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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TEVA PHARMACEUTICALS USA, INC.,
`Petitioner
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`v.
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`CORCEPT THERAPEUTICS, INC.
`Patent Owner
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`Case PGR2019-00048
`Patent No. 10,195,214 B2
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`PETITIONER’S MOTION FOR PRO HAC VICE ADMISSION OF UMA N.
`EVERETT 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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`PGR2019-00048
`Patent 10,195,214
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`I.
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`Introduction
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`Pursuant to 37 C.F.R. § 42.10(c), Petitioner Teva Pharmaceuticals USA, Inc.
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`(“Teva”) respectfully requests that the Board recognize Uma N. Everett as counsel
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`pro hac vice in this proceeding.
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`Where the lead counsel is a registered practitioner, a non-registered
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`practitioner may be permitted to appear pro hac vice “upon a showing that counsel
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`is an experienced litigating attorney and has established familiarity with the subject
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`matter at issue in the proceeding.” 37 C.F.R. § 42.10(c); Unified Patents, Inc. v.
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`Parallel Iron, LLC, Case IPR2013-00639 (PTAB Oct. 15, 2013) (Paper 7) (setting
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`forth requirements for pro hac vice admission).
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`As set forth in the accompanying Declaration (TEVA1061), Ms. Everett is a
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`Director at Sterne Kessler Goldstein & Fox PLLC and a patent-litigation attorney
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`with significant experience advising clients regarding patent matters, including as
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`counsel in litigation involving Teva. Ms. Everett also represents Teva in
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`connection with the underlying district-court litigation on the patent at issue in this
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`proceeding, i.e., U.S. Patent No. 10,195,214 (“the ’214 patent”). See Corcept
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`Therapeutics, Inc. v. Teva Pharmaceuticals USA, Inc. et al., No. 1:18-cv-3632
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`(D.N.J.). Based on the underlying litigation and the other facts detailed below and
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`in her declaration, Ms. Everett has significant familiarity with the particular subject
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`matter in this PGR proceeding.
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`PGR2019-00048
`Patent 10,195,214
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`This motion is authorized by the Notice of Filing Date Accorded that was
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`mailed on May 24, 2019. See Paper No. 3 at 2.
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`II.
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`Statement of Facts
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`As detailed in her declaration, Ms. Everett practices litigation, primarily
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`patent-infringement litigation, and has done so throughout her career as an
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`attorney. She has litigated many patent cases across the country, including in
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`Delaware, New Jersey, and the International Trade Commission. She is familiar
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`with the subject matter at issue in this proceeding because of her work on the
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`concurrent district-court case involving the ’214 patent.
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`Ms. Everett is a member in good standing of the Bar of the District of
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`Columbia and is admitted to practice in numerous federal courts, including several
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`U.S. district courts, the U.S. Court of Appeals for the Federal Circuit, and the
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`Third Circuit. She has never been suspended or disbarred from practice before any
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`court or administrative body; never been denied admission to practice before any
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`court or administrative body; and never received sanctions or contempt citations
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`from any court or administrative body. She has read and will comply with the
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`PTO’s Patent Trial Practice Guide and the Board’s Rules of Practice set forth in 37
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`C.F.R., part 42. She also understands that she will be subject to the USPTO Rules
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`of Professional 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). Moreover, Ms. Everett will work in this
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`PGR2019-00048
`Patent 10,195,214
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`proceeding with lead counsel Deborah Sterling, a registered practitioner. Ms.
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`Everett has previously requested pro hac vice admission before the PTAB in
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`Argentum Pharmaceuticals LLC et al v. Cipla Limited et al., IPR2017-00807
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`(PTAB), and was admitted.
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`III. Good Cause Exists For This Motion
`Petitioner requests that the Board recognize Ms. Everett as counsel pro hac
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`vice because Ms. Everett serves a unique and critical role for Teva in this
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`proceeding. Ms. Everett has substantial experience and expertise representing Teva
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`in the concurrent litigation involving the ’214 patent. Given the posture of the
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`court litigation, significant financial resources in the underlying district-court
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`litigation have been expended. Ms. Everett’s knowledge of these litigation matters
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`is important for purposes of this proceeding for several reasons, including ensuring
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`consistency between Teva’s position in those matters and in this proceeding.
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`Ms. Everett has extensively reviewed the ’214 patent and gained significant
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`familiarity with the invalidity issues in the concurrent litigation, which
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`significantly overlap with the corresponding issues in this PGR proceeding
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`involving the ’214 patent. Ms. Everett was actively involved in analyzing and
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`assessing in the intrinsic record and the prior-art references relied upon in the
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`Petition, as many of these references are relevant in the concurrent litigation
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`matter. Additionally, Ms. Everett worked on Petitioner’s invalidity contentions in
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`PGR2019-00048
`Patent 10,195,214
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`the litigation. Ms. Everett thus has a detailed understanding of the ’214 patent and
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`the substantive and technical issues involved in this proceeding.
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`Finally, Ms. Everett’s substantial experience and expertise with the
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`pharmaceutical arts makes her uniquely positioned to represent Teva in this PGR
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`proceeding. Ms. Everett’s expertise with the technical subject matter of this PGR
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`proceeding extends beyond her involvement with the Petition and the concurrent
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`litigation matter. Ms. Everett has been involved in multiple prior litigations
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`regarding pharmaceutical technologies. She lists these proceedings in paragraph 7
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`of her declaration. As part of these proceedings, Ms. Everett has analyzed a
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`significant number of patents, articles, and books related to such technologies. She
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`has also worked closely with experts related to such technologies, from academia
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`and industry.
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`If the Board denies the present Motion, not only is Teva denied its choice of
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`counsel, but it would also be prejudiced by having to undertake the burdensome
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`task—at great cost—to prepare another attorney to replace Ms. Everett’s specific
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`combination of familiarity with the concurrent litigation, the ’214 patent, the
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`asserted prior-art references, and the relevant pharmaceutical technologies.
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`Teva has repeatedly retained Ms. Everett and her colleagues regarding
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`disputes involving patents in this field of technology in order to provide continuity
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`PGR2019-00048
`Patent 10,195,214
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`across cases involving related technologies, and thus Teva would be prejudiced if
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`Ms. Everett could not fully represent its interests here. Accordingly, Teva
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`respectfully requests that the Board avoid that prejudice and grant this Motion.
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`IV. Declaration of Individual Seeking to Appear
`This Motion for Pro Hac Vice Admission is accompanied by the Declaration
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`of Uma N. Everett (TEVA1061), as required by the “Order Authorizing Motion for
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`Pro Hac Vice Admission” in Case IPR2013-00639, Paper 7, a copy of which is
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`available on the Board Web site under “Representative Orders, Decisions, and
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`Notices.”
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`Petitioner submits that there is good cause under 37 C.F.R. § 42.10(c) for the
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`Board to recognize Uma N. Everett as counsel pro hac vice during this proceeding.
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` Respectfully Submitted,
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` STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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` Deborah Sterling, Ph.D.
`Date: September 11, 2019
` Lead Attorney for Petitioner
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`1100 New York Avenue, N.W. Registration No. 62,732
`Washington, D.C. 20005-3934
`(202) 371-2600
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`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
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`The undersigned hereby certifies that the above-captioned “Petitioner’s
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`Motion For Pro Hac Vice Admission of Uma N. Everett Under 37 C.F.R.
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`§ 42.10(C),” along with Exhibit TEVA1061, was served in its entirety upon the
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`Patent Owner on September 11, 2019, via email:
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`F. Dominic Cerrito
`Eric C. Stops
`John P. Galanek
`Frank C. Calvosa
`Quinn Emanuel Urquhart & Sullivan, LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`nickcerrito@quinnemanuel.com
`ericstops@quinnemanuel.com
`johngalanek@quinnemanuel.com
`frankcalvosa@quinnemanuel.com
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` STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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` Deborah Sterling, Ph.D.
`Date: September 11, 2019
` Lead Attorney for Petitioner
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`1100 New York Avenue, N.W. Registration No. 62,732
`Washington, D.C. 20005-3934
`(202) 371-2600
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