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`Paper No. 39
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`Filed: October 27, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________
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`NEPTUNE GENERICS, LLC,
`APOTEX INC., APOTEX CORP.,
`TEVA PHARMACEUTICALS USA, INC.,
`and FRESENIUS KABI USA, LLC,
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`PETITIONERS,
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`V.
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`ELI LILLY & COMPANY,
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`PATENT OWNER.
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`___________________
`
`Case IPR2016-002371
`Patent 7,772,209
`___________________
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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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`1 Cases IPR2016-01190 and IPR2016-01341 have been joined with the instant
`proceeding.
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`Pursuant to 37 C.F.R. § 42.10(c), Neptune Generics, LLC (“Neptune”)
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`hereby respectfully requests that the Board grant admission pro hac vice to Mr.
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`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 Neptune consulted with counsel for Patent Owner, Eli Lilly &
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`Company (“Lilly”), and Lilly agreed it would not oppose the present motion for
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`pro hac vice admission of Mr. Skiermont.
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`On June 3, 2016, the Patent Trial and Appeal Board (the “Board”) instituted
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`inter partes review of Lilly’s U.S. Patent No. 7,772,209. (See Paper 13.) The
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`Board had previously authorized the parties to file motions for pro hac vice
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`admission under 37 C.F.R. § 42.10(c). (See Paper 3 at 2.) Therefore, the present
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`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
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`1
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`counsel is an experienced litigating attorney and has an established
`familiarity with the subject matter at issue in the proceeding.”
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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. 1041 ¶¶ 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. (Id. ¶¶ 9–10.)
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`Mr. Skiermont is a Member in good standing with the Texas (2001) and
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`Illinois (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 ten
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`other proceedings within the last three years (eight of which arose from applying
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`for admission in two different proceedings containing four related petitions). (Id. ¶
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`2
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`2.) On March 3, 2015, Mr. Skiermont applied to appear pro hac vice in IPR2015-
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`00720, and that application was granted on August 21, 2015 (see IPR2015-00720,
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`Paper 13); however, the Board denied institution in that proceeding. (Ex. 1041 ¶ 2.)
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`On November 30, 2015, Mr. Skiermont applied to appear pro hac vice in Coalition
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`for Affordable Drugs VI LLC v. Celgene Corporation, IPR2015-01092; IPR2015-
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`01096; IPR2015-01102; and IPR2015-01103, and those four related applications
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`were granted on December 2, 2015 (see IPR2015-01092, Paper 31; IPR2015-
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`01096, Paper 32; IPR2015-01102, Paper 32; and IPR2015-01103, Paper 33). (Id. ¶
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`2.) On February 19, 2016, Mr. Skiermont applied to appear pro hac vice in
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`Coalition for Affordable Drugs II LLC v. Cosmo Technologies LTD., IPR2015-
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`00988, and that application was granted on March 1, 2016 (see IPR2015-00988,
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`Paper 26). (Id. ¶ 2.) On May 3, 2016, Mr. Skiermont applied to appear pro hac
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`vice in Coalition for Affordable Drugs (Adroca) LLC v. Acorda Therapeutics, Inc.,
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`IPR2015-01850; IPR2015-01853; IPR2015-01857; and IPR2015-01858, and those
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`four related applications were granted on May 16, 2016 (see IPR2015-01850,
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`Paper 24; IPR2015-01853, Paper 24; IPR2015-01857, Paper 25; and IPR2015-
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`01858, Paper 23). (Id. ¶ 2.) Concurrently with this motion, Petitioner is also filing
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`a motion for pro hac vice admission for Mr. Skiermont in IPR2016-00240.
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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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`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. (Ex. 1041 ¶ 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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`Neptune’s lead counsel for this proceeding, Ms. Sarah Spires, is a registered
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`patent practitioner. (Id. ¶ 8.) Neptune seeks the admission of Mr. Skiermont as
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`back-up counsel.
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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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`7,772,209 (’209 Patent) as well as its prosecution history. (Id. ¶¶ 12–13.) Mr.
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`Skiermont is the attorney from Skiermont Derby LLP that led and attended all
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`meetings between his firm and Neptune related to the Petition at issue in this
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`proceeding (Id. ¶ 14), is the attorney from Skiermont Derby LLP that conducted
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`his firm’s analysis of the Grounds for invalidity for the Petition (Id. ¶ 15), is the
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`attorney from Skiermont Derby LLP that directs and supervises the work
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`conducted by the lead and back-up counsel to the Petition, all of whom are
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`registered patent practitioners (Id. ¶ 17), and is lead counsel representing Canda
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`NK-2 in ANDA litigation concerning the same patent at issue here. (Id. ¶ 18).
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`4
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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). (Ex. 1041 ¶¶ 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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`5
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`October 27, 2016
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`Respectfully Submitted,
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`/Sarah E. Spires/
`Sarah E. Spires (Reg. No. 61,501)
`SKIERMONT DERBY LLP
`2200 Ross Ave., Ste. 4800W
`Dallas, Texas 75201
`P: 214-978-6600/F: 214-978-6601
`Lead Counsel for Petitioner
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`Dr. Parvathi Kota (Reg. No. 65,122)
`SKIERMONT DERBY LLP
`2200 Ross Ave., Ste. 4800W
`Dallas, Texas 75201
`P: 214-978-6600/F: 214-978-6621
`Back-Up Counsel for Petitioner
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`6
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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, by electronic means on October 27, 2016 at the following addresses of
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`record:
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`Dov P. Grossman (Reg. No. 72,525)
`WILLIAMS & CONNOLLY LLP
`725 Twelfth St. NW
`Washington, DC 20005
`Direct Phone: 202-434-5812
`Facsimile: 202-434-5029
`dgrossman@wc.com
`Lead Counsel for Patent Owner
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`Adam L. Perlman (pro hac vice)
`WILLIAMS & CONNOLLY LLP
`725 Twelfth St. NW
`Washington, DC 20005
`Direct Phone: 202-434-5244
`Facsimile: 202-434-5029
`aperlman@wc.com
`Back-Up Counsel for Patent Owner
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`John C. Demeter (Reg. No. 30,167)
`ELI LILLY AND COMPANY
`Lilly Corporate Center
`Indianapolis, IN 46285
`Direct Phone: 317-276-3785
`Facsimile: 317-276-3861
`Demeter_john_c@lilly.com
`Back-Up Counsel for Patent Owner
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`David M. Krinsky (Reg. No. 72,339)
`WILLIAMS & CONNOLLY LLP
`725 Twelfth St. NW
`Washington, DC 20005
`Direct Phone: 202-434-5338
`Facsimile: 202-480-8302
`dkrinsky@wc.com
`Back-Up Counsel for Patent Owner
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`James P. Leeds (Reg. No. 35,241)
`ELI LILLY AND COMPANY
`Lilly Corporate Center
`Indianapolis, IN 46285
`Direct Phone: 317-276-1667
`Facsimile: 317-277-6534
`leeds_james@lilly.com
`Back-Up Counsel for Patent Owner
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`John D. Polivick (Reg. No. 57,926)
`RAKOCZY MOLINO
`MAZZOCHI SIWIK LLP
`6 West Hubbard Street, Suite 500
`Chicago, Illinois 60654
`Tel: 312-527-2157
`Fax: 312-527-4205
`jpolivick@rmmslegal.com
`Lead Counsel for Petitioner Apotex
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`Deanne M. Mazzochi (Reg. No. 50,158)
`RAKOCZY MOLINO
`MAZZOCHI SIWIK LLP
`6 West Hubbard Street, Suite 500
`Chicago, Illinois 60654
`Tel: 312-527-2157
`Fax: 312-527-4205
`dmazzochi@rmmslegal.com
`Back-Up Counsel for Petitioner Apotex
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`Gary J. Speier (Reg. No. 45,458)
`CARLSON, CASPERS, VANDENBURGH,
`LINDQUIST AND SCHUMAN
`225 South Sixth Street, Suite 4200
`Minneapolis, MN 55402
`Tel: 612-436-9600
`Fax: 612-436-9605
`gspeier@carlsoncaspers.com
`Lead Counsel for Petitioner Teva
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`Cynthia Lambert Hardman
`(Reg. No. 45,458)
`GOODWIN PROCTER LLP
`The New York Times Building
`620 Eighth Avenue
`New York, New York 10018-1405
`Tel: 212-813-8800
`Fax: 212-355-3333
`chardman@goodwinprocter.com
`Back-Up Counsel for Petitioner Teva
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`Dated: October 27, 2016
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`Patrick C. Kilgore (Reg. No. 69,131)
`RAKOCZY MOLINO
`MAZZOCHI SIWIK LLP
`6 West Hubbard Street, Suite 500
`Chicago, Illinois 60654
`Tel: 312-527-2157
`Fax: 312-527-4205
`pkilgore@rmmslegal.com
`Back-Up Counsel for Petitioner Apotex
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`Mark D. Schuman (Reg. No. 31,197)
`CARLSON, CASPERS, VANDENBURGH,
`LINDQUIST AND SCHUMAN
`225 South Sixth Street, Suite 4200
`Minneapolis, MN 55402
`Tel: 612-436-9600
`Fax: 612-436-9605
`mschuman@carlsoncaspers.com
`Back-Up Counsel for Petitioner Teva
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`Respectfully Submitted,
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`/Sarah E. Spires/
`Sarah E. Spires (Reg. No. 61,501)
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`Lead Counsel for Petitioner
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