UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GENZYME CORPOILATION,
`
`Petitioner,
`
`V.
`
`GENENTECH, INC. AND CITY OF HOPE,
`Patent Owner.
`
`Case IPR2016—00383
`
`Patent 6,331,415 B I
`
`DECLARATION OF ROBERT J. GUNTHER, JR. IN SUPPORT OF
`
`MOTION FOR ADMISSION PRO HAC VICE
`
`Genzyme V. Genentech
`IPR2016-003 83
`
`Genentech 2001
`
`Genzyme v. Genentech
`IPR2016-00383
`Genentech 2001
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GENZYME CORPOILATION,
`
`Petitioner,
`
`V.
`
`GENENTECH, INC. AND CITY OF HOPE,
`Patent Owner.
`
`Case IPR2016—00383
`
`Patent 6,331,415 B I
`
`DECLARATION OF ROBERT J. GUNTHER, JR. IN SUPPORT OF
`
`MOTION FOR ADMISSION PRO HAC VICE
`
`Genzyme V. Genentech
`IPR2016-003 83
`
`Genentech 2001
`
`Genzyme v. Genentech
`IPR2016-00383
`Genentech 2001
`
`
`
`Case No. IPR20l 6-003 83
`
`Gunther Declaration
`
`I, Robert J. Gunther, Jr. declare as follows:
`
`1.
`
`I was admitted to the New York Bar in February of 1985 and have been
`
`practicing law for 30 years. During the entire time that I have been
`
`practicing law, my practice has focused on the field of intellectual property,
`
`and particularly, patent litigation.
`
`I am a member in good standing of the Bar of New York, and am admitted
`
`to practice before District Courts of the Southern District of New York, the
`
`Eastern District of New York, the Western District of New York, the
`
`Northern District of California, the District of Colorado, the Eastern District
`
`of Michigan, the Western District of Michigan, and the Northern District of
`
`Illinois.
`
`I am also admitted to practice before the U.S. Courts of Appeals for
`
`the Second, Ninth, Tenth, and Federal Circuits.
`
`I am a fellow of The
`
`American College of Trial Lawyers.
`
`My New York Bar membership number is 1967652.
`
`Over the course of my career, I have been counsel in dozens of patent
`
`litigations. Several of these cases have concerned Patent Office rules and
`
`regulations. For example, I have litigated a number of cases concerning the
`
`duty of candor to the Patent Office embodied in 37 C.F.R. § 1.56. Cases that
`
`I have been involved in which implicate this rule include Apotex, Inc. v.
`
`
`
`Case No. IPR20 1 6-003 83
`
`Gunther Declaration
`
`Cephalon, Inc., et al., Civ. No. 2:06-cv-02768-MSG (E.D. Pa.); Anascape
`
`Ltd. V. Nintendo ofArnerz'ca Inc., Civ. No. 9:06-CV—l58—RC (E.D. Tex.) and
`
`Nintendo ofAmerica Inc. v. The Magnavox Company et al, Civ. No. 86 Civ.
`
`1606 (LBS) (S.D.N.Y.).
`
`I have never been suspended or disbarred from practice before any court or
`
`administrative body.
`
`I have never had a court or administrative body deny my application for
`
`admission to practice.
`
`I have never had any sanctions or contempt citations imposed on me by any
`
`court or administrative body.
`
`I have read and will comply with Office Patent Trial Practice Guide and the
`
`Board’s Rules of Practice for Trials, as set forth in 37 C.F.R. Part 42.
`
`I agree to be subject to the United States Patent and Trademark Office Rules
`
`of Professional Conduct set forth in 37 C.F.R. §§ ll.10l et seq. and
`
`disciplinary jurisdiction under 37 C.F.R. § ll.l9(a).
`
`10.
`
`I was admitted pro hac vice in IPRZOI4-01093 before the United States
`
`Patent Trial and Appeal Board on May 28, 2015 and presented the argument
`
`for Petitioner at the oral hearing on August 24, 2015.
`
`I also represent
`
`Genentech in IPR20l5—01624 (pro hac vice motion pending).
`
`
`
`ll.
`
`In addition to this matter,
`
`I currently represent Genentech in certain matters
`
`Case No. IPR20l6-00383
`
`Gunther Declaration
`
`related to biosimilars, and in two co—pending Inter Partes Review
`
`proceedings involving U.S. Patent No. 6,331,415 (the ‘4l5 Patent”),
`
`IPR20l5~0l624 and IPR20l6-00460.
`
`I have also represented Genentech’s
`
`corporate parent, Roche, in many patent litigation matters since 2004.
`
`Patent and patent related cases in which I represent or have represented
`
`Roche Molecular Systems, Inc. or its affiliates include: Roche Diagnostics
`
`Gml)H et al. V. Enzo Biochem, Inc. et al., Civ. No. 1:04 Civ. 4046 (RJS)
`
`(S.D.N.Y.); Enzo Life Sciences, Inc. v. Roche Molecular Systems, Inc., Civ.
`
`No. l:20l2-cv—00l06 (D. Del.); Digene Corp. v. F. Hoffmann—La Roche Ltd.
`
`and Roche Molecular Systems, Inc., Case No. 50 181 T00502 06
`
`(International Centre for Dispute Resolution, American Arbitration
`
`Association, NY, NY); Roche Molecular Systems, Inc., et al. V. One Lambda
`
`Inc., ICC Case No. 17613/FM (International Chamber of Commerce, Zurich,
`
`Switzerland); Roche Molecular Systems, Inc, et al. v. Cepheia’, ICC Case
`
`No. 18130/FM/MHM/EMT (International Chamber of Commerce, Zurich,
`
`Switzerland).
`
`l2.
`
`I am intimately familiar with the subject matter of the ‘4l5 Patent and the
`
`prior art at issue in this proceeding. While at a prior firm, I was one of the
`
`attorneys who litigated on behalf of Genentech against Medimmune with
`
`
`
`Case No. IPR20l6-003 83
`
`Gunther Declaration
`
`respect to validity and infringement issues relating to the ‘4l5 patent.
`
`I am
`
`also intimately familiar with antibody technology as a result of my
`
`participation as counsel in prior antibody—related patent cases such as Abbott
`
`GMBH & C0., er al. v. Centocor Orrho Biotech, Inc., Civ. No. 09-11340-
`
`FDS (D. Mass). In addition, I have represented life sciences and
`
`pharmaceutical companies, including AbbVie, Cephalon, Chugai
`
`Pharmaceuticals, GSK, Genentech, Novartis and Roche in many patent
`
`litigation matters before federal district courts and arbitration tribunals. The
`
`technology involved in these disputes includes fully human and humanized
`
`monoclonal antibodies generated in transgenic mice and by phage display,
`
`antibody/antigen binding affinity and measurement of same through
`
`techniques such as surface plasmon resonance, epitope mapping,
`
`crystallography, amplification of nucleic acids through techniques such as
`
`polymerase chain reaction, antibody/antigen diagnostic assays and the
`
`production and use of labeled hybridization probes.
`
`13.’
`
`I hereby declare that all statements made 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 are punishable by fine, imprisonment, or
`
`both, under Section 1001 of Title 18 of the United States Code.
`
`
`
`Case No. lPR2016~003 83
`
`Gunther Declaration
`
`Respectfully Submitted,
`. K)
`
`J
`
`/
`
`\
`
`Mart)
`
`%
`Robert J. Gynther, Jr.
`WILMER CUTLER PICKERING
`HALE AND DORR LLP
`
`7 World Trade Center
`
`New York, New York l0007
`robert.gunther@wilmerhale.com
`Tel.: 212-230-8830
`
`Fax: 212-230-8888
`
`Dated: February 5, 2016
`
`
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