`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NEURENT MEDICAL INC. & NEURENT MEDICAL LTD.
`
`Petitioners,
`
`v.
`
`AERIN MEDICAL INC.,
`Patent Owner.
`
`Case No. IPR2024-00276
`U.S. Patent No. 9,415,194
`
`DECLARATION OF JOSHUA L. STERN IN SUPPORT OF
`MOTION FOR ADMISSION PRO HAC VICE
`
`NEURENT 1082
`NEURENT v. AERIN
`IPR2024-00276
`
`
`
`
`
`
`
`U.S. Patent No. 9,415,194
`Declaration of Joshua L. Stern
`Case No. IPR2024-00276
`
`
`I, Joshua L. Stern, declare as follows:
`1.
`I obtained a B.A. from Harvard University in 2005 and a J.D. from
`
`Harvard Law School in 2008. I am a partner at the law firm of Wilmer Cutler
`
`Pickering Hale & Dorr LLP in Washington, DC.
`
`2.
`
`I have been practicing law for over fifteen years and have been
`
`practicing in the field of intellectual property, and particularly, patent litigation,
`
`since 2011.
`
`3.
`
`I am a member in good standing of the Bars of the District of Columbia,
`
`the Commonwealth of Massachusetts, the State of New Jersey, and the State of New
`
`York and am admitted to practice before the United States District Courts of the
`
`District of Massachusetts, the District of New Jersey, and the Southern District of
`
`New York. I am also admitted to practice before the U.S. Court of Appeals for the
`
`Federal Circuit.
`
`4. My bar membership number for the District of Columbia is 1017853;
`
`for the Commonwealth of Massachusetts is 683006; for the State of New Jersey is
`
`015832008; and for the State of New York is 4705356.
`
`5.
`
`I have never been suspended, disbarred, sanctioned or cited for
`
`contempt by any court or administrative body.
`
`
`
`- 2 -
`
`
`
`
`
`
`
`U.S. Patent No. 9,415,194
`Declaration of Joshua L. Stern
`Case No. IPR2024-00276
`
`I have never had a court or administrative body deny my application for
`
`6.
`
`admission to practice.
`
`7.
`
`I have never had any sanctions or contempt citations imposed on me by
`
`any court or administrative body.
`
`8.
`
`I have read and will comply with Office Patent Trial Practice Guide and
`
`the Board’s Rules of Practice for Trials, as set forth in Part 42 of Title 37 of the
`
`C.F.R.
`
`9.
`
`I agree to be subject to the United States Patent and Trademark Office
`
`Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et. seq. and
`
`disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
`
`10.
`
`In the past three years, I have appeared pro hac vice before the United
`
`States Patent and Trademark Office in the following proceedings: BioNTech SE v.
`
`ModernaTX, Inc., Case No. IPR2023-01358; BioNTech SE v. ModernaTX, Inc., Case
`
`No. IPR2023-01359; Quest Diagnostics Inc. v. Ravgen, Inc., Case No. IPR2021-
`
`00788; Quest Diagnostics Inc. v. Ravgen, Inc., Case No. IPR2021-00789; Quest
`
`Diagnostics Inc. v. Ravgen, Inc., Case No. IPR2021-00790; Quest Diagnostics Inc.
`
`v. Ravgen, Inc., Case No. IPR2021-00791; Pfizer Inc. v. uniQure BioPharma BV,
`
`Case No. IPR2021-00925; Pfizer Inc. v. uniQure BioPharma BV, Case No.
`
`
`
`- 3 -
`
`
`
`
`
`
`
`U.S. Patent No. 9,415,194
`Declaration of Joshua L. Stern
`Case No. IPR2024-00276
`
`
`IPR2021-00926; and Pfizer Inc. v. uniQure BioPharma BV, Case No. IPR 2021-
`
`00928.
`
`11.
`
`I am familiar with the subject matter at issue in this proceeding. I have
`
`reviewed U.S. Patent No. 9,415,194 (“’194 patent”), which is being challenged in
`
`this proceeding, as well as its file history, the Petition, the Institution Decision, and
`
`the other filings and exhibits in this proceeding. I have also reviewed and am
`
`familiar with the relevant prior art.
`
`12. Beginning in 2023 and continuing until the present, I have represented
`
`Neurent Medical Inc. and Neurent Medical Ltd. (collectively, “Petitioners”) in Aerin
`
`Medical Inc. and The Foundry LLC v. Neurent Medical Inc. and Neurent Medical
`
`Ltd., Case No. 1:23-cv-00756-JLH (D. Del.), which is a related matter to this
`
`proceeding. The validity of the ’194 patent is a contested issue in this related matter.
`
`13.
`
`I 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; and
`
`further that these statements were made with the 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.
`
`
`
`- 4 -
`
`
`
`
`
`
`Dated: August 28, 2024
`
`
`
`
`
`U.S. Patent No. 9,415,194
`Declaration of Joshua L. Stern
`Case No. IPR2024-00276
`
`
`Respectfully Submitted,
`
`
`
`
`
`
`
`/Joshua L. Stern/
`Joshua L. Stern
`WILMER CUTLER PICKERING
`HALE AND DORR LLP
`2100 Pennsylvania Avenue NW
`Washington, DC 20037
`Joshua.Stern@wilmerhale.com
`Tel.: 202-663-6000
`Fax: 202-663-6363
`
`
`
`- 5 -
`
`
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