont Puckett LLP that led and attended all
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`meetings between his firm and CFAD related to the Petition at issue in this
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`proceeding (id. ¶ 14), is the attorney from Skiermont Puckett LLP that conducted
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`his firm’s analysis of the Grounds for invalidity under 35 U.S.C. §§ 102 and 103
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`for the Petition (id. ¶ 15), is the sole attorney from Skiermont Puckett LLP that
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`directs and supervises the work conducted by the lead and back-up counsel to the
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`3
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`Petition, all of whom are registered patent practitioners (id. ¶ 16), and is the
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`attorney that retained and worked with the expert witness (Jeffrey Fudin, R.Ph.,
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`B.S., Pharm.D., DAAPM, FCCP, FASHP) that submitted a declaration in support
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`of the Petition (id. ¶ 17).
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`Mr. Skiermont has also reviewed and analyzed the patent and file history of
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`U.S Patent No. 6,045,501 (’501 Patent), which shares a common owner and shares
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`subject matter similar to the ’720 Patent. (Id. ¶ 18.) CFAD filed an IPR Petition
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`challenging the ’501 Patent (see IPR2015-01092). (Id.) Mr. Skiermont personally
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`supervised, reviewed and participated in drafting the ’501 IPR Petition, and has
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`read and analyzed the prior art references in the ’501 IPR Petition. (Id.)
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`Finally, Mr. Skiermont has read and will comply with the Office Patent Trial
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`Practice Guide and the Board’s Rules of Practice for Trials set forth in 37 C.F.R. §
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`42 et. seq., and has agreed 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). (Id. ¶¶ 6–7.)
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`III. Statement of Relief Requested
`For the foregoing reasons, Petitioner respectfully requests that the Board
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`grant admission pro hac vice to Mr. Skiermont as back-up counsel.
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`4
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`Dated: November 30, 2015
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`Respectfully submitted,
`/Sarah E. Spires/
`Sarah E. Spires (Reg. No. 61,501)
`SKIERMONT PUCKETT LLP
`2200 Ross Ave. Ste. 4800W
`Dallas, TX 75201
`P: 214-978-6600/F: 214-978-6601
`Lead Counsel for Petitioner
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`5
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`Certificate of Service
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`Pursuant to 37 C.F.R. § 42.6(e), I certify that I caused to be served on the
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`counsel for Patent Owner a true and correct copy of the foregoing Petitioner’s
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`Unopposed Motion for Pro Hac Vice Admission of Paul J. Skiermont as Back-Up
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`Counsel, as well as Exhibit 1077 to the Motion: Declaration of Paul J. Skiermont
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`in Support of Petitioner’s Unopposed Motion For Pro Hac Vice Admission of Paul
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`J. Skiermont as Back-Up Counsel, by electronic means on November 30, 2015 at
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`the following address of record:
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`F. Dominic Cerrito (Reg. No. 38,100)
`QUINN EMANUEL URQUHART & SULLIVAN LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`Tel: (212) 849-7000
`Fax: (212) 849-7100
`nickcerrito@quinnemanuel.com
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`Anthony M. Insogna (Reg. No. 35,203)
`JONES DAY
`12265 El Camino Real
`Suite 200
`San Diego, CA 92130
`Tel: (858) 314-1200
`Fax: (858) 314-1150
`aminsogna@jonesday.com
`Lead and Back-Up Counsel for Patent Owner
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`Respectfully submitted,
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`Dated: November 30, 2015
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`/Sarah E. Spires/
`Sarah E. Spires (Reg. No. 61,501)
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`Counsel for Petitioner
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