`
`
`
`
`
`
`
`
`
`
`
`
`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
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`PETITIONER’S MOTION FOR PRO HAC VICE ADMISSION OF
`WILLIAM H. MILLIKEN UNDER 37 C.F.R. § 42.10(c)
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`PGR2019-00048
`Patent 10,195,214
`
`I.
`
`Introduction
`
`Pursuant to 37 C.F.R. § 42.10(c), Petitioner Teva Pharmaceuticals USA, Inc.
`
`(“Teva”) respectfully requests that the Board recognize William H. Milliken as
`
`counsel pro hac vice in this proceeding.
`
`Where the lead counsel is a registered practitioner, a non-registered
`
`practitioner may be permitted to appear pro hac vice “upon a showing that counsel
`
`is an experienced litigating attorney and has established familiarity with the subject
`
`matter at issue in the proceeding.” 37 C.F.R. § 42.10(c); Unified Patents, Inc. v.
`
`Parallel Iron, LLC, Case IPR2013-00639 (PTAB Oct. 15, 2013) (Paper 7) (setting
`
`forth requirements for pro hac vice admission).
`
`As set forth in the accompanying Declaration (TEVA1062), Mr. Milliken is
`
`an Associate at Sterne Kessler Goldstein & Fox PLLC and a patent-litigation
`
`attorney with significant experience advising clients regarding patent matters,
`
`including as counsel in multiple litigations involving Teva. Mr. Milliken also
`
`represents Teva in connection with the underlying district-court litigation on the
`
`patent at issue in this proceeding, i.e., U.S. Patent No. 10,195,214 (“the ’214
`
`patent”). See Corcept Therapeutics, Inc. v. Teva Pharmaceuticals USA, Inc. et al.,
`
`No. 1:18-cv-3632 (D.N.J.). Based on this underlying litigation and the other facts
`
`detailed below and in his declaration, Mr. Milliken has significant familiarity with
`
`the particular subject matter in this PGR proceeding.
`
`
`
`- 2 -
`
`
`
`PGR2019-00048
`Patent 10,195,214
`
`
`This motion is authorized by the Notice of Filing Date Accorded that was
`
`mailed on May 24, 2019. See Paper No. 3 at 2.
`
`II.
`
`Statement of Facts
`
`As detailed in his declaration, Mr. Milliken practices litigation, primarily
`
`patent-infringement litigation, and has done so throughout his career as an
`
`attorney. He has litigated many patent cases across the country, including in New
`
`Jersey, Delaware, Texas, and Washington, D.C. He is familiar with the subject
`
`matter at issue in this proceeding because of his work on the concurrent district-
`
`court case involving the ’214 patent.
`
`Mr. Milliken is a member in good standing of the Bars of the District of
`
`Columbia and the State of Tennessee and is admitted to practice in numerous
`
`federal courts, including several U.S. district courts, the U.S. Court of Appeals for
`
`the Federal Circuit, the U.S. Court of Appeals for the First Circuit, the U.S. Court
`
`of Appeals for the Ninth Circuit, and the Supreme Court of the United States. He
`
`has never been suspended or disbarred from practice before any court or
`
`administrative body; never been denied admission to practice before any court or
`
`administrative body; and never received sanctions or contempt citations from any
`
`court or administrative body. He has read and will comply with the PTO’s Patent
`
`Trial Practice Guide and the Board’s Rules of Practice set forth in 37 C.F.R., part
`
`42. He also understands that he will be subject to the USPTO Rules of Professional
`
`
`
`- 3 -
`
`
`
`PGR2019-00048
`Patent 10,195,214
`
`
`Conduct set forth in 37 C.F.R. §§ 11.101 et. seq. and disciplinary jurisdiction under
`
`37 C.F.R. § 11.19(a). Moreover, Mr. Milliken’s work in this proceeding will be
`
`supervised by lead counsel Deborah Sterling, a registered practitioner. Mr.
`
`Milliken has not previously requested pro hac vice admission before the PTAB in
`
`PGR proceedings.
`
`III. Good Cause Exists For This Motion
`Petitioner requests that the Board recognize Mr. Milliken as counsel pro hac
`
`vice because Mr. Milliken serves a unique and critical role for Teva in this
`
`proceeding. Mr. Milliken has substantial experience and expertise representing
`
`Teva in cases involving patents on pharmaceutical technologies. Specifically, Mr.
`
`Milliken represents Teva in the concurrent litigation involving the ’214 patent.
`
`Given the posture of the court litigation, significant financial resources in the
`
`underlying district-court litigation have been expended. Mr. Milliken’s knowledge
`
`of these litigation matters is important for purposes of this proceeding for several
`
`reasons, including ensuring consistency between Teva’s position in those matters
`
`and in this proceeding.
`
`Mr. Milliken has extensively reviewed the ’214 patent and gained significant
`
`familiarity with the invalidity issues in the concurrent litigation, which
`
`significantly overlap with the corresponding issues in this PGR proceeding
`
`involving the ’214 patent. Mr. Milliken was actively involved in analyzing and
`
`
`
`- 4 -
`
`
`
`PGR2019-00048
`Patent 10,195,214
`
`
`assessing in the intrinsic record and the prior-art references relied upon in the
`
`Petition, as many of these references are relevant in the concurrent litigation
`
`matter. Additionally, Mr. Milliken was the primary drafter of Petitioner’s invalidity
`
`contentions in the litigation. Mr. Milliken thus has a detailed understanding of the
`
`’214 patent and the substantive and technical issues involved in this proceeding.
`
`Finally, Mr. Milliken’s substantial experience and expertise with the
`
`pharmaceutical arts makes him uniquely positioned to represent Teva in this PGR
`
`proceeding. Mr. Milliken’s expertise with the technical subject matter of this PGR
`
`proceeding extends beyond his involvement with the Petition and the concurrent
`
`litigation matter. Indeed, Mr. Milliken represents, or has represented, Teva in
`
`connection with multiple prior litigations regarding pharmaceutical technologies.
`
`He lists these proceedings in paragraph 7 of his declaration. As part of these
`
`proceedings, Mr. Milliken has analyzed a significant number of patents, articles,
`
`and books related to such technologies. He has also worked closely with experts
`
`related to such technologies, from academia and industry.
`
`If the Board denies the present Motion, not only is Teva denied its choice of
`
`counsel, but it would also be prejudiced by having to undertake the burdensome
`
`task—at great cost—to prepare another attorney to replace Mr. Milliken’s specific
`
`combination of familiarity with the concurrent litigation, the ’214 patent, the
`
`
`
`- 5 -
`
`
`
`PGR2019-00048
`Patent 10,195,214
`
`
`asserted prior-art references, and the relevant pharmaceutical technologies.
`
`Teva has repeatedly retained Mr. Milliken and his colleagues regarding
`
`disputes involving patents in this field of technology in order to provide continuity
`
`across cases involving related technologies, and thus Teva would be prejudiced if
`
`Mr. Milliken could not fully represent its interests here. Accordingly, Teva
`
`respectfully requests that the Board avoid that prejudice and grant this Motion.
`
`IV. Declaration of Individual Seeking to Appear
`
`This Motion for Pro Hac Vice Admission is accompanied by the Declaration
`
`of William H. Milliken (TEVA1062), as required by the “Order Authorizing
`
`Motion for Pro Hac Vice Admission” in Case IPR2013-00639, Paper 7, a copy of
`
`which is available on the Board Web site under “Representative Orders, Decisions,
`
`and Notices.”
`
`Petitioner submits that there is good cause under 37 C.F.R. § 42.10(c) for the
`
`Board to recognize William H. Milliken as counsel pro hac vice during this
`
`proceeding.
`
`
`
`
`
`
`
`
`
`- 6 -
`
`
`
`PGR2019-00048
`Patent 10,195,214
`
`
` Respectfully Submitted,
`
` STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`
`
`
`
` Deborah Sterling, Ph.D.
`Date: September 11, 2019
` Lead Attorney for Petitioner
`
`
`
`
`
`1100 New York Avenue, N.W. Registration No. 62,732
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
`
`
`- 7 -
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
`
`The undersigned hereby certifies that the above-captioned “Petitioner’s
`
`Motion For Pro Hac Vice Admission of William H. Milliken Under 37 C.F.R.
`
`§ 42.10(C),” along with Exhibit TEVA1062, was served in its entirety upon the
`
`Patent Owner on September 11, 2019, via email:
`
`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
`
`
`
`
`
`
`
`
`
` STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`
`
`
`
` Deborah Sterling, Ph.D.
`Date: September 11, 2019
` Lead Attorney for Petitioner
`
`
`
`
`
`1100 New York Avenue, N.W. Registration No. 62,732
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
`
`
`