Case IPR2015-01624
`U.S. Patent No. 6,331,415
`Filed on behalf of: Sanofi Aventis U.S. LLC and Regeneron Pharmaceuticals, Inc.
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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
`____________________________________
`
`Case IPR2015-01624
`Patent 6,331,415
`
`____________________________________
`
`MOTION FOR LISA M. FERRI TO APPEAR PRO HAC VICE ON
`BEHALF OF PETITIONERS SANOFI-AVENTIS U.S. LLC AND
`REGENERON PHARMACEUTICALS, INC.
`
`
`U.S. Patent No. 6,331,415
`Filed on behalf of: Sanofi Aventis U.S. LLC and Regeneron Pharmaceuticals, Inc.
`
`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
`____________________________________
`
`Case IPR2015-01624
`Patent 6,331,415
`
`____________________________________
`
`MOTION FOR LISA M. FERRI TO APPEAR PRO HAC VICE ON
`BEHALF OF PETITIONERS SANOFI-AVENTIS U.S. LLC AND
`REGENERON PHARMACEUTICALS, INC.
`
`
`
`Case IPR2015-01624
`U.S. Patent No. 6,331,415
`I.
`STATEMENT OF REQUESTED RELIEF
`
`Pursuant to the Board’s August 7, 2015 Notice of Filing Date Accorded to
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`Petition and Time for Filing Patent Owner Preliminary Response authorizing
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`motions for pro hac vice admission (Paper No. 3, at 2), and 37 C.F.R. §§ 42.10(c),
`
`Petitioners Sanofi Aventis U.S. LLC (“Sanofi”) and Regeneron Pharmaceuticals,
`
`Inc. (“Regeneron”) (collectively, “Petitioners”) hereby moves for an Order
`
`allowing Lisa M. Ferri of Mayer Brown LLP to appear pro hac vice on behalf of
`
`Petitioners in the above-captioned case.
`
`II.
`
`EXHIBITS RELIED UPON FOR THIS MOTION
`
`For this motion, Petitioners rely upon Sanofi/Regeneron Exhibit 1059 –
`
`Declaration of Lisa M. Ferri in Support of Motion to Appear Pro Hac Vice on
`
`Behalf of Petitioners Sanofi Aventis U.S. LLC and Regeneron Pharmaceuticals,
`
`Inc. and Sanofi/Regeneron Exhibit 1060 – Mayer Brown Professional Profile of
`
`Lisa M. Ferri.
`
`III.
`
`REASONS THE REQUESTED RELIEF SHOULD BE GRANTED
`
`As set forth below in the Statement of Material Facts, Petitioners have made
`
`all of the showings required under 37 C.F.R. § 42.10(c) for recognizing Ms. Ferri
`
`pro hac vice. In particular, Ms. Ferri is an experienced litigation attorney and has
`
`been involved in numerous litigations involving patent infringement in various
`
`U.S. District Courts. (Sanofi/Regeneron Exhibit 1059, Declaration of Lisa M.
`
`1
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`
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`Case IPR2015-01624
`U.S. Patent No. 6,331,415
`Ferri) In particular, Ms. Ferri appeared as lead counsel in several previous
`
`litigations involving the challenged ’415 patent in the U.S. District Court for the
`
`Central District of California. Thus, Ms. Ferri has an established familiarity with
`
`the subject matter at issue in this proceeding, including the patent and file history,
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`the technology and the prior art. In light of the facts presented in detail below, as
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`well as the accompanying Declaration of Lisa M. Ferri, good cause exists for the
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`pro hac vice admission of Ms. Ferri in this proceeding under 37 C.F.R. § 42.10.
`
`IV.
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`STATEMENT OF MATERIAL FACTS
`
`37 C.F.R. § 42.10(c) states that “[t]he Board may recognize counsel pro hac
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`vice during a proceeding upon a showing of good cause, subject to the condition
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`that lead counsel be a registered practitioner and to any other conditions as the
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`Board may impose. For example, where the lead counsel is a registered
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`practitioner, a motion to appear pro hac vice by counsel who is not a registered
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`practitioner may be granted upon showing that counsel is an experienced litigating
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`attorney and has an established familiarity with the subject matter at issue in the
`
`proceeding.” As an initial matter, Lead Counsel for Petitioners in this inter partes
`
`review proceeding is Richard McCormick. Mr. McCormick is registered to
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`practice before the United States Patent and Trademark Office and holds
`
`Registration No. 55,902. Furthermore, the following statement of facts
`
`demonstrates that Ms. Ferri is an experienced litigation attorney and has an
`
`2
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`Case IPR2015-01624
`U.S. Patent No. 6,331,415
`established familiarity with the subject matter at issue, and accordingly, there is
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`good cause for the Board to recognize Ms. Ferri pro hac vice.
`
`As set forth in Sanofi/Regeneron Exhibit 1059, Ms. Ferri is a partner in the
`
`Intellectual Property group of Mayer Brown LLP and is the head of the New York
`
`IP group. Sanofi/Regeneron Exhibit 1059, ¶ 1. Ms. Ferri is an experienced
`
`litigation attorney and has an established familiarity with the subject matter at issue
`
`in this proceeding. In particular, Ms. Ferri has over 20 years of experience as a
`
`patent litigator, including many cases in the pharmaceutical and biotechnology
`
`fields. Id. She has appeared as lead trial counsel before the United States District
`
`Courts and the U.S. International Trade Commission. Furthermore, she has
`
`represented clients before the United States Court of Appeals for the Federal
`
`Circuit, including as lead counsel. Id.; Sanofi/Regeneron Exhibit 1060. Ms. Ferri
`
`is an adjunct professor of law at Fordham University School of Law, where she
`
`teaches Patent Litigation. Sanofi/Regeneron Exhibit 1059, ¶ 2.
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`Ms. Ferri has served as counsel for GlaxoSmithKline, Human Genome
`
`Sciences and Bristol-Myers Squibb in litigations relating to the ’415 patent: Glaxo
`
`Group Ltd, et al., v. Genentech, Inc., et al., Case No. 10-cv-02764 (C.D. Cal.),
`
`Human Genome Sciences Inc. v. Genentech, Inc. et al., Case No. 2:11-cv-06594
`
`(C.D. Cal.), and Bristol-Myers Squibb Co. v. Genentech, Inc., et al., Case No. 13-
`
`cv-05400 (C.D. Cal), respectively. Id. Ms. Ferri also presently serves as lead
`
`3
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`
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`Case IPR2015-01624
`U.S. Patent No. 6,331,415
`counsel for Petitioners in a district court patent litigation matter, entitled Sanofi
`
`Aventis U.S. LLC and Regeneron Pharmaceuticals, Inc. v. Genentech, Inc. and
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`City of Hope, Case No. 2:15-cv-05685-GW-AGR (C.D. Cal.) which relates to U.S.
`
`Patent No. 7,923,221, which was filed as a continuation of the application that
`
`issued as the challenged '415 patent and involves the same recombinant antibody
`
`technology claimed by the '415 patent. Id. ¶ 3. Therefore, Ms. Ferri is familiar
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`with the ’415 patent, the patent at issue in this proceeding, and with the legal
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`subject matter, technical subject matter, and prior art discussed in Petitioners’
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`request for inter partes review of the ’415 patent, which forms the basis of this
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`proceeding. Id. ¶ 4.
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`Ms. Ferri 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 37 C.F.R.
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`Id. ¶ 9. Ms. Ferri also agrees to be subject to the United States Patent and
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`Trademark Office Code of Professional Responsibility set forth in 37 C.F.R. §§
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`11.101 et seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a). Id. ¶ 10.
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`Finally, Ms. Ferri has attested to the remaining elements of Paragraph 2(b)
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`of the representative “Order – Authorizing Motion for Pro Hac Vice Admission” in
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`Case IPR2013-00639. Id. ¶¶ 5-8 and 11. Namely, she is a member in good
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`standing of the Bar of New York and the Bar of New Jersey and is admitted to
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`practice before the U.S. Supreme Court, the U.S. Court of Appeals for the Federal
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`4
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`
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`Case IPR2015-01624
`U.S. Patent No. 6,331,415
`Circuit and several additional courts including the U.S. District Court for the
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`Southern District of New York. Id. ¶ 5. Ms. Ferri has never been suspended,
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`disbarred or sanctioned by a court or administrative body. Id. ¶6. She has never
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`had a court or administrative body deny her application for admission to practice.
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`Id. ¶7. She has never been sanctioned or cited for contempt by any court or
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`administrative body. Id. ¶8. She has applied for and been admitted pro hac vice in
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`two proceedings before the U.S. Patent and Trademark Office in the past three (3)
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`years, Ranbaxy Laboratories Ltd. et al., v. Vertex Pharmaceuticals Incorporated,
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`Case No. IPR2013-00024 and Lupin Ltd. v. Vertex Pharmaceuticals Incorporated,
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`Case No. IPR2015-00405 (U.S. Patent No. 6,436,989). Id. ¶ 11.
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`V.
`
`CONCLUSION
`
`In view of the foregoing, and having satisfied the requirements of 37 C.F.R.
`
`§ 42.10(c), Petitioners respectfully move for an Order allowing Lisa M. Ferri of
`
`Mayer Brown LLP to appear pro hac vice on behalf of Petitioners in the above-
`
`captioned case.
`
`Dated: August 31, 2015
`
`Respectfully submitted,
`
`By:
`Richard McCormick (Reg. No. 55,902)
`Lisa M. Ferri (pro hac vice)
`Brian W. Nolan (Reg. No. 45,821)
`MAYER BROWN LLP
`5
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`Case IPR2015-01624
`U.S. Patent No. 6,331,415
`
`1221 Avenue of the Americas
`New York, NY 10020-1001
`Attorneys for Petitioners sanofi-aventis U.S.
`LLC and Regeneron Pharmaceuticals, Inc.
`
`6
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`
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`Case IPR2015-01624
`U.S. Patent No. 6,331,415
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that true and correct copies of the foregoing Motion for Lisa
`M. Ferri to Appear Pro Hac Vice on Behalf of Petitioners Sanofi-Aventis U.S.
`LLC and Regeneron Pharmaceuticals, Inc. and Exhibits 1059-1060 were served on
`August 31, 2015, via UPS OVERNIGHT service to counsel for Patent Owners at
`the following address:
`
`Adam R. Brausa (Reg. No. 60,287)
`Daralyn Durie (pro hac pending)
`Durie Tangri LLP
`217 Leidesdorff Street
`San Francisco, CA 94111
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`Dated: August 31, 2015
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`Respectfully submitted,
`
`/Richard J. McCormick/
`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
`
`7
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