IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TEVA PHARMACEUTICALS USA, INC,
`Petitioner
`
`V.
`
`CORCEPT THERAPEUTICS, INC.
`Patent Owner
`
`Case PGR2019-00048
`
`Patent No. 10,195,214 B2
`
`DECLARATION OF WILLIAM H. MILLIKEN IN SUPPORT OF
`
`PETITIONER’S MOTION FOR PRO HAC VICE ADMISSION
`
`TEVA1 062
`Teva v. Corcept
`PG R201 9-00048
`
`TEVA1062
`Teva v. Corcept
`PGR2019-00048
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TEVA PHARMACEUTICALS USA, INC,
`Petitioner
`
`V.
`
`CORCEPT THERAPEUTICS, INC.
`Patent Owner
`
`Case PGR2019-00048
`
`Patent No. 10,195,214 B2
`
`DECLARATION OF WILLIAM H. MILLIKEN IN SUPPORT OF
`
`PETITIONER’S MOTION FOR PRO HAC VICE ADMISSION
`
`TEVA1 062
`Teva v. Corcept
`PG R201 9-00048
`
`TEVA1062
`Teva v. Corcept
`PGR2019-00048
`
`
`
`PGR2019—00048
`
`US. Patent No. 10,195,214
`
`I, William H. Milliken declare as follows:
`
`1.
`
`I am an Associate with the law firm of Sterne Kessler Goldstein &
`
`Fox PLLC. I represent and advise Petitioner Teva Pharmaceuticals USA, Inc.
`
`(“Teva”) in connection with the above—captioned post grant review (“PGR”)
`
`proceeding. I also represent Teva in connection with the underlying district court
`
`litigation (Corcept Therapeutics, Inc. v. Teva Pharmaceuticals USA, 1nc.,No.
`
`1:18-cv—03632 (D.N.J.)) on the patent at issue in this PGR proceeding, 10,195,214
`
`(“the ’214 patent”).
`
`2.
`
`I have been a member in good standing of the Bars of the State of
`
`Tennessee and the District of Columbia since 2014 and 2016, respectively. I am
`
`admitted to practice in several US district courts, the US. Court of Appeals for
`
`the Federal Circuit, the US. Court of Appeals for the First Circuit, the US. Court
`
`of Appeals for the Ninth Circuit, and the Supreme Court of the United States.
`
`3.
`
`I have not been suspended or disbarred from practice before any court
`
`or administrative body.
`
`4.
`
`No sanction or contempt citation has been imposed against me by any
`
`court or administrative body.
`
`5.
`
`I have never had an application for admission to practice before any
`
`court or administrative body denied.
`
`6.
`
`I practice litigation, primarily patent litigation, and have done so
`
`_1_
`
`
`
`IPR2019—00048
`
`US. Patent No. 10,195,214
`
`throughout my career as an attorney. I have litigated dozens of patent cases across
`
`the country, including in the US. District Court for the District of New Jersey; the
`
`US. District Court for the District of Delaware; and the US. District Court for the
`
`Eastern District of Texas. I have also briefed and argued cases in the US. Court of
`
`Appeals for the Federal Circuit.
`
`7.
`
`I have extensively reviewed the ’214 patent, its prosecution history
`
`and related materials, and the Patent Owner’s infringement contentions served in
`
`the litigation against Teva. Additionally, I was the primary drafter of Petitioner’s
`
`invalidity contentions in the litigation, and accordingly have gained significant
`
`familiarity with the invalidity issues in that case. These issues significantly overlap
`
`with the corresponding issues in this PGR proceeding. My involvement in the
`
`concurrent litigation has made me very familiar with the proposed invalidity
`
`grounds and the cited references in this proceeding.
`
`8.
`
`In this PGR proceeding, I have worked with lead counsel and backup
`
`counsel named in this proceeding to identify and analyze the references relied upon
`
`in the petition and to assist with drafting the petition.
`
`9.
`
`The prior-art references at issue in the PGR proceeding are also
`
`relevant in the underlying litigation in the case against Teva, and I have reviewed a
`
`vast amount of additional, related prior art for the invalidity contentions in the
`
`district—court litigation.
`
`
`
`10.
`
`l have conferred with Dr. Greenblatt, and I thoroughly understand Dr.
`
`Greenblatt’s testimony related to prior—art publications cited in this PGR
`
`IPR2019—00048
`
`US. Patent No. 10,195,214
`
`proceeding.
`
`11.
`
`Since 2016, I have represented Petitioner in connection with multiple
`
`patent litigations regarding various technologies, including, but not limited to, the
`
`mifepristone drug product at issue in this PGR. This includes the following
`
`litigations:
`
`Allergan Inc. v. Teva Pharmaceuticals USA, Inc. et al.,
`No. 2:15—cv—01455 (E.D. Tex.);
`
`Warner Chilcott (US), LLC et al. v. Teva Pharmaceuticals USA, Inc. et al.,
`No. 2:15—cv—01471 (ED. Tex.);
`
`Horizon Pharma Ireland Limited et al. v. Actavis Laboratories, UT, Inc,
`
`No. 1:14—cv—07992 (D.N.J.);
`
`Horizon Pharma Ireland Limited et al. v. Actavis Laboratories UT, Inc. et
`
`al., No. 1:15—CV-07742 (D.N.J.);
`
`Horizon Pharma Ireland Limited, et al. v. Actavis Laboratories UT, Inc. et
`
`al., No. 1:16—CV-OO645 (D.N.J.);
`
`Horizon Pharma USA, Inc. et al. v. Actavis Laboratories UT, Inc. et al.,
`No. 1:16—CV—05051 (D.N.J.);
`
`Horizon Pharma USA, Inc. et al. v. Actavis Laboratories UT, Inc.,
`
`No. 1:17-cv—03342 (D.N.J.);
`
`Sun Pharma Global FZE et al. v. Teva Pharmaceuticals USA, Inc,
`
`No. 1:18—CV—01552 (D. Del.);
`
`Vanda Pharmaceuticals Inc. v. Teva Pharmaceuticals USA, Inc,
`
`No. 1:18—CV-00560 (D. Del);
`
`Vanda Pharmaceuticals Inc. v. Teva Pharmaceuticals USA, Inc,
`
`-3-
`
`
`
`IPR2019-00048
`
`US. Patent No. 10,195,214
`
`No. 1:18-cv—00651 (D. Del); and
`
`Corcepz‘ Therapeutics, Inc. v. Teva Pharmaceuticals USA, Inc,
`No. 2:18-cv~03632 (D.N.J.)
`
`'12.
`
`Through this work, I have developed in—depth knowledge of the
`
`relevant issues in this proceeding. This knowledge includes my analysis of a
`
`significant number of patents, articles, books, and other materials regarding these
`
`technologies. My experience also includes knowledge gained from working closely
`
`with several technical experts from academia and industry. And I have participated
`
`in many meetings with Teva’s in—house employees regarding various technologies
`
`and applications, including, for example, as related to mifepristone.
`
`13. Within the past three years, I have not requested to appear pro hac
`
`vice before the Office.
`
`14.
`
`I have read and will comply with the Office Patent Trial Practice
`
`Guide and the Board’s Rules of Practice for Trials set forth in part 42 of the Code
`
`of Federal Regulations.
`
`15.
`
`I understand that I will be subject to the USPTO Rules of Professional
`
`Conduct set forth in 37 CPR. §§ 11.101 et seq. and disciplinaryjurisdiction
`
`pursuant to 37 C.F.R. § 11.19(a).
`
`16.
`
`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. I further declare that these statements were made with the
`
`
`
`IPR2019—00048
`
`US. Patent No. 10,195,214
`
`knowledge 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
`
`and that such willful false statements may jeopardize the validity of this
`
`proceeding.
`
`Date: all I”
`
`Respectfully submitted,
`
`74%; 1M
`
`William H. Milliken
`
`Sterne Kessler Goldstein & Fox PLLC
`
`District of Columbia, SS.
`Sub cr'bed and Sworn to before me)
`201.29
`this I
`day of
`73MB
`
`
`
`RNESTEEN Gl
`Egtary Public. District of Columbia
`
`
`
`My cummlulon axplm May 31. 2923
`
`
`
`
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