IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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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
`WILLIAM H. MILLIKEN 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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`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
`WILLIAM H. MILLIKEN 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 William H. Milliken as
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`counsel 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 (TEVA1062), Mr. Milliken is
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`an Associate 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. Milliken 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. Milliken has significant familiarity with
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`the particular subject matter in this PGR proceeding.
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`- 2 -
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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. Milliken 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, Delaware, Texas, and Washington, D.C. He is familiar with the subject
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`matter at issue in this proceeding because of his work on the concurrent district-
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`court case involving the ’214 patent.
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`Mr. Milliken is a member in good standing of the Bars of the District of
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`Columbia and the State of Tennessee and is admitted to practice in numerous
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`federal courts, including several U.S. district courts, the U.S. Court of Appeals for
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`the Federal Circuit, the U.S. Court of Appeals for the First Circuit, the U.S. Court
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`of Appeals for the Ninth Circuit, and the Supreme Court of the United States. He
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`has never been suspended or disbarred from practice before any court or
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`administrative body; never been denied admission to practice before any court or
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`administrative body; and never received sanctions or contempt citations from any
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`court or administrative body. He has read and will comply with the PTO’s Patent
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`Trial Practice Guide and the Board’s Rules of Practice set forth in 37 C.F.R., part
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`42. He also understands that he will be subject to the USPTO Rules of Professional
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`- 3 -
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`PGR2019-00048
`Patent 10,195,214
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`Conduct set forth in 37 C.F.R. §§ 11.101 et. seq. and disciplinary jurisdiction under
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`37 C.F.R. § 11.19(a). Moreover, Mr. Milliken’s work in this proceeding will be
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`supervised by lead counsel Deborah Sterling, a registered practitioner. Mr.
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`Milliken has not previously requested pro hac vice admission before the PTAB in
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`PGR proceedings.
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`III. Good Cause Exists For This Motion
`Petitioner requests that the Board recognize Mr. Milliken as counsel pro hac
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`vice because Mr. Milliken serves a unique and critical role for Teva in this
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`proceeding. Mr. Milliken has substantial experience and expertise representing
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`Teva in cases involving patents on pharmaceutical technologies. Specifically, Mr.
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`Milliken 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. Milliken’s knowledge
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`of these litigation matters is important for purposes of this proceeding for several
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`reasons, including ensuring consistency between Teva’s position in those matters
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`and in this proceeding.
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`Mr. Milliken 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. Mr. Milliken was actively involved in analyzing and
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`- 4 -
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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. Milliken was the primary drafter of Petitioner’s invalidity
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`contentions in the litigation. Mr. Milliken thus has a detailed understanding of the
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`’214 patent and the substantive and technical issues involved in this proceeding.
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`Finally, Mr. Milliken’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. Milliken’s expertise with the technical subject matter of this PGR
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`proceeding extends beyond his involvement with the Petition and the concurrent
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`litigation matter. Indeed, Mr. Milliken represents, or has represented, Teva in
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`connection with multiple prior litigations regarding pharmaceutical technologies.
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`He lists these proceedings in paragraph 7 of his declaration. As part of these
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`proceedings, Mr. Milliken has analyzed a significant number of patents, articles,
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`and books related to such technologies. He has also worked closely with experts
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`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. Milliken’s specific
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`combination of familiarity with the concurrent litigation, the ’214 patent, the
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`- 5 -
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`PGR2019-00048
`Patent 10,195,214
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`asserted prior-art references, and the relevant pharmaceutical technologies.
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`Teva has repeatedly retained Mr. Milliken 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. Milliken 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 William H. Milliken (TEVA1062), as required by the “Order Authorizing
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`Motion for Pro Hac Vice Admission” in Case IPR2013-00639, Paper 7, a copy of
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`which is available on the Board Web site under “Representative Orders, Decisions,
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`and 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 William H. Milliken as counsel pro hac vice during this
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`proceeding.
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`PGR2019-00048
`Patent 10,195,214
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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 William H. Milliken Under 37 C.F.R.
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`§ 42.10(C),” along with Exhibit TEVA1062, 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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