`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`
`MYLAN TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`MONOSOL RX, LLC,
`Patent Owner.
`
`_____________________________
`
`Case IPR2017-00200
`Patent 8,603,514 B2
`_____________________________
`
`DECLARATION OF ELHAM F. STEINER IN SUPPORT OF
`PETITIONER’S MOTION FOR PRO HAC VICE ADMISSION
`
`
`
`0001
`
`MYLAN - EXHIBIT 1029
`Mylan Technologies, Inc. v. Monosol RX, LLC
`IPR2017-00200
`
`
`
`I, ELHAM F. STEINER, hereby declare the following:
`
`1.
`
`I am a member in good standing at the state bars of New York and
`
`
`
`California, as well as numerous United States District Courts and the United States
`
`Court of Appeals for the Federal Circuit.
`
`2.
`
`I have not been suspended or disbarred from practice before any court
`
`or administrative body.
`
`3.
`
`I have never had an application for admission to practice before any
`
`court or administrative body denied.
`
`4.
`
`No sanction or contempt citation has been imposed against me by any
`
`court or administrative body.
`
`5.
`
`I have read and will comply with the Office of Patent Trial Practice
`
`Guide and the Board’s Rules of Practice for Trials set forth in part 42 of 37 C.F.R.
`
`6.
`
`I will be subject to the USPTO Rules of Professional Conduct set
`
`forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction under 37 C.F.R.
`
`§§ 11.19(a).
`
`7.
`
`I am a patent litigation attorney with experience representing clients in
`
`a number of United States District Courts. I have experience in all stages of
`
`litigation, from preliminary injunction through trial and appeal, and across a wide
`
`range of technologies, including pharmaceutical drugs, formulations, and dosages.
`
`My biography is attached hereto as Exhibit A.
`
`1
`
`0002
`
`
`
`8.
`
`In a related matter involving U.S. Patent No. 8,603,514, I represent
`
`
`
`Petitioner Mylan Technologies Inc. in consolidated litigation currently pending in
`
`the District of Delaware. See Indivior, Inc. et al. v. Mylan Technologies Inc. et al.,
`
`No. 15-cv-1016-RGA. As a result, I have reviewed U.S. Patent No. 8,603,514, its
`
`relevant file history, and the prior art (including the prior art at issue in this Inter
`
`Partes Review proceeding). In addition, I have significant familiarity with claim
`
`construction issues pertaining to U.S. Patent No. 8,603,514.
`
`9.
`
`I have performed a detailed review of the parties’ submissions in the
`
`present Inter Partes Review proceeding and the Board’s Decision instituting Inter
`
`Partes Review of U.S. Patent No. 8,603,514. Additionally, I serve an essential
`
`role in this Inter Partes Review proceeding, including working with the present
`
`Lead Counsel to prepare the Petitioner’s Petition. Based on the foregoing, I have a
`
`detailed understanding of U.S. Patent No. 8,603,514 and the substantive and
`
`technical issues involved in this proceeding.
`
`10.
`
`I have not previously applied for leave to appear pro hac vice before
`
`the Office.
`
`11.
`
`I hereby declare that all statements made herein of my own
`
`knowledge are true and that all statements made on information and belief are
`
`believed to be true; and further that these statements are made with the knowledge
`
`2
`
`0003
`
`
`
`that willful false statements and the like so made are punishable by fine or
`
`
`
`imprisonment, or both, under Section 1001 of Title 18 of the United States Code.
`
`
`
`Date: August 17, 2017
`
`/ Elham F. Steiner /
`Elham F. Steiner
`
`
`
`3
`
`0004
`
`
`
`
`
`EXHIBIT A
`EXHIBIT A
`
`
`
`
`
`0005
`
`0005
`
`
`
`Elham Firouzi Steiner - Attorney Biography - Wilson Sonsini Goodrich & Rosati
`
`Page 1 of 2
`
`ELHAM FIROUZI STEINER
`
`Of Counsel
`
`Litigation
`
`EXPERIENCE:
`
`Ellie Steiner is an attorney in the San Diego office of Wilson Sonsini Goodrich &
`Rosati. Her practice focuses on patent litigation and related intellectual property
`matters, with an emphasis on ANDA matters arising under the Hatch-Waxman
`Act. Ellie has represented clients in patent litigations covering a wide range of
`technologies, including biotechnology, pharmaceuticals, life sciences, software,
`semiconductor processing, and the Internet, in prominent federal courts and
`before the International Trade Commission. She also has litigated a number of
`trademark and copyright cases.
`
`In addition to litigation, Ellie counsels clients on a wide range of intellectual
`property licensing issues, including drafting and negotiating software and patent
`licenses. She also counsels clients regarding patent validity and infringement in
`anticipation of product development.
`
`Prior to joining Wilson Sonsini Goodrich & Rosati, Ellie was an associate at
`Kilpatrick Townsend & Stockton. She was previously an associate at Fish &
`Neave, where she focused on patent litigation.
`
`SELECT REPRSENTATIVE MATTERS:
`
`(cid:1) Cephalon Inc. et al. v. Mylan Pharmaceuticals Inc. (D. Del.) Represented
`Mylan Pharmaceuticals in ANDA patent action regarding Nuvigil®
`(armodafinil).
`
`(cid:1) In re Certain Semiconductor Integrated Circuits Using Tungsten
`Metallization (ITC) Represented the complainant at the International Trade
`Commission against 23 respondents.
`
`(cid:1) Perfect 10 Inc. v. Amazon.com Inc. et al. (C.D. Cal.) Represented
`defendants A9.com and Alexa Internet against claims that search-engine
`capabilities rendered them liable for copyright infringement.
`
`(cid:1) Anthurium Solutions Inc. v. Spheris Inc., Medquist Inc., et al. (E.D. Tex.)
`Counsel for Spheris, a medical transcription company, in patent
`infringement action related to software for medical transcription.
`
`(cid:1) Area 55 Inc. v. Celeras LLC et al. (S.D. Cal.) Represented Area 55 in patent
`infringement litigation involving wine aeration.
`
`(cid:1) Massachusetts Eye and Ear Infirmary v. Novartis Ophthalmics, Inc. et al. (D.
`Mass.) Counsel for MEEI in patent infringement litigation involving treatment
`of age-related macular degeneration.
`
`(cid:1) Praxair Inc. v. ATMI Inc. (D. Del.) Represented Praxair in patent litigation
`involving gas delivery systems for semiconductor fabrication.
`
`https://www.wsgr.com/WSGR/DBIndex.aspx?SectionName=attorneys/BIOS/12896.htm
`
`8/15/2017
`
`0006
`
`
`
`Elham Firouzi Steiner - Attorney Biography - Wilson Sonsini Goodrich & Rosati
`
`Page 2 of 2
`
`EDUCATION:
`
`(cid:1) J.D., Duke University School of Law
`
`(cid:1) B.S., Molecular Biology, University of California, San Diego
`
`ADMISSIONS:
`
`(cid:1) State Bar of California
`
`(cid:1) State Bar of New York
`
`(cid:1) U.S. District Court for the Central District of California
`
`(cid:1) U.S. District Court for the Eastern District of California
`
`(cid:1) U.S. District Court for the Northern District of California
`
`(cid:1) U.S. District Court for the Southern District of California
`
`(cid:1) U.S. District Court for the Eastern District of New York
`
`(cid:1) U.S. District Court for the Southern District of New York
`
`Contact Information
`
`12235 El Camino Real
`Suite 200
`San Diego, CA 92130
`Phone | 858-350-2246
`esteiner@wsgr.com
`
`Areas of Expertise
`
`Patent Litigation
`
`https://www.wsgr.com/WSGR/DBIndex.aspx?SectionName=attorneys/BIOS/12896.htm
`
`8/15/2017
`
`0007
`
`