`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 IPR2016-00111
`Patent No. 8,895,756
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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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`IPR2016-00111
`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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`IPR2016-00111
`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 IPR2016-00098) that involve the same active
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`ingredient. (Id. ¶ 11).
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`IPR2016-00111
`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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`IPR2016-00098.
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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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`IPR2016-00111
`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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`IPR2016-00111
`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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`Dated: November 24, 2015
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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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`IPR2016-00111 IPR2016-00111
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`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
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`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
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`Petitioner Petitioner
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`v. v.
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`CEPHALON, INC. CEPHALON, INC.
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`Patent Owner Patent Owner
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`Case IPR2016-00111 Case 1PR2016-00111
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`Patent No. 8,895,756 Patent No. 8,895,756
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`DECLARATION OF AARON STIEFEL DECLARATION OF AARON STIEFEL
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`Mail Stop "PATENT BOARD" Mail Stop "PATENT BOARD"
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`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
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`P.O. Box 1450 P.O. Box 1450
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`Alexandria, VA 22313-1450 Alexandria, VA 22313-1450
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`IPR2016-00111
`IPR2016-00111
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`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:
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`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
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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
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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
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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
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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,
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`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 fiiiii 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
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`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.
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`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
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`court or administrative body.
`court or administrative body.
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`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
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`administrative body denied. administrative body denied.
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`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
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`any court or administrative body. any court or administrative body.
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`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
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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.
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`1 1
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`IPR2016-00111 IPR2016-00111
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`Declaration of Aaron Stiefel Declaration of Aaron Stiefel
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`7. 7.
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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
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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
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`C.F.R. § 11.19(a). C.F.R. § 11.19(a).
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`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
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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
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`pro hac vice in IPR2016-00026 and IPR2016-00098. pro hac vice in IPR2016-00026 and IPR2016-00098.
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`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
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`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.
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`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
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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
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`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
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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
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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
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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
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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
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`well as two proceedings before the Office (IPR2016-00026 and IPR2016-00098) well as two proceedings before the Office (IPR2016-00026 and IPR2016-00098)
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`that involve the same active ingredient. that involve the same active ingredient.
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`2 2
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`IPR2016-00111
`IPR2016-00111
`Declaration of Aaron Stiefel
`Declaration of Aaron Stiefel
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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
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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
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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
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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 24, 2015
`Dated: November 24, 2015
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`By: aaA-,7€-/ie
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`IPR2016-00111
`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 documents,
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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) and DECLARATION OF AARON STIEFEL, were served
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`via electronic mail and by FedEx on November 24, 2015 to the following counsel
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`of record for the Petitioner:
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`Lawrence Sung
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`Neal Seth
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`WILEY REIN LLP
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`nseth@wileyrein.com
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`lsung@wileyrein.com
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`WILEY REIN LLP
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`ATTN: Patent Administration
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`1776 K Street NW
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`Washington, DC 20006
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`Dated: November 24, 2015
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`/s/ Soumitra Deka
`Soumitra (Sam) Deka
`(Reg. No. 70,252)
`KAYE SCHOLER LLP
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`1