UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`JOHNSON MATTHEY INC., and JOHNSON MATTHEY PLC,
`Petitioners
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`v.
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`BASF CORPORATION,
`Patent Owner
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`Case IPR2015-01266
`Patent 9,039,982
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`DECLARATION OF DOUGLAS E. MCCANN IN SUPPORT OF JOHNSON
`MATTHEY, INC.’S UNOPPOSED MOTION FOR PRO HAC VICE
`ADMISSION
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` 1
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`JM 1019
`Johnson Matthey v. BASF Corporation
`IPR2015-01266
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`JOHNSON MATTHEY INC., and JOHNSON MATTHEY PLC,
`Petitioners
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`v.
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`BASF CORPORATION,
`Patent Owner
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`Case IPR2015-01266
`Patent 9,039,982
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`DECLARATION OF DOUGLAS E. MCCANN IN SUPPORT OF JOHNSON
`MATTHEY, INC.’S UNOPPOSED MOTION FOR PRO HAC VICE
`ADMISSION
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` 1
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`JM 1019
`Johnson Matthey v. BASF Corporation
`IPR2015-01266
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`Proceeding No.: IPR2015-01266
`Attorney Docket: 38411-0005IP1
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`I, Douglas E. McCann, hereby attest to the following:
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`I am a member in good standing of the state Bar of Delaware, the U.S.
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`1.
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`District Court for the District of Delaware, the U.S. Court of Appeals for the
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`Federal Circuit, and the U.S. Court of Appeals for the Third Circuit.
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`2.
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`I have not been suspended or disbarred from practice before any court or
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`administrative body.
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`3.
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`I have never had an application for admission to practice before any court or
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`administrative body denied.
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`4.
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`No sanction or contempt citation has been imposed against me by any court
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`or administrative body.
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`5.
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`I have read and will comply with the Office Patent Trial Practice Guide and
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`the Board’s Rules of Practice for Trials set forth in part 42 of the Code of Federal
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`Regulations.
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`6.
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`I will be subject to the USPTO Rules of Professional Conduct set forth in 37
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`C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
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`7.
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`I have not applied to appear pro hac vice before the Office in any other
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`proceedings during the past three years. I am concurrently applying to appear pro
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`hac vice before the Office in each of the following proceedings: IPR2015-01265
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`and IPR2015-01267.
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`Proceeding No.: IPR2015-01266
`Attorney Docket: 38411-0005IP1
`I am an experienced litigation attorney with more than 7 years of experience
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`8.
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`representing clients in patent cases involving pharmaceuticals, life sciences,
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`medical devices, and portable electronic devices. I regularly litigate patent cases in
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`various forums including federal district courts, the United States Court of Appeals
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`for the Federal Circuit, and the International Trade Commission. Before focusing
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`on patent law, I served as an Assistant U.S. Attorney for over five years in the
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`District of Delaware, litigating criminal and civil cases. Through my years of
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`practice, I have represented clients in many phases of litigation including
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`discovery, Markman hearings, jury trials, bench trials, and appeals. My biography
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`is attached hereto as Appendix A. I serve as lead counsel for Johnson Matthey,
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`Inc. in BASF, Inc. v. Johnson Matthey, Inc., Civil Action No. 14-1204 SLR-SRF
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`now pending in the District of Delaware and also involving emissions control
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`technology.
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`All statements made herein of my own knowledge are true, all statements made
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`herein on information and belief are believed to be true, and further that these
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`statements were made with the knowledge that willful false statements and the like
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`are punishable by fine or imprisonment, or both, under 35 U.S.C. § 1001.
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`February 3, 2016
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`Proceeding No.: IPR2015-01266
`Attorney Docket: 38411-0005IP1
`Respectfully submitted,
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`/s/ Douglas E. McCann
`Douglas E. McCann
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 404-724-2845
`Email: dmccann@fr.com
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`Date:
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`APPENDIX A
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`APPENDIX A
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`5
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` Menu
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` Fish Team
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`Douglas E. McCann
`Principal
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` Wilmington, DE 302-778-8437
` Download vCard
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` dmccann@fr.com
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`Background
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`Douglas E. McCann is the Managing Principal of the Delaware offce of Fish & Richardson. He leads
` and tries cases for some of the world’s best known companies in critical patent cases. He has worked
` for both plaintiffs and defendants in a variety of industries. Doug’s practice has an emphasis on life
` sciences and biotech litigation, and has also included technologies as diverse as medical devices,
` computer software and hardware, and satellite communications. Doug’s courtroom experience
` includes jury and bench trials in courts across the country including Texas, North Carolina and
` Delaware, as well as the International Trade Commission. Doug also has represented clients in inter
` partes review proceedings.
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`Doug is a member of the District of Delaware Advisory Committee, as well as the faculty of the District
` of Delaware Federal Trial Practice Seminar, and is a former offcer of the Delaware Chapter of the
` Federal Bar Association.
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`Prior to joining Fish & Richardson in 2008, Doug was an Assistant United States Attorney for the
` District of Delaware and served as both a criminal and civil AUSA with duties including prosecuting
` and supervising investigation of all manner of complex white collar, money laundering and narcotic
` cases, and initiating and defending civil litigation in areas including asset forfeiture, health care fraud,
` environmental, medical malpractice, tort, and employment cases. He has successfully litigated
`Menu
` multiple cases before several Courts of Appeal. Mr. McCann was previously a litigation associate in
` the Delaware offce of Skadden, Arps, Slate, Meagher & Flom LLP (2000-2002), and he was a Law
`MENU
` Clerk for the Honorable Joseph J. Farnan, Jr., of the District of Delaware (1999-2000).
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`After graduating from the Naval Academy, Doug served as an artillery offcer in the United States
` Marine Corps.
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`Education
` J.D., Fordham University School of Law 1999
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`Fordham Law Review
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` B.S., United States Naval Academy 1989
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`History
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`Admissions
`• Delaware
`• U.S. Court of Appeals for the Federal Circuit
`• U.S. Court of Appeals for the Second Circuit
`• U.S. Court of Appeals for the Third Circuit
`• U.S. District Court for the District of Delaware
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`Clerkships
`United States District Court for the District of Delaware, The Honorable Joseph J. Farnan Jr. (retired
` 2010), 1999 - 2000
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`Other Distinctions
`Selected for the "IAM Patent 1000″ List for Litigation and Transactions, 2015
` Selected for inclusion in the 2015 edition of Chambers USA: America’s Leading Lawyers for
` Business as a leader in his practice area
` Named Life Sciences IP Attorney of the Year in Delaware by Corporate INTL Magazine, 2014 and
` 2015
` Named "IP Star" by Managing Intellectual Property Magazine, 2014, 2015
` Listed in Best Lawyers since 2010
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`7
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