UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
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`ANCESTRY.COM DNA LLC,
`Petitioner
`
`v.
`
`DNA GENOTEK INC.,
`Patent Owner
`
`Patent No. 8,221,381
`
`_______________
`
`Inter Partes Review No. IPR2016-00060
`____________________________________________________________
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`PATENT OWNER’S MOTION FOR PRO HAC VICE ADMISSION OF
`
`JOHN R. LANHAM UNDER 37 C.F.R. § 42.10(c)
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`sd-685253
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`_______________
`
`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
`____________________________________________________________
`
`PATENT OWNER’S MOTION FOR PRO HAC VICE ADMISSION OF
`
`JOHN R. LANHAM UNDER 37 C.F.R. § 42.10(c)
`
`
`
`
`
`
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`sd-685253
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`
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`IPR2016-00060
`
`Docket No.: 604140000012
`
`I.
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`Relief Requested
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`Pursuant to 37 C.F.R. § 42.10, Patent Owner DNA GENOTEK INC.
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`requests that the Board admit John R. Lanham pro hac vice in this proceeding.
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`The undersigned contacted counsel for Petitioner ANCESTRY.COM DNA LLC
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`(“Ancestry”), Daniel M. Becker of FENWICK & WEST LLP, who indicated that
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`Petitioner did not plan to oppose Mr. Lanham’s admission pro hac vice.
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`II. Governing Laws, Rules, and Precedent
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`Section 42.10(c) states as follows:
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`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.
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`III. Statement of Facts
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`Based on the following facts, and supported by the Declaration of John R.
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`Lanham in Support of this Motion for Admission Pro Hac Vice filed herewith
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`(“Exhibit 2012”), Patent Owner submits that a showing of good cause has been
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`made and respectfully requests the pro hac vice of John R. Lanham in this
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`proceeding:
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`sd-685253
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`1
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`
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`IPR2016-00060
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`Docket No.: 604140000012
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`1.
`
`This authorized petition is filed more than twenty-one (21) days after
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`Petitioner Ancestry served its PETITION FOR INTER PARTES REVIEW OF U.S.
`
`PATENT 8,221,381 (Paper No. 1).
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`2.
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`Lead counsel for Patent Owner DNA GENOTEK INC. (“DNA
`
`Genotek”), Brian M. Kramer, is a registered practitioner. Mr. Lanham is an
`
`associate at the law firm of Morrison & Foerster LLP where Mr. Kramer is a
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`partner.
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`3. Mr. Lanham is an experienced litigator. Mr. Lanham has seven years
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`of experience in patent litigation, including investigating the validity and alleged
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`infringement of various patents, working with technical expert witnesses,
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`appearing at trial, and representing clients in connection with specialized patent-
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`related proceedings including claim construction and disclosures such as invalidity
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`and infringement contentions and responses thereto. Exhibit 2012 ¶¶ 4-5.
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`4. Mr. Lanham has established familiarity with the subject matter at
`
`issue in this proceeding. Mr. Lanham is an attorney for Patent Owner DNA
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`Genotek and a member of the trial team in both of the co-pending district court
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`litigations identified as Related Matters by Petitioner Ancestry (Paper No. 1):
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`(1) DNA Genotek Inc. v. Ancestry.com DNA, LLC, Case No. 15-cv-00355-SLR (D.
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`Del) and (2) DNA Genotek Inc. v. Spectrum DNA, Spectrum Solutions LLC, and
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`Spectrum Packaging LLC, Case. No. 15-cv-00661-SLR (D. Del.). Both of these
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`sd-685253
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`IPR2016-00060
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`Docket No.: 604140000012
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`district court litigations involve the same patent at issue in this proceeding, U.S.
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`Patent No. 8,221,381 (the “’381 patent”). Exhibit 2012 ¶ 5. Mr. Lanham is also an
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`attorney for Patent Owner DNA Genotek and a member of the trial team in
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`pending district court litigation involving U.S. Patent No. 9,207,164, a
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`continuation of the application for the ’381 patent, DNA Genotek Inc. v. Spectrum
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`DNA and Spectrum Solutions LLC, No. 3:16-cv-01544-JLS-NLS (S.D. Cal.)
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`Exhibit 2012 ¶ 5. As counsel for Patent Owner DNA Genotek in the above-
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`referenced matters, Mr. Lanham has been actively involved in all aspects of the
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`district court litigations, including factual investigation and assessment of validity
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`and infringement positions regarding the claims of the ’381 patent challenged by
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`Petitioner Ancestry in this proceeding. Exhibit 2012 ¶ 5. Mr. Lanham has
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`reviewed in detail the ’381 patent and the prior art raised in Ancestry’s Petition.
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`Exhibit 2012 ¶ 5.
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`5. Mr. Lanham is a member in good standing of the State Bar of
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`California and the State Bar of Colorado. Exhibit 2012 ¶ 6.
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`6. Mr. Lanham has never been suspended or disbarred from practice
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`before any court or administrative body. Exhibit 2012 ¶ 7.
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`7.
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`No application by Mr. Lanham for admission to practice before any
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`court or administrative body has ever been denied. Exhibit 2012 ¶ 8.
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`sd-685253
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`IPR2016-00060
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`Docket No.: 604140000012
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`8.
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`No sanctions or contempt citations have ever been imposed against
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`Mr. Lanham by any court or administrative body. Exhibit 2012 ¶ 9.
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`9. Mr. Lanham has read and agrees to comply with the Office Patent
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`Trial Practice Guide and the Board’s Rules of Practice for Trials set forth in part 42
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`of 37 C.F.R. Exhibit 2012 ¶ 10.
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`10. Mr. Lanham understands that he will be subject to the USPTO Rules
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`of Professional Conduct and disciplinary jurisdiction set forth in 37 C.F.R. §§
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`10.20 et seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a). Exhibit
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`2012 ¶ 11.
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`11. Mr. Lanham has applied to appear pro hac vice in no other
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`proceedings before the Office in the last three (3) years. Exhibit 2012 ¶ 12.
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`IV. Good Cause Exits for the Pro Hac Vice Admission of John R. Lanham
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`The facts outlined above in the Statement of Facts and contained in the
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`Declaration of John R. Lanham (Exhibit 2012) establish that there is good cause to
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`admit Mr. Lanham pro hac vice in this proceeding under 37 C.F.R. § 32.10. Mr.
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`Lanham is an experienced litigating attorney and has an established familiarity
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`with the subject matter at issue in this proceeding.
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`V. Conclusion
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`For the foregoing reasons, Patent Owner respectfully requests that the Board
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`admit Mr. Lanham pro hac vice in this proceeding.
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`sd-685253
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`IPR2016-00060
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`Docket No.: 604140000012
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`
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`Date: August 11, 2016
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`Respectfully Submitted,
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`By: /s / Brian M. Kramer
`
`Brian M. Kramer, Reg. No. 48,994
`Morrison & Foerster LLP
`12531 High Bluff Drive, Suite 100
`San Diego, CA 92130
`Tel: (858) 314-5415
`Attorney for Patent Owner
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`sd-685253
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`5
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`IPR2016-00060
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`Docket No.: 604140000012
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`
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`Certificate of Service (37 C.F.R. § 42.6(e)(4))
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`I hereby certify that the attached Patent Owner’s Motion for Pro Hac Vice
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`Admission of John R. Lanham Under 37 C.F.R. § 42.10(c) and the Supporting
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`Declaration of John R. Lanham, were served on the date listed below via electronic
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`mail upon the following counsel of record for Petitioner.
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`
`
`DBecker-PTAB@fenwick.com
`Daniel M. Becker
`Jennifer R. Bush
`Fenwick & West LLP
`801 California Street
`Mountain View, CA 94041
`
`/s/ Brian M. Kramer
`Brian M. Kramer
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`Dated: August 11, 2016
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`sd-685253
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`6
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