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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
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`NEPTUNE GENERICS, LLC
`Petitioner,
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`v.
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`CORCEPT THERAPEUTICS, INC.
`Patent Owner.
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`____________________
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`Case IPR2018-01494
`Patent No. 8,921,348 B2
`__________________
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`NEPTUNE GENERICS, LLC’S MOTION FOR
`PRO HAC VICE ADMISSION OF LEONARD A. GAIL
`UNDER 37 C.F.R. §42.10(c)
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`Mail Stop: PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`IPR2018-01494
`U.S. Patent No. 8,921,348
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`Pursuant to 37 C.F.R. § 42.10(c) and the Board’s notice of filing date
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`in the present case (see Paper No. 3), Petitioner Neptune Generics, LLC
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`(“Neptune”) respectfully moves for the pro hac vice admission of attorney
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`Leonard A. Gail, Esq. of Massey & Gail LLP in the present case.
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`A. Applicable Law
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`37 C.F.R. § 42.10(c) provides:
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`The Board may recognize counsel pro hac vice during a
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`proceeding upon a showing of good cause, subject to the
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`condition that lead counsel be a registered practitioner and to any
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`other conditions as the Board may impose. For example, where
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`the lead counsel is a registered practitioner, a motion to appear
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`pro hac vice by counsel who is not a registered practitioner may
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`be granted upon showing that counsel is an experienced litigating
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`attorney and has an established familiarity with the subject
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`matter at issue in the proceeding.
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`The Notice of Filing Date Accorded to Petition and Time for Filing Patent
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`Owner Preliminary Response (Paper No. 3) in this case further instructs:
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`IPR2018-01494
`U.S. Patent No. 8,921,348
`The parties are advised that under 37 C.F.R. § 42.10(c),
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`recognition of counsel pro hac vice requires a showing of good
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`cause. The parties are authorized to file motions for pro hac vice
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`admission under 37 C.F.R. § 42.10(c). Such motions shall be
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`filed in accordance with the “Order -- Authorizing Motion for
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`Pro Hac Vice Admission” in Case IPR2013-00639, Paper 7
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`[“Order”], a copy of which is available on the Board Web site
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`under “Representative Orders, Decisions, and Notices.”
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`The Order requires that a motion for pro hac vice admission must:
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`a. Contain a statement of facts showing there is good cause for the Board to
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`recognize counsel pro hac vice during the proceeding.
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`b. Be accompanied by an affidavit or declaration of the individual seeking to
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`appear attesting to the following:
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`i. Membership in good standing of the Bar of at least one State or the
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`District of Columbia;
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`ii. No suspensions or disbarments from practice before any court or
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`administrative body;
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`iii. No application for admission to practice before any court or
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`administrative body ever denied;
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`IPR2018-01494
`U.S. Patent No. 8,921,348
`iv. No sanctions or contempt citations imposed by any court or
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`administrative body;
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`v. The individual seeking to appear has read and will comply with the
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`Office Patent Trial Practice Guide and the Board’s Rules of Practice for
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`Trials set forth in part 42 of 37 C.F.R.;
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`vi. The individual will be subject to the USPTO Rules of Professional
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`Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary
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`jurisdiction under 37 C.F.R. § 11.19(a);
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`vii. All other proceedings before the Office for which the individual has
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`applied to appear pro hac vice in the last three (3) years; and
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`viii. Familiarity with the subject matter at issue in the proceeding.
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`Order at 2–3.
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`B. Statement of Facts Showing Good Cause for Pro Hac Vice Admission
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`of Leonard A. Gail
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`Pro hac vice admission of Mr. Gail is warranted under section 42.10(c)
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`and the principles set forth in the Order. Pursuant to the Order, the Declaration
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`of Leonard A. Gail (Ex. 1035, “Gail Decl.”) is filed herewith.
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`There is good cause for recognizing Mr. Gail pro hac vice in this case.
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`Mr. Gail is an experienced litigation attorney admitted to practice in Illinois
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`(Illinois State Bar No. 6199745). Gail Decl. ¶ 2.
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`4
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`IPR2018-01494
`U.S. Patent No. 8,921,348
`Mr. Gail has never been suspended or disbarred from practice before
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`any court or administrative body. Id. ¶ 3. No application of Mr. Gail for
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`admission to practice before any court or administrative body has ever been
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`denied. Id. No court or administrative body has ever imposed a sanction or
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`contempt citation on Mr. Gail. Id.
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`Mr. Gail has read and will comply with the Office Patent Trial Practice
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`Guide and Board’s Rules of Practice for Trials set forth in part 42 of 37 C.F.R.
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`Id. ¶ 4. Mr. Gail acknowledges and agrees that he will be subject to the
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`USPTO Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq.
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`and disciplinary jurisdiction under 37 C.F.R. § 11.19(a). Id.
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`Mr. Gail received his Bachelor of Arts Degree from Dartmouth College
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`in 1985, and his law degree from Harvard University in 1988. Id. ¶ 5. He is a
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`founding partner of Massey & Gail LLP (founded in 2008), with three decades
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`of experience in civil and criminal trials and litigation. Id. ¶ 6. He has also
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`been involved in litigation, trials, and counseling related to patent disputes
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`throughout much of his legal career. Id.
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`Mr. Gail also has a familiarity with the subject matter at issue in this
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`proceeding. He has been actively involved in analyzing and assisting with the
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`Petition for Inter Partes Review submitted in this proceeding. Id. ¶ 7.
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`IPR2018-01494
`U.S. Patent No. 8,921,348
`In view of Mr. Gail’s extensive legal training and familiarity with the
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`subject matter at issue in this proceeding, Neptune has a substantial need for
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`Mr. Gail’s involvement therein.
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` C. Conclusion
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`For the foregoing reasons, Neptune respectfully submits that there is
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`good cause for the Board to recognize Mr. Gail pro hac vice in this
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`proceeding.
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`Date: March 18, 2019
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`Respectfully Submitted,
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`By: /Kenneth M. Goldman/
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`Kenneth M. Goldman
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`Kenneth M. Goldman (Reg. No. 34,174)
`kgoldman@masseygail.com
`Christopher L. May (Reg. No. 53,286)
`cmay@masseygail.com
`MASSEY & GAIL LLP
`50 E. Washington Street, Suite 400
`Chicago, Illinois 60602
`Telephone: (312) 283-1590
`Fax: (312) 379-0467
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`Attorneys for Petitioner
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`6
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`IPR2018-01494
`U.S. Patent No. 8,921,348
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true and correct copy of the
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`above-captioned “Neptune Generics, LLC’s Motion For Pro Hac Vice
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`Admission of Leonard A. Gail Under 37 C.F.R. §42.10(c)” was served by
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`electronic mail on March 18, 2019 upon Patent Owner’s lead and backup
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`counsel at the following email addresses:
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`Robert Steinberg (Reg. No. 33,144)
`Latham & Watkins LLP
`555 Eleventh Street, NW, Ste. 1000
`Washington, DC 20004-1304
`bob.steinberg@lw.com
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`David P. Frazier (Reg. No. 47,576)
`Latham & Watkins LLP
`555 Eleventh Street, NW, Ste. 1000
`Washington, DC 20004-1304
`david.frazier@lw.com
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`Date: March 18, 2019
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`50 E. Washington Street
`Suite 400
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`Chicago, Illinois 60602
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`/Kenneth M. Goldman/
`Kenneth M. Goldman
`Reg. No. 34,174
`Attorney for Petitioner
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