IPR2016-00026
`Motion for Admission Pro Hac Vice
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AGILA SPECIALTIES INC. and MYLAN LABORATORIES LIMITED
`Petitioners
`
`v.
`
`CEPHALON, INC.
`Patent Owner
`
`Case IPR2016-00026
`Patent No. 8,791,270
`
`PRO HAC VICE MOTION TO ADMIT
`AARON STIEFEL PURSUANT TO 37 C.F.R. § 42.10(c)
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`Motion for Admission Pro Hac Vice
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AGILA SPECIALTIES INC. and MYLAN LABORATORIES LIMITED
`Petitioners
`
`v.
`
`CEPHALON, INC.
`Patent Owner
`
`Case IPR2016-00026
`Patent No. 8,791,270
`
`PRO HAC VICE MOTION TO ADMIT
`AARON STIEFEL PURSUANT TO 37 C.F.R. § 42.10(c)
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`IPR2016-00026
`Motion for Admission Pro Hac Vice
`
`Pursuant to 37 C.F.R. § 42.10(c), Patent Owner, Cephalon, Inc.
`
`("Cephalon"), hereby files this motion for Aaron Stiefel to appear pro hac vice on
`
`its behalf before the Patent Trial and Appeal Board in this proceeding. This
`
`motion is being filed with the Board's authorization (see Paper 4) and in
`
`accordance with the Board's order in IPR2013-00639 (Paper 7) (setting forth the
`
`requirements for pro hac vice admission).
`
`I. (cid:9)
`
`STATEMENT OF FACTS
`
`The following facts along with the attached Declaration of Aaron Stiefel
`
`("Stiefel Decl.") support admission of Mr. Stiefel pro hac vice in this proceeding:
`
`1.
`
`Lead counsel Soumitra (Sam) Deka is a registered attorney (Reg. No.
`
`70,252) and is experienced in inter partes proceedings in the USPTO.
`
`2. Aaron Stiefel is an experienced litigation attorney. Mr. Stiefel has
`
`been a litigator for more than 30 years and has been a litigator of patent cases for
`
`more than 20 years. He is a partner at the fimi of Kaye Scholer LLP. (Ex. 2001,
`
`Stiefel Decl. ¶ 2). Mr. Stiefel has litigated numerous pharmaceutical-related patent
`
`cases, and has regularly been counsel of record in patent cases during this time. (Id.
`
`¶ 2). Mr. Stiefel is a member in good standing of the New York and New Jersey
`
`State Bars, and is admitted to practice in the United States Supreme Court, the
`
`United States Courts of Appeals for the Federal, Second and Third Circuits, and
`
`1
`
`
`
`IPR2016-00026
`Motion for Admission Pro Hac Vice
`
`the United States District Courts for the Southern and Eastern Districts of New
`
`York, the Northern District of California and the District of New Jersey, with no
`
`suspensions or disbainients from practice before any court or administrative body,
`
`nor any application for admission to practice before any court or administrative
`body ever denied. (Id. in 1, 3, 4). Mr. Stiefel has never had any sanctions or
`
`contempt citations imposed against him by any court or administrative body. (Id.
`
`¶ 5).
`
`3. (cid:9)
`
`Mr. Stiefel has significant familiarity with the subject matter at issue
`
`in this proceeding based on his work as lead counsel in the pending district court
`
`case Cephalon, Inc. v. Fresenius Kabi USA, LLC, 1:15-cv-00536-LPS (D. Del.),
`
`which involves bendamustine, the same active pharmaceutical ingredient that is at
`
`issue in this proceeding. (Id. ¶¶ 9, 10). Mr. Stiefel has been actively involved in
`
`all aspects of this pending district court case, including regarding the validity of the
`
`patent-in-suit, and accordingly, has gained substantive knowledge of the patent-at-
`
`issue in this proceeding, its prosecution, and the cited prior art. (Id. ¶ 11). Mr.
`
`Stiefel also has substantive knowledge of the patent-at-issue in this proceeding by
`
`virtue of his preparation for this proceeding as well as two proceedings before the
`
`Office (IPR2016-00098 and IPR2016-00111) that involve the same active
`
`ingredient. (Id. ¶ 11).
`
`2
`
`
`
`IPR2016-00026
`Motion for Admission Pro Hac Vice
`
`4. Mr. Stiefel has 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, and he agrees to be subject to the USPTO Rules of Professional Conduct set
`
`forth in 37 C.F.R. §§ 11.101 et seq., and to disciplinary jurisdiction under 37
`
`C.F.R. § 11.19(a). (Id. 11 6, 7).
`
`5. Mr. Stiefel has applied to appear pro hac vice in IPR2016-00098 and
`
`IPR2016-00111. (Id. ¶ 8). The Board has not issued a decision on either motion.
`
`II. (cid:9)
`
`REASONS FOR GRANTING THE MOTION
`
`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." 37 C.F.R.
`
`§ 42.10(c). Where the lead counsel is a registered practitioner, a motion to appear
`
`pro hac vice may be granted upon showing that counsel who is seeking pro hac
`
`vice admission is "an experienced litigating attorney and has an established
`
`familiarity with the subject matter at issue in the proceeding." (Id.).
`
`The motion for pro hac vice admission must contain a statement of facts
`
`showing good cause and be accompanied by a declaration of the individual who is
`
`seeking admission. See Unified Patents, Inc. v. Parallel Iron, LLC, IPR2013-
`
`00639, Paper No. 7 at 3-4 (Oct. 15, 2013). The declaration in turn must contain
`
`3
`
`
`
`IPR2016-00026
`Motion for Admission Pro Hac Vice
`
`certain attestations. (Id.). This motion and the accompanying declaration meet all
`
`of the Board's requirements.
`
`As set forth above, the lead counsel in this proceeding, Soumitra (Sam)
`
`Deka, is a registered practitioner. Mr. Stiefel is an experienced patent litigation
`
`attorney and has an established familiarity with the subject matter at issue in the
`
`proceeding. (See Exhibit 2001 at im 9-11.). Mr. Stiefel is lead counsel in the
`
`pending district court case Cephalon, Inc. v. Fresenius Kabi USA, LLC,1:15-cv-
`
`00536-LPS (D. Del.), which involves bendamustine, the same active
`
`phaimaceutical ingredient that is at issue in this proceeding. (Id. ¶¶ 9, 10). Mr.
`
`Stiefel has been actively involved in all aspects of this pending district court case,
`
`including the validity of the patent-in-suit, and accordingly, has gained substantive
`
`knowledge of the patent-at-issue in this proceeding, its prosecution, and the cited
`
`prior art. (Id. ¶ 11). In his declaration, Mr. Stiefel makes the necessary
`
`attestations. His admission pro hac vice will enable the Patent Owner to avoid
`
`unnecessary expense and duplication of work between this proceeding, other
`
`related IPR proceedings, and the co-pending litigation.
`
`III. CONCLUSION
`
`For the foregoing reasons, Patent Owner respectfully requests that the Board
`
`admit Aaron Stiefel pro hac vice, in this proceeding.
`
`4
`
`
`
`IPR2016-00026
`Motion for Admission Pro Hac Vice
`
`Dated: January 19, 2016
`
`Respectfully Submitted,
`KAYE SCHOLER LLP
`
`/s/ Soumitra Deka
`
`Soumitra (Sam) Deka
`(Reg. No. 70,252)
`Two Palo Alto Square
`3000 El Camino Real, Suite 400
`Palo Alto, CA 94306
`Tel: (212) 836-8000
`Fax: (212) 836-8689
`
`Attorneys for Patent Owner
`
`5
`
`
`
`IPR2016-00026
`Declaration of Aaron Stiefel
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AGILA SPECIALTIES INC. and MYLAN LABORATORIES LIMITED,
`Petitioners
`
`v.
`
`CEPHALON, INC.
`Patent Owner
`
`Case IPR2016-00026
`Patent No. 8,791,270
`
`DECLARATION OF AARON STIEFEL
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`IPR2016-00026
`Declaration of Aaron Stiefel
`
`I, Aaron Stiefel, do hereby declare as follows:
`
`1.
`
`I am a member in good standing of the New York and New Jersey
`
`State Bars, and I am admitted to practice in the United States Supreme Court, the
`
`United States Courts of Appeals for the Federal, Second and Third Circuits, and
`
`the United States District Courts for the Southern and Eastern Districts of New
`
`York, the Northern District of California and the District of New Jersey.
`
`2.
`
`I am a partner at the firm of Kaye Scholer LLP. I have been a litigator
`
`for more than 30 years, and I have handled patent litigations for more than 20. I
`
`have litigated numerous pharmaceutical-related patent cases and have regularly
`
`been counsel of record in patent cases during this time.
`
`3.
`
`I have never been suspended or disbarred from practice before any
`
`court or administrative body.
`
`4.
`
`I have never had an application to practice before any court or
`
`administrative body denied.
`
`5.
`
`I have had no sanctions or concept citations imposed against me by
`
`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.
`
`1
`
`
`
`IPR2016-00026
`Declaration of Aaron Stiefel
`
`7.
`
`I agree to be subject to the USPTO Rules of Professional Conduct set
`
`forth in 37 C.F.R. §§ 11.101 et seq., and to disciplinary jurisdiction under 37
`
`C.F.R. § 11.19(a).
`
`8.
`
`I have applied to appear pro hac vice in IPR2016-00111 and
`
`IPR2016-00098. The Board has not issued a decision on either motion.
`
`9.
`
`I have significant familiarity with the subject matter at issue in this
`
`proceeding and, in particular, with bendamustine, the active pharmaceutical
`
`ingredient that is the subject matter of the patent-at-issue in this proceeding.
`
`10.
`
`I am currently lead counsel in the pending district court case
`
`Cephalon, Inc. v. Fresenius Kabi USA, LLC,1:15-cv-00536-LPS (D. Del.), which
`
`involves the same active ingredient at issue in this proceeding.
`
`11. As lead counsel, I am actively involved in all aspects of this pending
`
`district court case, including the validity of the patent-in-suit, and accordingly, I
`
`have substantive knowledge of the patent-at-issue in this proceeding, its
`
`prosecution, and the cited prior art. I also have substantive knowledge of the
`
`patent-at-issue in this proceeding by virtue of my preparation for this proceeding as
`
`well as two proceedings before the Office (IPR2016-00111 and IPR2016-00098)
`
`that involve the same active ingredient.
`
`2
`
`
`
`IPR2016-00026
`Declaration of Aaron Stiefel
`
`12. (cid:9)
`
`I hereby declare under penalty of perjury under the laws of the United
`
`States of America that the foregoing is true and correct, and that all statements
`
`made of my own knowledge are true and that all statements made on information
`
`and belief are believed to be true. I understand that willful false statements are
`
`punishable by fine or imprisonment or both. See 18 U.S.C. § 1001.
`
`Dated: January 19, 2016
`
`r-
`
`By:
`
`3
`
`
`
`IPR2016-00026
`Motion for Admission Pro Hac Vice
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing documents,
`
`the PRO HAC VICE MOTION TO ADMIT AARON STIEFEL PURSUANT
`
`TO 37 C.F.R. § 42.10(c) and the DECLARATION OF AARON STIEFEL,
`
`were served via electronic mail on January 19, 2016 to the following counsel of
`
`record for the Petitioners:
`
`Steven W. Pal=lee
`
`spanuelee@wsgr.corn
`
`WILSON SONSINI GOODRICH & ROSATI
`
`Michael T. Rosato
`
`mrosato@wsgr.com
`
`WILSON SONSINI GOODRICH & ROSATI
`
`Nicole Stafford
`
`nstafford@wsgr.com
`
`WILSON SONSINI GOODRICH & ROSATI
`
`Dated: January 19, 2016
`
`/s/ Soumitra Deka
`Soumitra (Sam) Deka
`(Reg. No. 70,252)
`KAYE SCHOLER LLP
`
`6
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