IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`
`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 UMA N.
`EVERETT 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
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`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 UMA N.
`EVERETT 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 Uma N. Everett 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 (TEVA1061), Ms. Everett is a
`
`Director at Sterne Kessler Goldstein & Fox PLLC and a patent-litigation attorney
`
`with significant experience advising clients regarding patent matters, including as
`
`counsel in litigation involving Teva. Ms. Everett 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 the underlying litigation and the other facts detailed below and
`
`in her declaration, Ms. Everett 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 her declaration, Ms. Everett practices litigation, primarily
`
`patent-infringement litigation, and has done so throughout her career as an
`
`attorney. She has litigated many patent cases across the country, including in
`
`Delaware, New Jersey, and the International Trade Commission. She is familiar
`
`with the subject matter at issue in this proceeding because of her work on the
`
`concurrent district-court case involving the ’214 patent.
`
`Ms. Everett is a member in good standing of the Bar of the District of
`
`Columbia 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, and the
`
`Third Circuit. She 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. She 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. She also understands that she will be subject to the USPTO 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). Moreover, Ms. Everett will work in this
`
`
`
`- 3 -
`
`
`
`PGR2019-00048
`Patent 10,195,214
`
`
`proceeding with lead counsel Deborah Sterling, a registered practitioner. Ms.
`
`Everett has previously requested pro hac vice admission before the PTAB in
`
`Argentum Pharmaceuticals LLC et al v. Cipla Limited et al., IPR2017-00807
`
`(PTAB), and was admitted.
`
`III. Good Cause Exists For This Motion
`Petitioner requests that the Board recognize Ms. Everett as counsel pro hac
`
`vice because Ms. Everett serves a unique and critical role for Teva in this
`
`proceeding. Ms. Everett has substantial experience and expertise representing 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. Ms. Everett’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.
`
`Ms. Everett 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. Ms. Everett was actively involved in analyzing and
`
`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, Ms. Everett worked on Petitioner’s invalidity contentions in
`
`
`
`- 4 -
`
`
`
`PGR2019-00048
`Patent 10,195,214
`
`
`the litigation. Ms. Everett thus has a detailed understanding of the ’214 patent and
`
`the substantive and technical issues involved in this proceeding.
`
`Finally, Ms. Everett’s substantial experience and expertise with the
`
`pharmaceutical arts makes her uniquely positioned to represent Teva in this PGR
`
`proceeding. Ms. Everett’s expertise with the technical subject matter of this PGR
`
`proceeding extends beyond her involvement with the Petition and the concurrent
`
`litigation matter. Ms. Everett has been involved in multiple prior litigations
`
`regarding pharmaceutical technologies. She lists these proceedings in paragraph 7
`
`of her declaration. As part of these proceedings, Ms. Everett has analyzed a
`
`significant number of patents, articles, and books related to such technologies. She
`
`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 Ms. Everett’s specific
`
`combination of familiarity with the concurrent litigation, the ’214 patent, the
`
`asserted prior-art references, and the relevant pharmaceutical technologies.
`
`Teva has repeatedly retained Ms. Everett and her colleagues regarding
`
`disputes involving patents in this field of technology in order to provide continuity
`
`
`
`- 5 -
`
`
`
`PGR2019-00048
`Patent 10,195,214
`
`
`across cases involving related technologies, and thus Teva would be prejudiced if
`
`Ms. Everett 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 Uma N. Everett (TEVA1061), 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 Uma N. Everett as counsel pro hac vice during this proceeding.
`
` 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
`
`
`
`- 6 -
`
`
`
`
`
`
`
`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 Uma N. Everett Under 37 C.F.R.
`
`§ 42.10(C),” along with Exhibit TEVA1061, 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
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
