`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`ANCESTRY.COM DNA LLC,
`Petitioner
`
`v.
`
`DNA GENOTEK INC.,
`Patent Owner
`
`Patent No. 8,221,381
`
`_______________
`
`Inter Partes Review No. IPR2016-00060
`____________________________________________________________
`
`DECLARATION OF JOHN R. LANHAM IN SUPPORT OF
`
`MOTION FOR PRO HAC VICE ADMISSION OF JOHN R. LANHAM
`
`UNDER 37 C.F.R. § 42.10(c)
`
`
`
`
`
`
`
`sd-685304
`
`
`
`IPR2016-00060
`
`
`
`Attorney Docket No. 604140000012
`
`I, John R. Lanham, declare as follows:
`
`1.
`
`I am more than twenty-one years of age, am competent to present this
`
`declaration, and have personal knowledge of the facts set forth herein.
`
`2.
`
`This declaration is made in support of Patent Owner DNA Genotek
`
`Inc.’s Motion for Pro Hac Vice Admission of John R. Lanham Under 37 C.F.R.
`
`§ 42.10(c).
`
`3.
`
`I am an associate attorney at the law firm of Morrison & Foerster
`
`LLP. I have been an attorney with Morrison & Foerster since 2008.
`
`4.
`
`I have been involved in the litigation of patent cases for seven years.
`
`My work in patent litigation has included investigating the validity and alleged
`
`infringement of various patents, working with technical expert witnesses,
`
`appearing at trial, and representing clients in connection with specialized patent-
`
`related proceedings including claim construction and disclosures such as invalidity
`
`and infringement contentions and responses thereto.
`
`5.
`
`I am an attorney and a member of the trial team in (1) DNA Genotek
`
`Inc. v. Ancestry.com DNA, LLC, Case No. 15-cv-00355-SLR (D. Del) and (2) DNA
`
`Genotek Inc. v. Spectrum DNA, Spectrum Solutions LLC, and Spectrum Packaging
`
`LLC, Case. No. 15-cv-00661-SLR (D. Del.). Both of these district court litigations
`
`involve the same patent at issue in this proceeding, U.S. Patent No. 8,221,381 (“the
`
`’381 patent”). I am also an attorney and a member of the trial team in pending
`
`
`
`1
`
`
`
`IPR2016-00060
`
`
`
`Attorney Docket No. 604140000012
`
`district court litigation involving U.S. Patent No. 9,207,164, a continuation of the
`
`application for the ’381 patent, DNA Genotek Inc. v. Spectrum DNA and Spectrum
`
`Solutions LLC, No. 3:16-cv-01544-JLS-NLS (S.D. Cal.) I have been actively
`
`involved in all aspects of the above-referenced cases, including factual
`
`investigation and assessment of validity and infringement positions regarding the
`
`claims of the ’381 patent challenged by Petitioner Ancestry.com DNA LLC
`
`(“Ancestry”) in this proceeding. I have reviewed in detail the ’381 patent and the
`
`prior art raised in Ancestry’s Petition for Inter Partes Review (Paper No. 1). I am
`
`thus very familiar with the ’381 patent and the issues raised in Ancestry’s Petition.
`
`6.
`
`I am a member in good standing of the State Bar of California and the
`
`State Bar of Colorado.
`
`7.
`
`I have never been suspended or disbarred from practice before any
`
`court or administrative body.
`
`8.
`
`I have never had an admission to practice before any court or
`
`administrative body denied.
`
`9.
`
`I have never had sanctions or contempt citations imposed against me
`
`by any court or administrative body.
`
`10.
`
`I have read and agrees to comply with the Office Patent Trial Practice
`
`Guide and the Board’s Rules of Practice for Trials set forth in part 42 of 37 C.F.R.
`
`11.
`
`I understand that I will be subject to the USPTO Rules of Professional
`
`
`
`2
`
`
`
`IPR2016-00060
`
`
`
`Attorney Docket No. 604140000012
`
`Conduct and disciplinary jurisdiction set forth in 37 C.F.R. §§ 10.20 et seq. and
`
`disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
`
`12.
`
`I have not applied to appear pro hac vice in no other proceedings
`
`before the Office in the last three (3) years.
`
`13.
`
`I hereby declare that all statements herein of my own knowledge are
`
`true and that all statements made on information and belief are believed to be true;
`
`and further that these statements are made with the knowledge that willful false
`
`statements and the like so made are punishable by fine or imprisonment, or both,
`
`under Section 1001 of Title 18 of the United States Code and that such willful false
`
`statements may jeopardize the validity of U.S. Patent No. 8,221,381.
`
`EXECUTED at Salt Lake City, UT this 11th of August, 2016.
`
`
`/John R. Lanham/
`
`John R. Lanham
`
`
`
`
`
`3