throbber
Trials@uspto.gov
`571-272-7822
`
` Paper No. 15
`
`Date Entered: March 27, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NEPTUNE GENERICS, LLC,
`Petitioner,
`
`v.
`
`CORCEPT THERAPEUTICS, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-01494
`Patent 8,921,348 B2
`____________
`
`
`
`Before ROBERT A. POLLOCK, and DAVID COTTA, Administrative Patent
`Judges.
`
`COTTA, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Conditionally Granting Petitioner’s Motion for Pro Hac Vice
`Admission of Leonard A. Gail
`37 C.F.R. § 42.10
`
`
`
`
`
`
`
`
`

`

`Case IPR2018-01494
`Patent 8,921,348 B2
`
`
`Petitioner Neptune Generics, LLC (“Petitioner”) filed a motion for pro hac
`vice admission of Leonard A. Gail (“Motion”) (Paper 14), accompanied by a
`Declaration of Mr. Gail in support of the Motion (“Declaration”) (Ex. 1035).
`Patent Owner has not opposed the Motion. For the reasons provided below,
`Petitioner’s Motion is conditionally granted.
`Under 37 C.F.R. § 42.10(c), the Board may recognize counsel pro hac vice
`during a proceeding upon a showing of good cause. In authorizing a motion for
`pro hac vice admission, the Board requires the moving party to provide a statement
`of facts showing there is good cause for the Board to recognize counsel pro hac
`vice and an affidavit or declaration of the individual seeking to appear in the
`proceeding. See Paper 4, 2 (citing Unified Patents, Inc. v. Parallel Iron, LLC, Case
`IPR2013-00639 (PTAB Oct. 15, 2013) (Paper 7) (representative “Order –
`Authorizing Motion for Pro Hac Vice Admission”)).
`In this proceeding, lead counsel for Petitioner, Kenneth M. Goldman, a
`registered practitioner, filed the Motion. Mot. 6. In the Motion, Petitioner states
`there is good cause for the Board to recognize Mr. Gail pro hac vice during this
`proceeding because he is “an experienced litigation attorney” and “has a familiarity
`with the subject matter at issue in this proceeding.” Id. at 4–5.
`In his Declaration, Mr. Gail attests that he has never been suspended or
`disbarred by any court or administrative body, has not been denied for admission
`to practice before any court or administrative body, and has not been sanctioned or
`cited for contempt by any court or administrative body (Dec. ¶ 3). Mr. Gail also
`states that he has read and will comply with the Office Patent Trial Practice Guide
`and the Board’s rules as set for in 37 C.F.R. § 42, and agrees to be subject to the
`USPTO Rules of Professional Conduct and disciplinary jurisdiction under 37
`C.F.R. § 11.19(a) (id. ¶ 4).
`
`
`
`2
`
`

`

`Case IPR2018-01494
`Patent 8,921,348 B2
`
`
`Based on the facts set forth in the Motion and the accompanying
`Declaration, Petitioner has would have established good cause for pro hac vice
`admission of Mr. Gail. However, the Declaration of Mr. Gail has not been
`properly executed under 37 C.F.R. § 1.68 or under 28 U.S.C. § 1746. Although the
`Declaration states Mr. Gail has “personal knowledge of the facts set forth in this
`declaration” (Dec. ¶ 1), 37 C.F.R. § 1.68 requires the “declarant must set forth in
`the body of the declaration that all statements made of the declarant’s own
`knowledge are true and that all statements made on information and belief are
`believed to be true.” Nor does the Declaration verify that the declarations are “true
`under penalty of perjury” under 28 U.S.C. § 1746. Accordingly, Petitioner’s
`Motion is conditionally granted upon Petitioner filing a properly executed
`declaration in accordance with 37 C.F.R. § 1.68 or under 28 U.S.C. § 1746 for Mr.
`Gail within ten (10) business days.
`We also note that Petitioner should update its mandatory notices, as required
`by 37 C.F.R. § 42.8, and update its counsel information in the PTAB E2E filing
`system. We further note, a Power of Attorney in accordance with 37 C.F.R.
`§ 42.10(b) has not been submitted for Mr. Gail in this proceeding. Therefore,
`Petitioner must submit a Power of Attorney within ten (10) business days.
`
`Accordingly, it is
`ORDERED that the Petitioner’s Motion for pro hac vice for Leonard A. Gail
`is conditionally granted;
`FURTHER ORDERED that Petitioner shall submit, before Mr. Gail takes
`any actions in this proceeding, a properly executed declaration in accordance with
`37 C.F.R. § 1.68 or under 28 U.S.C. § 1746 within ten (10) business days;
`
`
`
`3
`
`

`

`Case IPR2018-01494
`Patent 8,921,348 B2
`
`
`FURTHER ORDERED that Petitioner shall file updated Mandatory Notices
`in accordance with 37 C.F.R. § 42.8(b)(3), identifying Mr. Gail as backup counsel;
`FURTHER ORDERED that, within ten (10) business days of the issuance of
`this Order, Petitioner shall submit a Power of Attorney for Mr. Gail in accordance
`with 37 C.F.R. § 42.10(b);
`FURTHER ORDERED that Petitioner shall continue to have a registered
`practitioner represent it as lead counsel for this proceeding, but that Mr. Gail is
`authorized to represent Petitioner only as back-up counsel;
`FURTHER ORDERED that Mr. Gail shall comply with the Office Patent
`Trial Practice Guide, as updated by the Office Patent Trial Practice Guide August
`2018 Update, 83 Federal Register 39,989 (Aug. 13, 2018), and the Board’s Rules
`of Practice for Trials, as set forth in Part 42 of 37 C.F.R.; and
`FURTHER ORDERED that Mr. Gail is subject to the Office’s disciplinary
`jurisdiction under 37 C.F.R. § 11.19(a), and the USPTO Rules of Professional
`Conduct set forth in 37 C.F.R. §§ 11.101 et seq.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`4
`
`

`

`Case IPR2018-01494
`Patent 8,921,348 B2
`
`PETITIONER:
`
`Kenneth Goldman
`MASSEY & GAIL LLP
`kgoldman@masseygail.com
`
`
`
`PATENT OWNER:
`
`Bob Steinberg
`David Frazier
`LATHAM & WATKINS LLP
`Bob.Steinberg@lw.com
`David.Frazier@lw.com
`
`
`
`
`5
`
`

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