Trials@uspto.gov
`571-272-7822
`
` Paper No. 16
`
`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 Patent Owner’s Motion for Pro Hac Vice
`Admission of Michelle L. Ernst
`37 C.F.R. § 42.10
`
`
`
`
`
`
`
`
`
`571-272-7822
`
` Paper No. 16
`
`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 Patent Owner’s Motion for Pro Hac Vice
`Admission of Michelle L. Ernst
`37 C.F.R. § 42.10
`
`
`
`
`
`
`
`
`
`
`Case IPR2018-01494
`Patent 8,921,348 B2
`
`
`Corcept Therapeutics Inc. (“Patent Owner”) filed a motion for pro hac vice
`admission of Michelle L. Ernst (“Motion”) (Paper 10), accompanied by a
`Declaration of Ms. Ernst in support of the Motion (“Declaration”) (Ex. 2008).
`Petitioner has not opposed the Motion. For the reasons provided below, Patent
`Owner’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 Patent Owner, Robert Steinberg, a
`registered practitioner, filed the Motion. Mot. 4. In the Motion, Patent Owner
`states there is good cause for the Board to recognize Ms. Ernst pro hac vice during
`this proceeding because she is “an experienced and technically-trained litigation
`attorney with an established familiarity with the subject matter at issue in this
`proceeding.” Id.
`In her Declaration, Ms. Ernst attests that she 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). Ms. Ernst also
`states that she 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
`
`
`
`2
`
`
`
`Case IPR2018-01494
`Patent 8,921,348 B2
`
`USPTO Rules of Professional Conduct and disciplinary jurisdiction under 37
`C.F.R. § 11.19(a) (id. ¶ 4).
`Based on the facts set forth in the Motion and the accompanying
`Declaration, Patent Owner would have established good cause for pro hac vice
`admission of Ms. Ernst. However, the Declaration of Ms. Ernst has not been
`properly executed under 37 C.F.R. § 1.68 or under 28 U.S.C. 1746. Although the
`Declaration states Ms. Ernst 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, Patent Owner’s
`Motion is conditionally granted upon Patent Owner filing a properly executed
`declaration in accordance with 37 C.F.R. § 1.68 or under 28 U.S.C. § 1746 for Ms.
`Ernst within ten (10) business days.
`We also note that Patent Owner 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 Ms. Ernst in this proceeding. Therefore,
`Patent Owner must submit a Power of Attorney within ten (10) business days.
`
`Accordingly, it is
`ORDERED that the Patent Owner’s Motion for pro hac vice for Michelle L.
`Ernst is conditionally granted;
`
`
`
`3
`
`
`
`Case IPR2018-01494
`Patent 8,921,348 B2
`
`
`FURTHER ORDERED that Patent Owner shall submit, before Ms. Ernst
`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;
`FURTHER ORDERED that Patent Owner shall file updated Mandatory
`Notices in accordance with 37 C.F.R. § 42.8(b)(3), identifying Ms. Ernst as backup
`counsel;
`FURTHER ORDERED that, within ten (10) business days of the issuance of
`this Order, Patent Owner shall submit a Power of Attorney for Ms. Ernst in
`accordance with 37 C.F.R. § 42.10(b);
`FURTHER ORDERED that Patent Owner shall continue to have a
`registered practitioner represent it as lead counsel for this proceeding, but that Ms.
`Ernst is authorized to represent Patent Owner only as back-up counsel;
`FURTHER ORDERED that Ms. Ernst 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 Ms. Ernst 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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