Filed on behalf of: Corcept Therapeutics, Inc.
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`Entered: November 21, 2018
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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.
`_______________________
`Case IPR2018-01494
`U.S. Patent No. 8,921,348
`_______________________
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`
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`PATENT OWNER’S MOTION FOR
`PRO HAC VICE ADMISSION OF MICHELLE L. ERNST
`UNDER 37 C.F.R. § 42.10(c)
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`Entered: November 21, 2018
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`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
`U.S. Patent No. 8,921,348
`_______________________
`
`
`
`PATENT OWNER’S MOTION FOR
`PRO HAC VICE ADMISSION OF MICHELLE L. ERNST
`UNDER 37 C.F.R. § 42.10(c)
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`IPR2018-01494 (USP 8,921,348)
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`
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`Patent Owner’s Motion for
`PHV Admission
`
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`I.
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`RELIEF REQUESTED
`Under 37 C.F.R. § 42.10(c) and the Notice of Filing Date Accorded to
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`Petition and Time for Filing Patent Owner Preliminary Response (Paper No. 3),
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`Patent Owner Corcept Therapeutics, Inc. (“Patent Owner”) respectfully requests
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`the pro hac vice admission of attorney Michelle L. Ernst, Esq. of Latham &
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`Watkins LLP in this proceeding.
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`II. LEGAL STANDARD
`Under 37 C.F.R. § 42.10(c):
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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
`counsel is an experienced litigating attorney and has an established
`familiarity with the subject 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) further instructs:
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`The parties are advised that under 37 C.F.R. § 42.10(c), recognition of
`counsel pro hac vice requires a showing of good cause. The parties
`are authorized to file motions for pro hac vice admission under 37
`C.F.R. § 42.10(c). Such motions shall be filed in accordance with the
`“Order -- Authorizing Motion for Pro Hac Vice Admission” in Case
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`1
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`IPR2018-01494 (USP 8,921,348)
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`Patent Owner’s Motion for
`PHV Admission
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`IPR2013-00639, Paper 7, a copy of which is available on the Board
`Web site under “Representative Orders, Decisions, and Notices.”
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`(Id. at 2.) The above referenced “Order - - Authorizing Motion for Pro Hac Vice
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`Admission” further provides:
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`A motion for pro hac vice admission must:
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`a.
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`Contain a statement of facts showing there is good cause for the Board
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`to recognize counsel pro hac vice during the proceeding.
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`b.
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`Be accompanied by an affidavit or declaration of the individual
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`seeking to appear attesting to the following:
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`i. Membership in good standing of the Bar of at least one State or
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`the District of Columbia;
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`ii.
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`No suspensions or disbarments from practice before any court
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`or administrative body;
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`iii.
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`No application for admission to practice before any court or
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`administrative body ever denied;
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`iv.
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`No sanctions or contempt citations imposed by any court or
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`administrative body;
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`v.
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`The individual seeking to appear has read and will comply with
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`the Office Patent Trial Practice Guide and Board’s Rules of
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`Practice for Trials set forth in part 42 of 37 C.F.R.;
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`2
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`IPR2018-01494 (USP 8,921,348)
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`vi.
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`
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`Patent Owner’s Motion for
`PHV Admission
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`The individual will be subject to the USPTO Rules of
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`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);
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`vii.
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`All other proceedings before the Office for which the individual
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`has applied to appear pro hac vice in the last (3) years; and
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`viii.
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`Familiarity with the subject matter at issue in the proceeding.
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`(IPR2013-00639, Paper No. 7 at 3.) As set forth below, and in the accompanying
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`Declaration of Michelle L. Ernst (Ex. 2008, “Ernst Decl.”), each of these
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`requirements is satisfied here.
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`III. STATEMENT OF FACTS SHOWING GOOD CAUSE FOR THE
`BOARD TO RECOGNIZE MICHELLE L. ERNST PRO HAC VICE IN
`THIS PROCEEDING
`Ms. Ernst is a member in good standing of the State Bar of New York (Bar
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`No. 5053483) and the State Bar of New Jersey (Bar. No. 039342011). (Ernst Decl.
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`¶ 2.) Ms. Ernst has never been suspended or disbarred from practice before any
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`court or administrative body. (Id. ¶ 3.) No application of Ms. Ernst for admission
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`to practice before any court or administrative body has ever been denied. (Id.)
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`Nor has any court or administrative body imposed sanctions or contempt citations
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`against Ms. Ernst. (Id.) Ms. Ernst has read, fully understands, and will comply
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`with the Office Patent Trial Practice Guide and the Board’s Rules of Practice for
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`Trials set forth in part 42 of the C.F.R. (Id. ¶ 4.) Ms. Ernst acknowledges and
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`3
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`
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`IPR2018-01494 (USP 8,921,348)
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`Patent Owner’s Motion for
`PHV Admission
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`agrees that she will be subject to the USPTO Rules of Professional Conduct set
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`
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`forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction under 37 C.F.R. §
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`11.19(a). (Id.)
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`Patent Owner’s lead counsel in this proceeding, Robert Steinberg, is a
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`registered practitioner (Reg. No. 33,144). Backup counsel, David P. Frazier, is
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`also a registered practitioner (Reg. No. 47,576). Moreover, as set forth below (and
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`in her accompanying declaration), Ms. Ernst is both an experienced and
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`technically-trained litigation attorney with an established familiarity with the
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`subject matter at issue in this proceeding.
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`
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`Ms. Ernst received a Bachelor of Science from the University of Connecticut
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`in 2005, and a law degree from Benjamin N. Cardozo School of Law, Yeshiva
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`University in 2011. (Id. ¶ 5.) Ms. Ernst is currently a member of Latham &
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`Watkins’ intellectual property group, with a focus on patent litigation. (Id. ¶ 6.)
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`Ms. Ernst has practiced in this group for over one year, and prior to joining Latham
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`& Watkins, practiced intellectual property and patent litigation at other large law
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`firms for approximately six years. (Id.)
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`Ms. Ernst also has an established familiarity with the subject matter at issue
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`in this proceeding. Ms. Ernst has been actively involved in analyzing and assisting
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`with the Petition for Inter Partes Review concerning U.S. Patent No. 8,921,348
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`(“’348 patent”) submitted in this proceeding. (Id. at ¶ 7.) She has not appeared pro
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`4
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`IPR2018-01494 (USP 8,921,348)
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`
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`Patent Owner’s Motion for
`PHV Admission
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`hac vice in any proceedings before the USPTO. (Id. at ¶ 8.)
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`In view of Ms. Ernst’s technical and legal training and knowledge of the
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`subject matter at issue in this proceeding, Patent Owner has a substantial need for
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`Ms. Ernst’s pro hac vice admission and her involvement in the continued
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`prosecution of this proceeding.
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`IV. CONCLUSION
`For the foregoing reasons, Patent Owner respectfully requests that Ms. Ernst
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`be admitted pro hac vice in this proceeding.
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`Dated: November 21, 2018
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`Respectfully submitted,
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`By: / Robert Steinberg /
`
`Robert Steinberg (Reg. No. 33,144)
`bob.steinberg@lw.com
`David P. Frazier (Reg. No. 47,576)
`david.frazier@lw.com
`Latham & Watkins LLP
`555 Eleventh Street, NW, Ste. 1000
`Washington, DC 20004-1304
`Telephone: 202.637.2200
`Fax: 202.637.2201
`
`Counsel for Patent Owner
`Corcept Therapeutics, Inc.
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`5
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`IPR2018-01494 (USP 8,921,348)
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`
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`Patent Owner’s Motion for
`PHV Admission
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`
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), I certify that on November 21, 2018, a
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`copy of Patent Owner’s Motion for Pro Hac Vice Admission of Michelle L.
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`Ernst Under 37 C.F.R. § 42.10(c) was served by electronic mail on Petitioner’s
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`lead and backup counsel at the following email addresses:
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`Kenneth M. Goldman (Reg. No. 34,174)
`MASSEY & GAIL LLP
`50 E. Washington Street, Suite 400
`Chicago, IL 60602
`kgoldman@masseygail.com
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`Christopher L. May (Reg. No. 53,286)
`MASSEY & GAIL LLP
`1325 G Street N.W., Suite 500
`Washington, DC 20005
`cmay@masseygail.com
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`Respectfully submitted,
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`By: / Robert Steinberg /
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`Robert Steinberg (Reg. No. 33,144)
`bob.steinberg@lw.com
`Latham & Watkins LLP
`555 Eleventh Street, NW, Ste. 1000
`Washington, DC 20004-1304
`Telephone: 202.637.2200
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`
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`Counsel for Patent Owner
`Corcept Therapeutics, Inc.
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