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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
`J.C. ROZENDAAL 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 J.C. Rozendaal 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 (TEVA1060), Mr. Rozendaal
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`is a Director at Sterne Kessler Goldstein & Fox PLLC and a patent-litigation
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`attorney with significant experience advising clients regarding patent matters,
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`including as counsel in multiple litigations involving Teva. Mr. Rozendaal also
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`represents Teva in connection with the underlying district-court litigation on the
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`patent at issue in this proceeding, i.e., U.S. Patent No. 10,195,214 (“the ’214
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`patent”). See Corcept Therapeutics, Inc. v. Teva Pharmaceuticals USA, Inc. et al.,
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`No. 1:18-cv-3632 (D.N.J.). Based on this underlying litigation and the other facts
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`detailed below and in his declaration, Mr. Rozendaal has significant familiarity
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`with the particular subject 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 his declaration, Mr. Rozendaal practices litigation, primarily
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`patent-infringement litigation, and has done so throughout his career as an
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`attorney. He has litigated many patent cases across the country, including in New
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`Jersey, New York, Delaware, Texas, California, and Washington, D.C. He has also
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`briefed and argued numerous cases in the Court of Appeals for the Federal Circuit.
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`He is familiar with the subject matter at issue in this proceeding because of his
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`work on the concurrent district-court case involving the ’214 patent.
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`Mr. Rozendaal is a member in good standing of the Bars of the District of
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`Columbia and the Commonwealth of Virginia and is admitted to practice in
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`numerous federal courts, including several U.S. district courts, the U.S. Courts of
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`Appeals for the Fourth, Ninth, and Federal Circuits, and the Supreme Court of the
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`United States. He 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. He 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. He also understands that he will be subject to the USPTO Rules of
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`PGR2019-00048
`Patent 10,195,214
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`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, Mr. Rozendaal will work in this
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`proceeding with lead counsel Deborah Sterling, a registered practitioner. Mr.
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`Rozendaal has not previously requested pro hac vice admission before the PTAB
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`in PGR proceedings.
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`III. Good Cause Exists For This Motion
`Petitioner requests that the Board recognize Mr. Rozendaal as counsel pro
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`hac vice because Mr. Rozendaal serves a unique and critical role for Teva in this
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`proceeding. Mr. Rozendaal has substantial experience and expertise representing
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`Teva in cases involving patents on pharmaceutical technologies. Specifically, Mr.
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`Rozendaal represents Teva in the concurrent litigation involving the ’214 patent.
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`Given the posture of the court litigation, significant financial resources in the
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`underlying district-court litigation have been expended. Mr. Rozendaal’s
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`knowledge of these litigation matters is important for purposes of this proceeding
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`for several reasons, including ensuring consistency between Teva’s position in
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`those matters and in this proceeding.
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`Mr. Rozendaal has extensively reviewed the ’214 patent and gained
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`significant 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. Mr. Rozendaal was actively involved in analyzing and
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`PGR2019-00048
`Patent 10,195,214
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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, Mr. Rozendaal worked on Petitioner’s invalidity contentions
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`in the litigation. Mr. Rozendaal thus has a detailed understanding of the ’214 patent
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`and the substantive and technical issues involved in this proceeding.
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`Finally, Mr. Rozendaal’s substantial experience and expertise with the
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`pharmaceutical arts makes him uniquely positioned to represent Teva in this PGR
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`proceeding. Mr. Rozendaal’s expertise with the technical subject matter of this
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`PGR proceeding extends beyond his involvement with the Petition and the
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`concurrent litigation matter. Indeed, Mr. Rozendaal represents, or has represented,
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`Teva in connection with multiple prior litigations regarding pharmaceutical
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`technologies. He lists these proceedings in paragraph 7 of his declaration. As part
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`of these proceedings, Mr. Rozendaal has analyzed a significant number of patents,
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`articles, and books related to such technologies. He has also worked closely with
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`experts related to such technologies, from academia 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 Mr. Rozendaal’s
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`specific combination of familiarity with the concurrent litigation, the ’214 patent,
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`PGR2019-00048
`Patent 10,195,214
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`the asserted prior-art references, and the relevant pharmaceutical technologies.
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`Teva has repeatedly retained Mr. Rozendaal and his colleagues regarding
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`disputes involving patents in this field of technology in order to provide continuity
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`across cases involving related technologies, and thus Teva would be prejudiced if
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`Mr. Rozendaal 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
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`This Motion for Pro Hac Vice Admission is accompanied by the Declaration
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`of J.C. Rozendaal (TEVA1060), 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 J.C. Rozendaal 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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`PGR2019-00048
`Patent 10,195,214
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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 J.C. Rozendaal Under 37 C.F.R.
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`§ 42.10(C),” along with Exhibit TEVA1060, 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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