IPR2016-00098
`Motion for Admission Pro Hac Vice
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`_________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
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`FRESENIUS KABI USA, LLC
`Petitioner
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`v.
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`CEPHALON, INC.
`Patent Owner
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`_____________
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`Case IPR2016-00098
`Patent No. 8,791,270
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`_____________________
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`PRO HAC VICE MOTION TO ADMIT
`AARON STIEFEL PURSUANT TO 37 C.F.R. § 42.10(c)
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`IPR2016-00098
`Motion for Admission Pro Hac Vice
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`Pursuant to 37 C.F.R. § 42.10(c), Patent Owner, Cephalon, Inc.
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`(“Cephalon”), hereby files this motion for Aaron Stiefel to appear pro hac vice on
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`its behalf before the Patent Trial and Appeal Board in this proceeding. This
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`motion is being filed with the Board’s authorization (see Paper 3) and in
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`accordance with the Board’s order in IPR2013-00639 (Paper 7) (setting forth the
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`requirements for pro hac vice admission).
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`I.
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`STATEMENT OF FACTS
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`The following facts along with the attached Declaration of Aaron Stiefel
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`(“Stiefel Decl.”) support admission of Mr. Stiefel pro hac vice in this proceeding:
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`1.
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`Lead counsel Soumitra (Sam) Deka is a registered attorney (Reg. No.
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`70,252) and is experienced in inter partes proceedings in the USPTO.
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`2.
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`Aaron Stiefel is an experienced litigation attorney. Mr. Stiefel has
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`been a litigator for more than 30 years and has been a litigator of patent cases for
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`more than 20 years. He is a partner at the firm of Kaye Scholer LLP. (Ex. 2001,
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`Stiefel Decl. ¶ 2). Mr. Stiefel has litigated numerous pharmaceutical-related patent
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`cases, and has regularly been counsel of record in patent cases during this time. (Id.
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`¶ 2). Mr. Stiefel is a member in good standing of the New York and New Jersey
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`State Bars, and is admitted to practice in the United States Supreme Court, the
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`United States Courts of Appeals for the Federal, Second and Third Circuits, and
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`IPR2016-00098
`Motion for Admission Pro Hac Vice
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`the United States District Courts for the Southern and Eastern Districts of New
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`York, the Northern District of California and the District of New Jersey, with no
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`suspensions or disbarments from practice before any court or administrative body,
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`nor any application for admission to practice before any court or administrative
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`body ever denied. (Id. ¶¶ 1, 3, 4). Mr. Stiefel has never had any sanctions or
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`contempt citations imposed against him by any court or administrative body. (Id. ¶
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`5).
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`3. Mr. Stiefel has significant familiarity with the subject matter at issue
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`in this proceeding based on his work as lead counsel in the pending district court
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`case Cephalon, Inc. v. Fresenius Kabi USA, LLC, 1:15-cv-00536-LPS (D. Del.),
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`which involves bendamustine, the same active pharmaceutical ingredient that is at
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`issue in this proceeding. (Id. ¶¶ 9, 10). Mr. Stiefel has been actively involved in
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`all aspects of this pending district court case, including regarding the validity of the
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`patent-in-suit, and accordingly, has gained substantive knowledge of the patent-at-
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`issue in this proceeding, its prosecution, and the cited prior art. (Id. ¶ 11). Mr.
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`Stiefel also has substantive knowledge of the patent-at-issue in this proceeding by
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`virtue of his preparation for this proceeding as well as two proceedings before the
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`Office (IPR2016-00026 and IPR2016-00111) that involve the same active
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`ingredient. (Id. ¶ 11).
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`IPR2016-00098
`Motion for Admission Pro Hac Vice
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`4. Mr. Stiefel 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, and he agrees 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 to disciplinary jurisdiction under 37
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`C.F.R. § 11.19(a). (Id. ¶¶ 6, 7).
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`5. Mr. Stiefel has not applied to appear pro hac vice in any other
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`proceedings before the Office in the last three (3) years. (Id. ¶ 8). As noted above,
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`Mr. Stiefel is concurrently applying to appear pro hac vice in IPR2016-00026 and
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`IPR2016-00111.
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`II. REASONS FOR GRANTING THE MOTION
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`The Board may recognize counsel pro hac vice during a proceeding “upon a
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`showing of good cause, subject to the condition that lead counsel be a registered
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`practitioner and to any other conditions as the Board may impose.” 37 C.F.R.
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`§ 42.10(c). Where the lead counsel is a registered practitioner, a motion to appear
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`pro hac vice may be granted upon showing that counsel who is seeking pro hac
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`vice admission is “an experienced litigating attorney and has an established
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`familiarity with the subject matter at issue in the proceeding.” (Id.).
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`The motion for pro hac vice admission must contain a statement of facts
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`showing good cause and be accompanied by a declaration of the individual who is
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`IPR2016-00098
`Motion for Admission Pro Hac Vice
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`seeking admission. See Unified Patents, Inc. v. Parallel Iron, LLC, IPR2013-
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`00639, Paper No. 7 at 3-4 (Oct. 15, 2013). The declaration in turn must contain
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`certain attestations. (Id.). This motion and the accompanying declaration meet all
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`of the Board’s requirements.
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`As set forth above, the lead counsel in this proceeding, Soumitra (Sam)
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`Deka, is a registered practitioner. Mr. Stiefel is an experienced patent litigation
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`attorney and has an established familiarity with the subject matter at issue in the
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`proceeding. (See Exhibit 2001 at ¶¶ 9-11.). Mr. Stiefel is lead counsel in the
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`pending district court case Cephalon, Inc. v. Fresenius Kabi USA, LLC, 1:15-cv-
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`00536-LPS (D. Del.), which involves bendamustine, the same active
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`pharmaceutical ingredient that is at issue in this proceeding. (Id. ¶¶ 9, 10). Mr.
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`Stiefel has been actively involved in all aspects of this pending district court case,
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`including the validity of the patent-in-suit, and accordingly, has gained substantive
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`knowledge of the patent-at-issue in this proceeding, its prosecution, and the cited
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`prior art. (Id. ¶ 11). In his declaration, Mr. Stiefel makes the necessary
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`attestations. His admission pro hac vice will enable the Patent Owner to avoid
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`unnecessary expense and duplication of work between this proceeding, other
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`related IPR proceedings, and the co-pending litigation.
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`IPR2016-00098
`Motion for Admission Pro Hac Vice
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`III. CONCLUSION
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`For the foregoing reasons, Patent Owner respectfully requests that the Board
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`admit Aaron Stiefel pro hac vice, in this proceeding.
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`Respectfully Submitted,
`KAYE SCHOLER LLP
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`/s/ Soumitra Deka
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`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
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`Attorneys for Patent Owner
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`Dated: November 19, 2015
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`IPR2016-00098
`Motion for Admission Pro Hac Vice
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing document,
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`PRO HAC VICE MOTION TO ADMIT AARON STIEFEL PURSUANT TO
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`37 C.F.R. § 42.10(c), was served via electronic mail and FedEx on November 19,
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`2015 to the following counsel of record for the Petitioner:
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`Lawrence Sung
`Neal Seth
`WILEY REIN LLP
`nseth@wileyrein.com
`lsung@wileyrein.com
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`WILEY REIN LLP
`ATTN: Patent Administration
`1776 K Street NW
`Washington, DC 20006
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`/s/ Soumitra Deka
`Soumitra (Sam) Deka
`(Reg. No. 70,252)
`KAYE SCHOLER LLP
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`Dated: November 19, 2015
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`IPR2016-00098 IPR2016-00098 IPR2016-00098
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`Declaration of Aaron Stiefel Declaration of Aaron Stiefel Declaration of Aaron Stiefel
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE IN THE UNITED STATES PATENT AND TRADEMARK OFFICE IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD BEFORE THE PATENT TRIAL AND APPEAL BOARD BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FRESENIUS KABI USA, LLC FRESENIUS KABI USA, LLC FRESENIUS KABI USA, LLC
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`Petitioner Petitioner Petitioner
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`v. v. v.
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`CEPHALON, INC. CEPHALON, INC. CEPHALON, INC.
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`Patent Owner Patent Owner Patent Owner
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`Case IPR2016-00098 Case IPR2016-00098 Case IPR2016-00098
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`Patent No. 8,791,270 Patent No. 8,791,270 Patent No. 8,791,270
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`DECLARATION OF AARON STIEFEL DECLARATION OF AARON STIEFEL DECLARATION OF AARON STIEFEL
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`Mail Stop "PATENT BOARD" Mail Stop "PATENT BOARD" Mail Stop "PATENT BOARD"
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`Patent Trial and Appeal Board Patent Trial and Appeal Board Patent Trial and Appeal Board
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`United States Patent and Trademark Office United States Patent and Trademark Office United States Patent and Trademark Office
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`P.O. Box 1450 P.O. Box 1450 P.O. Box 1450
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`Alexandria, VA 22313-1450 Alexandria, VA 22313-1450 Alexandria, VA 22313-1450
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`IPR2016-00098 IPR2016-00098 IPR2016-00098
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`Declaration of Aaron Stiefel Declaration of Aaron Stiefel Declaration of Aaron Stiefel
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`I, Aaron Stiefel, do hereby declare as follows: I, Aaron Stiefel, do hereby declare as follows: I, Aaron Stiefel, do hereby declare as follows:
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`1. 1. 1.
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`I am a member in good standing of the New York and New Jersey I am a member in good standing of the New York and New Jersey I am a member in good standing of the New York and New Jersey
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`State Bars, and I am admitted to practice in the United States Supreme Court, the State Bars, and I am admitted to practice in the United States Supreme Court, the State Bars, and I am admitted to practice in the United States Supreme Court, the
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`United States Courts of Appeals for the Federal, Second and Third Circuits, and United States Courts of Appeals for the Federal, Second and Third Circuits, and United States Courts of Appeals for the Federal, Second and Third Circuits, and
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`the United States District Courts for the Southern and Eastern Districts of New the United States District Courts for the Southern and Eastern Districts of New the United States District Courts for the Southern and Eastern Districts of New
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`York, the Northern District of California and the District of New Jersey, York, the Northern District of California and the District of New Jersey, York, the Northern District of California and the District of New Jersey,
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`2. 2. 2.
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`I am a partner at the firm of Kaye Scholer LLP. I have been a litigator I am a partner at the firm of Kaye Scholer LLP. I have been a litigator I am a partner at the firm of Kaye Scholer LLP. I have been a litigator
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`for more than 30 years, and I have handled patent litigations for more than 20. I for more than 30 years, and I have handled patent litigations for more than 20. I for more than 30 years, and I have handled patent litigations for more than 20. I
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`have litigated numerous pharmaceutical-related patent cases and have regularly have litigated numerous pharmaceutical-related patent cases and have regularly have litigated numerous pharmaceutical-related patent cases and have regularly
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`been counsel of record in patent cases during this time. been counsel of record in patent cases during this time. been counsel of record in patent cases during this time.
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`3. 3. 3.
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`I have never been suspended or disbarred from practice before any I have never been suspended or disbarred from practice before any I have never been suspended or disbarred from practice before any
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`court or administrative body. court or administrative body. court or administrative body.
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`4. 4. 4.
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`I have never had an application to practice before any court or I have never had an application to practice before any court or I have never had an application to practice before any court or
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`administrative body denied. administrative body denied. administrative body denied.
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`5. 5. 5.
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`I have had no sanctions or concept citations imposed against me by I have had no sanctions or concept citations imposed against me by I have had no sanctions or concept citations imposed against me by
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`any court or administrative body. any court or administrative body. any court or administrative body.
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`6. 6. 6.
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`I have read and will comply with the Office Patent Trial Practice I have read and will comply with the Office Patent Trial Practice 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. Guide and the Board's Rules of Practice for Trials set forth in 37 C.F.R. § 42. Guide and the Board's Rules of Practice for Trials set forth in 37 C.F.R. § 42.
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`1 1 1
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`IPR2016-00098 IPR2016-00098 IPR2016-00098
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`Declaration of Aaron Stiefel Declaration of Aaron Stiefel Declaration of Aaron Stiefel
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`I agree to be subject to the USPTO Rules of Professional Conduct set I agree to be subject to the USPTO Rules of Professional Conduct set I agree to be subject to the USPTO Rules of Professional Conduct set
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`7. 7. 7.
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`forth in 37 C.F.R. §§ 11.101 et seq., and to disciplinary jurisdiction under 37 forth in 37 C.F.R. §§ 11.101 et seq., and to disciplinary jurisdiction under 37 forth in 37 C.F.R. §§ 11.101 et seq., and to disciplinary jurisdiction under 37
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`C.F.R. § 11.19(a). C.F.R. § 11.19(a). C.F.R. § 11.19(a).
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`8. 8. 8.
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`I have not applied to appear pro hac vice in any other proceedings I have not applied to appear pro hac vice in any other proceedings I have not applied to appear pro hac vice in any other proceedings
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`before the Office in the last three (3) years. I am concurrently applying to appear before the Office in the last three (3) years. I am concurrently applying to appear before the Office in the last three (3) years. I am concurrently applying to appear
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`pro hac vice in IPR2016-00026 and IPR2016-00111. pro hac vice in IPR2016-00026 and IPR2016-00111. pro hac vice in IPR2016-00026 and IPR2016-00111.
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`9. 9. 9.
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`I have significant familiarity with the subject matter at issue in this I have significant familiarity with the subject matter at issue in this I have significant familiarity with the subject matter at issue in this
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`proceeding and, in particular, with bendamustine, the active pharmaceutical proceeding and, in particular, with bendamustine, the active pharmaceutical proceeding and, in particular, with bendamustine, the active pharmaceutical
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`ingredient that is the subject matter of the patent-at-issue in this proceeding. ingredient that is the subject matter of the patent-at-issue in this proceeding. ingredient that is the subject matter of the patent-at-issue in this proceeding.
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`10. 10. 10.
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`I am currently lead counsel in the pending district court case I am currently lead counsel in the pending district court case I am currently lead counsel in the pending district court case
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`Cephalon, Inc. v. Fresenius Kabi USA, LLC,1:15-cv-00536-LPS (D. Del.), which Cephalon, Inc. v. Fresenius Kabi USA, LLC,1:15-cv-00536-LPS (D. Del.), which Cephalon, Inc. v. Fresenius Kabi USA, LLC,1:15-cv-00536-LPS (D. Del.), which
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`involves the same active ingredient at issue in this proceeding. involves the same active ingredient at issue in this proceeding. involves the same active ingredient at issue in this proceeding.
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`11. As lead counsel, I am actively involved in all aspects of this pending 11. As lead counsel, I am actively involved in all aspects of this pending 11. As lead counsel, I am actively involved in all aspects of this pending
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`district court case, including the validity of the patent-in-suit, and accordingly, I district court case, including the validity of the patent-in-suit, and accordingly, I district court case, including the validity of the patent-in-suit, and accordingly, I
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`have substantive knowledge of the patent-at-issue in this proceeding, its have substantive knowledge of the patent-at-issue in this proceeding, its have substantive knowledge of the patent-at-issue in this proceeding, its
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`prosecution, and the cited prior art. I also have substantive knowledge of the prosecution, and the cited prior art. I also have substantive knowledge of the prosecution, and the cited prior art. I also have substantive knowledge of the
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`patent-at-issue in this proceeding by virtue of my preparation for this proceeding as patent-at-issue in this proceeding by virtue of my preparation for this proceeding as patent-at-issue in this proceeding by virtue of my preparation for this proceeding as
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`well as two proceedings before the Office (IPR2016-00026 and IPR2016-00111) well as two proceedings before the Office (IPR2016-00026 and IPR2016-00111) well as two proceedings before the Office (IPR2016-00026 and IPR2016-00111)
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`that involve the same active ingredient. that involve the same active ingredient. that involve the same active ingredient.
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`2 2 2
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`IPR2016-00098 IPR2016-00098 IPR2016-00098
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`Declaration of Aaron Stiefel Declaration of Aaron Stiefel Declaration of Aaron Stiefel
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`12. (cid:9)
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`12. (cid:9)12. (cid:9)
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`I hereby declare under penalty of perjury under the laws of the United I hereby declare under penalty of perjury under the laws of the United I hereby declare under penalty of perjury under the laws of the United
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`States of America that the foregoing is true and correct, and that all statements States of America that the foregoing is true and correct, and that all statements States of America that the foregoing is true and correct, and that all statements
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`made of my own knowledge are true and that all statements made on information
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`made of my own knowledge are true and that all statements made on information made of my own knowledge are true and that all statements made on information
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`and belief are believed to be true. I understand that willful false statements are and belief are believed to be true. I understand that willful false statements are and belief are believed to be true. I understand that willful false statements are
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`punishable by fine or imprisonment or both. See 18 U.S.C. § 1001.
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`punishable by fine or imprisonment or both. See 18 U.S.C. § 1001. punishable by fine or imprisonment or both. See 18 U.S.C. § 1001.
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`Dated: November 19, 2015
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`Dated: November 19, 2015 Dated: November 19, 2015
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`By:
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`By: By:
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`Ps
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`IPR2016-00098
`Declaration of Aaron Stiefel
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing document,
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`DECLARATION OF AARON STIEFEL, was served via electronic mail and
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`FedEx on November 19, 2015 to the following counsel of record for the Petitioner:
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`Lawrence Sung
`Neal Seth
`WILEY REIN LLP
`nseth@wileyrein.com
`lsung@wileyrein.com
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`WILEY REIN LLP
`ATTN: Patent Administration
`1776 K Street NW
`Washington, DC 20006
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`/s/ Soumitra Deka
`Soumitra (Sam) Deka
`(Reg. No. 70,252)
`KAYE SCHOLER LLP
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`Dated: November 19, 2015
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