Case IPR 2015-01624
`Patent 6,331,415
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`SANOFI-AVENTIS U.S. LLC AND
`REGENERON PHARMACEUTICALS, INC.,
`
`Petitioners
`
`v.
`
`GENENTECH, INC. AND CITY OF HOPE,
`
`Patent Owners
`
`Patent No. 6,331,415
`Appl. No. 07/205,419, filed June 10, 1988
`Issued: Dec. 18, 2001
`
`Title: Methods of Producing Immunoglobulins, Vectors
`and Transformed Host Cells for Use Therein
`____________________
`
`IPR Trial No. IPR2015-01624
`____________________
`
`_________________________________________________________________
`
`PATENT OWNERS’ MOTION FOR PRO HAC VICE ADMISSION OF
`DARALYN J. DURIE 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
`
`
`Patent 6,331,415
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`SANOFI-AVENTIS U.S. LLC AND
`REGENERON PHARMACEUTICALS, INC.,
`
`Petitioners
`
`v.
`
`GENENTECH, INC. AND CITY OF HOPE,
`
`Patent Owners
`
`Patent No. 6,331,415
`Appl. No. 07/205,419, filed June 10, 1988
`Issued: Dec. 18, 2001
`
`Title: Methods of Producing Immunoglobulins, Vectors
`and Transformed Host Cells for Use Therein
`____________________
`
`IPR Trial No. IPR2015-01624
`____________________
`
`_________________________________________________________________
`
`PATENT OWNERS’ MOTION FOR PRO HAC VICE ADMISSION OF
`DARALYN J. DURIE 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
`
`
`
`
`
`Case IPR 2015-01624
`Patent 6,331,415
`
`RELIEF REQUESTED
`
`
`
`I.
`
`Pursuant to 37 C.F.R. § 42.10(c), Patent Owners Genentech, Inc.
`
`(“Genentech”) and City of Hope by and through its attorneys, respectfully requests
`
`that the Board admit Daralyn J. Durie pro hac vice in this proceeding.
`
`II. GOVERNING LAW, RULES, AND PRECEDENT
`
`Section 42.10(c) of 37 C.F.R. provides as follows:
`
`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 specified that a motion for pro hac vice admission shall be
`
`filed in accordance with the “ORDER-AUTHORIZING MOTION FOR PRO HAC
`
`VICE ADMISSION – 37 C.F.A. § 42.10” in Unified Patents, Inc. v. Parallel Iron,
`
`LLC, Case No. IPR2013-00639 (“Representative Order”). The Representative
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`Order states that the motion must “[c]ontain a statement of facts showing there is
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`good cause for the Board to recognize counsel pro hac vice during the
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`proceeding,” and “[b]e accompanied by an affidavit or declaration of the individual
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`Case IPR 2015-01624
`Patent 6,331,415
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`seeking to appear” which attests to a number of facts concerning the counsel
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`seeking admission pro hac vice specified in the Representative Order.
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`III.
`
`STATEMENT OF FACTS
`
`1.
`
`Patent Owners’ lead counsel, Adam R. Brausa, is a registered
`
`practitioner (Reg. No. 60,287).
`
`2. Ms. Durie is a Partner at the law firm Durie Tangri LLP. (Declaration
`
`of Daralyn J. Durie in Support of Patent Owners’ Motion for Pro Hac Vice
`
`Admission in Case IPR 2015-01624 ¶ 2).
`
`3. Ms. Durie is an experienced litigating attorney and has been litigating
`
`cases relating to patents for over 20 years. (Id. ¶ 2)
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`4. Ms. Durie is a member in good standing of the California State Bar,
`
`and among other courts, the United States Court of Appeals for the Federal Circuit
`
`(Id. ¶ 3).
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`5. Ms. Durie has never been suspended or disbarred from practice before
`
`any court or administrative body. (Id. ¶ 5).
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`6.
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`No application filed under Ms. Durie for admission to practice before
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`any court or administrative body has ever been denied. (Id. ¶ 6).
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`7.
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`No sanctions or contempt citations have been imposed against Ms.
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`Case IPR 2015-01624
`Patent 6,331,415
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`Durie by any court or administrative body. (Id. ¶ 7).
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`8. Ms. Durie has read and agrees to comply with the Office Patent Trial
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`Practice Guide and the Board's Rules of Practice for Trials set forth in part 42 of 37
`
`C.F.R. (Id. ¶ 8).
`
`9. Ms. Durie understands that she will be subject to the USPTO Rules of
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`Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary
`
`jurisdiction under 37 C.F.R. § 11.19(a). (Id. ¶ 9).
`
`10. Ms. Durie has not appeared Pro Hac Vice before the Patent Trial and
`
`Appeal Board in the last three (3) years. (Id. ¶ 10).
`
`11. Ms. Durie has an established familiarity with the subject matter at
`
`issue in this proceeding. She has handled patent cases relating to recombinant
`
`antibodies for more than thirteen years, including six litigations in which U.S.
`
`Patent No. 6,331,415 (“the ’415 patent”) was a patent-in-suit. (Id. ¶ 11). In the all
`
`of these cases involving the ’415 patent, she has represented Genentech and in
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`several of these cases, she also represented City of Hope. During these litigations,
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`she has worked closely with Adam R. Brausa, lead counsel for Genentech and City
`
`of Hope in this matter. (Id.).
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`12. Additionally, she has carefully reviewed and has developed extensive
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`Case IPR 2015-01624
`Patent 6,331,415
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`familiarity with the matters involved in and implicated by these proceedings,
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`including the ’415 patent and its file history, the prior art presented in the petition,
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`and the legal and factual issues raised by the Petitioners in this proceeding. As a
`
`result, Ms. Durie has acquired substantial understanding of the underlying legal
`
`and technological issues at stake in this proceeding. (Id. ¶ 12)
`
`IV. GOOD CAUSE EXISTS FOR PRO HAC VICE ADMISSION OF
`DARALYN J. DURIE
`
`The facts outlined above in the Statement of Facts, supported by the
`
`Declaration of Daralyn J. Durie, establish there is good cause to admit Ms. Durie
`
`pro hac vice in this proceeding under 37 C.F.R. § 42.10. Patent Owners’ lead
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`counsel, Adam R. Brausa, is a registered practitioner in good standing before the
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`Board. Ms. Durie is an attorney in good standing in the State Bar of California and
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`the United States Court of Appeals for the Federal Circuit. Ms. Durie has
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`extensive experience litigating patents, including the ’415 patent, which is the
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`subject of this proceeding. As a result, Ms. Durie is familiar with the subject
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`matter at issue in this proceeding. Furthermore, Ms. Durie has carefully reviewed
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`the ’415 patent at issue in this proceeding, its prosecution history, the prior art, the
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`grounds advanced by the Petitioners and other aspects of the record in this
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`proceeding, and is familiar with these matters. Based on her experience and
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`Case IPR 2015-01624
`Patent 6,331,415
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`knowledge, there is good cause to admit Ms. Durie pro hac vice in this proceeding.
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`V.
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`CONCLUSION
`
`In light of the foregoing, Patent Owner respectfully requests that the Board
`
`admit Daralyn J. Durie pro hac vice in this proceeding.
`
`Respectfully submitted,
`
`DURIE TANGRI LLP
`
`
`
`/s/ Adam R. Brausa
`Adam R. Brausa
`Reg. No. 60,287
`Durie Tangri LLP
`217 Leidesdorff Street
`San Francisco, CA 94111
`Tel: 415-362-6666
`Fax: 415-236-6300
`
`Attorney for Patent Owners
`Genentech, Inc.
`
`5
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`By:
`
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`
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`Dated: August 18, 2015
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`Case IPR 2015-01624
`Patent 6,331,415
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`SANOFI-AVENTIS U.S. LLC AND
`REGENERON PHARMACEUTICALS, INC.,
`
`Petitioners
`
`v.
`
`GENENTECH, INC. AND CITY OF HOPE,
`
`Patent Owners
`
`Patent No. 6,331,415
`Appl. No. 07/205,419, filed June 10, 1988
`Issued: Dec. 18, 2001
`
`Title: Methods of Producing Immunoglobulins, Vectors
`and Transformed Host Cells for Use Therein
`____________________
`
`IPR Trial No. IPR2015-01624
`____________________
`
`_________________________________________________________________
`
`DECLARATION OF DARALYN J. DURIE IN SUPPORT OF PATENT
`OWNERS’ MOTION FOR PRO HAC VICE ADMISSION
`
`
`
`
`
`
`
`
`
`
`
`
`
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`
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`I, Daralyn J. Durie, declare as follows:
`
`1.
`
`2.
`
`I am an attorney licensed to practice law in the State of California.
`
`I am a partner at the law firm Durie Tangri LLP and have litigated
`
`cases relating to patents for over 20 years.
`
`3.
`
`I am a member in good standing of the State Bar of California and the
`
`United States Court of Appeal for the Federal Circuit. I am also admitted to
`
`practice before the California Supreme Court, the United States Court of Appeals
`
`for the 3rd Circuit, the United States Court of Appeals for the 8th Circuit, the United
`
`States Court of Appeals for the 9th Circuit, the United States District Court of
`
`Colorado, and the United States District Courts in the Central, Eastern, Northern
`
`and Southern Districts of California.
`
`4.
`
`I am a member in good standing in all jurisdictions where I have been
`
`admitted to practice.
`
`5.
`
`I have never been suspended or disbarred from practice before any
`
`court or administrative body.
`
`6.
`
`I have never had an application denied for admission to practice
`
`before any court or administrative body.
`
`7.
`
`I have not had any sanctions or contempt citations imposed against me
`
`by any court or administrative body.
`
`8.
`
`I have read and will comply with the Office Patent Trial Practice
`
`
`
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`1
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`Case IPR 2015-01624
`Patent 6,331,415
`
`
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`Guide and the Board’s Rules of Practice for Trials set forth in part 42 of 37 C.F.R.
`
`9.
`
`I agree to 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).
`
`10.
`
`I have not appeared Pro Hac Vice before the Patent Trial and Appeal
`
`Board in the last three (3) years.
`
`11.
`
`I have an established familiarity with the subject matter at issue in this
`
`proceeding. I have handled patent cases relating to recombinant antibodies for
`
`more than twelve years, including cases wherein U.S. Patent No. 6,331,415 (“the
`
`’415 patent”) was a patent-in-suit. In all of these cases involving the ‘’415 patent,
`
`I have represented Genentech and in some instances, City of Hope. In several of
`
`these cases, I have worked closely with Adam R. Brausa, lead counsel for Patent
`
`Owners in this matter.
`
`12. Additionally, I have carefully reviewed and has developed extensive
`
`familiarity with the matters involved in and implicated by these proceedings,
`
`including the ’415 patent and its file history, the prior art presented in the petition,
`
`and the legal and factual issues raised by the Petitioners in this proceeding. As a
`
`result, I have acquired substantial understanding of the underlying legal and
`
`
`
`
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`2
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`Case IPR 2015-01624
`Patent 6,331,415
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`technological issues at stake in this proceeding.
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`I hereby declare that all statements made herein of my own knowledge are
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`true and that all statements made on information and belief are believed to be true;
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`and further that these statements are made with the knowledge that willful false
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`statements and the like so made are punishable by fine or imprisonment, or both,
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`under Section 1001 of Title 18 of the United States Code and that such willful false
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`statements may jeopardize the validity of U.S. Patent No. 6,331,415.
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`
`
`Date: August 18, 2015
`
`
`/s/ Daralyn J. Durie
`Daralyn J. Durie
`
`Durie Tangri LLP
`217 Leidesdorff Street
`San Francisco, CA 94111
`
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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 “PATENT
`
`OWNERS’ MOTION FOR PRO HAC VICE ADMISSION OF DARALYN J.
`
`DURIE UNDER 37 C.F.R. § 42.10(C)” and “DECLARATION OF DARALYN J.
`
`DURIE IN SUPPORT OF PATENT OWNERS’ MOTION FOR PRO HAC VICE
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`ADMISSION” which was served in its entirety on August 18, 2015 via e-mail and
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`Federal Express on the following business day to lead counsel of record for
`
`petitioners:
`
`Richard J. McCormick, (No. 55,902)
`rmccormick@mayerbrown.com
`MAYER BROWN LLP
`1221 Avenue of the Americas
`New York, NY 10020-1001
`Telephone: (212) 506-2382
`Fax: (212) 849-5682
`
`Attorney for Petitioners Sanofi-Aventis U.S.
`LLC and Regeneron Pharmaceuticals, Inc.
`
`
`
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`/s/ Adam R. Brausa
`Adam R. Brausa
`Reg. No. 60,287
`Attorney for Patent Owners
`
`
`
`
`1
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