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`Filed on behalf of: Sequenom, Inc.
`By: Steven P. O’Connor
`
`Michele C. Bosch
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, L.L.P.
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Telephone: 202-408-4000
`Facsimile: 202-408-4400
`E-mail: steven.oconnor@finnegan.com
`
` michele.bosch@finnegan.com
`
`
`
`
`
`
`
` Paper No. ____
`
` Filed: January 13, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`SEQUENOM, INC.
`Petitioner
`
`v.
`
`THE BOARD OF TRUSTEES OF
`THE LELAND STANFORD JUNIOR UNIVERSITY
`Patent Owner
`____________________
`
`Case IPR2013-00390
`Patent 8,195,415
`____________________
`
`
`SEQUENOM MOTION FOR PRO HAC VICE ADMISSION OF
`MICHAEL J. MALECEK
`
`
`
`
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`
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`I.
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`II.
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`TABLE OF CONTENTS
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`RELIEF REQUESTED ................................................................................... 1
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`GOVERNING REGULATIONS AND PRECEDENT .................................. 1
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`III.
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`STATEMENT OF FACTS .............................................................................. 3
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`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE
`ADMISSION OF MR. MALECEK IN THIS PROCEEDING ....................... 6
`
`V.
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`CONCLUSION ................................................................................................ 7
`
`
`
`i
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`
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`TABLE OF AUTHORITIES
`
`Regulation
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`37 C.F.R. § 42.10(c) ............................................................................................... 1, 6
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` Page(s)
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`ii
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`I.
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`RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. § 42.10(c), Petitioner Sequenom, Inc. (“Sequenom”)
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`respectfully requests pro hac vice admission of Michael J. Malecek in this
`
`proceeding.
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`II. GOVERNING REGULATIONS AND PRECEDENT
`
`In an Inter Partes Review (IPR), the Patent Trial and Appeal Board (“the
`
`Board”) has discretion under 37 C.F.R. § 42.10(c) to recognize counsel pro hac
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`vice:
`
`
`
`The Board may recognize counsel pro hac vice during a proceeding
`upon a showing of good cause, subject to the condition that lead
`counsel be a registered practitioner and to any other conditions as the
`Board may impose. For example, where the lead counsel is a
`registered practitioner, a motion to appear pro hac vice by counsel
`who is not a registered practitioner may be granted upon showing that
`counsel is an experienced litigating attorney and has an established
`familiarity with the subject matter at issue in the proceeding.
`
`The Board has stated that motions for pro hac vice admission under 37
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`C.F.R. § 42.10(c) must be filed in accordance with the “Order – Authorizing
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`Motion for Pro Hac Vice Admission” entered in Case IPR2013-00010 (MPT)
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`(“Motorola Order”). In accordance with the Motorola Order, this motion is being
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`filed no sooner than twenty-one (21) days after service of the petition.
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`1
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`The Motorola Order requires that such motions (1) “[c]ontain a statement of
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`facts showing there is good cause for the Board to recognize counsel pro hac vice
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`during the proceeding” and (2) “[b]e accompanied by an affidavit or declaration of
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`the individual seeking to appear attesting to the following”:
`
`i.
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`Membership in good standing of the Bar of at least one State or the
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`District of Columbia;
`
`ii.
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`No suspensions or disbarments from practice before any court or
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`administrative body;
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`iii. No application for admission to practice before any court or
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`administrative body ever denied;
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`iv. No sanctions or contempt citations imposed by any court or
`
`administrative body;
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`v.
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`The individual seeking to appear has read and will comply with the
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`Office Patent Trial Practice Guide and the Board’s Rules of Practice
`
`for Trials set forth in part 42 of the C.F.R.;
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`vi.
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`The individual will be subject to the USPTO Code of Professional
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`Responsibility set forth in 37 C.F.R. §§ 10.20 et seq. and disciplinary
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`jurisdiction under 37 C.F.R. § 11.19(a);
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`vii. All other proceedings before the Office for which the individual has
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`applied to appear pro hac vice in the last three (3) years; and
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`2
`
`
`
`
`
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`viii. Familiarity with the subject matter at issue in the proceeding.
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`III. STATEMENT OF FACTS
`Based on the following facts, and supported by the Affidavit of Mr. Michael
`
`J. Malecek (Ex. 1012) submitted herewith, Sequenom requests pro hac vice
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`admission of Mr. Malecek in this proceeding:
`
`1.
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`Sequenom’s lead counsel, Steven P. O’Connor, is a registered
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`practitioner (Reg. No. 41,225).
`
`2. Mr. Malecek is a partner at the law firm Kaye Scholer LLP. Ex. 1012,
`
`¶ 3.
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`3. Mr. Malecek is an experienced litigation attorney and has been a
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`litigation attorney for more than twenty years. Id. He has been
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`litigating patent cases for over eleven years. Id., ¶ 4.
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`4. Mr. Malecek has an established familiarity with the subject matter at
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`issue in this proceeding. Id., ¶ 12. He has litigated patent cases in the
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`area of nucleic acid analysis since 2002, including several cases about
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`“next generation” sequencing
`
`technologies.
`
` Id.
`
` He began
`
`representing and advising real party in interest Sequenom in matters
`
`relating to U.S. Patent No. 8,195,415 (“the ’415 patent”) no later than
`
`June 2012. Id. Since that time, he has become very familiar with the
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`’415 patent and with its prosecution file history. Id.
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`3
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`5. Mr. Malecek is lead trial counsel for Sequenom in its co-pending
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`district court litigation against the Patent Owner and its licensee
`
`Verinata Health, Inc. Id., ¶ 13. That litigation is captioned Verinata
`
`Health, Inc., et al. v. Sequenom, Inc., et al., Case No. 12-cv-00865
`
`(SI) (N.D. Cal.), and involves the same patent at issue in this
`
`proceeding. Id. As lead trial counsel for Sequenom, Mr. Malecek has
`
`been actively involved in all aspects of the co-pending district court
`
`litigation. Id. As examples of his work as lead trial counsel, he has
`
`presented a technology tutorial and argued claim construction
`
`regarding the ’415 patent before the District Court in 2013.
`
`6.
`
`In addition, Mr. Malecek is lead trial counsel for Sequenom in two
`
`other pending district court cases involving related technology
`
`claimed in U.S. Patent No. 6,258,540 (“the ’540 patent”): Ariosa
`
`Diagnostics, Inc. v. Sequenom, Inc. et al., Civ. No. 11-06391-SI (N.D.
`
`Cal.); and Natera, Inc. v. Sequenom, Inc. et al., Civ. No. 12-00132-SI
`
`(N.D. Cal.). Id., ¶ 14. Further, in January 2013, he argued on behalf
`
`of Sequenom in an appeal before the Court of Appeals for the Federal
`
`Circuit relating to the validity and proper claim construction of the
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`‘540 patent in Aria Diagnostics, Inc. v. Sequenom, Inc., Appeal No.
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`12-1531. Id.
`
`4
`
`
`
`
`
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`7. Mr. Malecek has been admitted pro hac vice by the Board in Case
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`IPR2012-00022 (MPT) to represent the Patent Owner as back-up
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`counsel in that proceeding. Id., ¶ 11.
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`8. Mr. Malecek is a member in good standing of the State Bar of
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`California. Id., ¶ 5.
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`9.
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`He has never been suspended or disbarred from practice before any
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`court or administrative body. Id., ¶ 6.
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`10. No application of Mr. Malecek for admission to practice before any
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`court or administrative body has ever been denied. Id., ¶ 7.
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`11. No sanctions or contempt citations have ever been imposed against
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`Mr. Malecek by any court or administrative body. Id., ¶ 8.
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`12. He has read and will comply with the Office Patent Trial Practice
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`Guide and the Board’s Rules of Practice for Trials set forth in part 42
`
`of the Code of Federal Regulators. Id., ¶ 9.
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`13. Mr. Malecek understands that he will be subject to the USPTO Code
`
`of Professional Responsibility set forth in 37 C.F.R. §§ 10.20 et seq.
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`and disciplinary jurisdiction under 37 C.F.R. § 11.19(a). Id., ¶ 10.
`
`
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`5
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`
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`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE
`ADMISSION OF MR. MALECEK IN THIS PROCEEDING
`
`The Board may recognize counsel pro hac vice during a proceeding upon a
`
`showing of good cause, subject to the condition that lead counsel be a registered
`
`practitioner and to any other conditions as the Board may impose. 37 C.F.R. §
`
`42.10(c). Sequenom’s lead counsel, Steven P. O’Connor, is a registered
`
`practitioner. Based on the facts presented above, as supported by Mr. Malecek’s
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`Affidavit, good cause exists to admit Mr. Malecek pro hac vice in this proceeding.
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`As supported by his Affidavit, Mr. Malecek is an experienced litigating
`
`attorney with over eleven years of patent litigation experience. He also has an
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`established familiarity with the subject matter at issue in this proceeding, as he is
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`Sequenom’s lead trial counsel in its co-pending district court litigation against the
`
`Patent Owner and its licensee (Verinata Health, Inc., et al. v. Sequenom, Inc., et
`
`al., Case No. 12-cv-00865 (SI) (N.D. Cal.)). This proceeding involves the same
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`’415 patent that is at issue in that co-pending litigation.
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`As lead trial counsel for Sequenom, Mr. Malecek has been actively involved
`
`in all aspects of the co-pending district court litigation. In view of his extensive
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`knowledge of the precise subject matter at issue in this proceeding, and in view of
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`the interrelatedness of this proceeding and the co-pending district court litigation,
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`Sequenom has a substantial need for Mr. Malecek’s pro hac vice admission and
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`involvement in this proceeding.
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`6
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`
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`While the Board has previously denied pro hac vice admission of litigation
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`counsel in a situation that involved repeated instances of protective order violations
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`(see, e.g., CBM2012‐00001 (MPT)), there has been no such showing in this case.
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`Given Mr. Malecek’s extensive experience with the involved patent and parties,
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`and Sequenom’s desire to be represented by the counsel of its choice, the need for
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`his admission substantially outweighs any potential prejudice to the Patent Owner.
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`V. CONCLUSION
`For the foregoing reasons, Sequenom respectfully requests that the Board
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`admit Mr. Malecek pro hac vice in this proceeding.
`
`
`
`Respectfully submitted,
`
` Dated: January 13, 2014 By: /Steven P. O’Connor/
` Steven P. O’Connor
` Reg. No. 41,225
`
` Counsel for Sequenom
`
`
`
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`7
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`CERTIFICATE OF SERVICE
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`I certify that a true and correct copy of the foregoing “SEQUENOM
`
`MOTION FOR PRO HAC VICE ADMISSION OF MICHAEL J. MALECEK”
`
`was served by Federal Express on this 13th day of January 2014, upon the lead and
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`backup counsel of record for the Patent Owner as follows:
`
`
`
`R. Danny Huntington, Esq.
`Sharon E. Crane, Ph.D.
`Rothwell, Figg, Ernst & Manbeck, P.C.
`Suite 800
`607 14th Street, NW
`Washington, DC 20005
`
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`By: /Steven P. O’Connor/
` Steven P. O’Connor
` Reg. No. 41,225
`
`
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