Case IPR2016-00383
`Patent 6,331,415
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`GENZYME CORPORATION,
`
`Petitioner
`
`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. IPR2016-00383
`____________________
`
`_________________________________________________________________
`
`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
`____________________
`
`GENZYME CORPORATION,
`
`Petitioner
`
`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. IPR2016-00383
`____________________
`
`_________________________________________________________________
`
`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 IPR2016-00383
`Patent 6,331,415
`
`I.
`
`RELIEF REQUESTED
`
`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
`
`Order states that the motion must “[c]ontain a statement of facts showing there is
`
`good cause for the Board to recognize counsel pro hac vice during the
`
`proceeding,” and “[b]e accompanied by an affidavit or declaration of the individual
`
`seeking to appear” which attests to a number of facts concerning the counsel
`
`seeking admission pro hac vice specified in the Representative Order.
`
`
`
`2
`
`
`
`
`
`Case IPR2016-00383
`Patent 6,331,415
`
`
`
`III.
`
`STATEMENT OF FACTS
`
`1.
`
`Patent Owners’ lead counsel, David Cavanaugh, is a registered
`
`practitioner (Reg. No. 36,476). Backup counsel, Heather M. Petruzzi, Adam R.
`
`Brausa, and Jeffrey P. Kushan, are also registered practitioners.
`
`2. Ms. Durie is a Partner at the law firm Durie Tangri LLP. (Exhibit
`
`2002, Declaration of Daralyn J. Durie in Support of Patent Owners’ Motion for
`
`Pro Hac Vice Admission in Case IPR2016-00383¶ 2).
`
`3. Ms. Durie is an experienced litigating attorney and has been litigating
`
`cases relating to patents for over 20 years. (Id. ¶ 2)
`
`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).
`
`5. Ms. Durie has never been suspended or disbarred from practice before
`
`any court or administrative body. (Id. ¶ 5).
`
`6.
`
`No application filed under Ms. Durie for admission to practice before
`
`any court or administrative body has ever been denied. (Id. ¶ 6).
`
`7.
`
`No sanctions or contempt citations have been imposed against Ms.
`
`Durie by any court or administrative body. (Id. ¶ 7).
`
`
`
`3
`
`
`
`
`
`
`
`Case IPR2016-00383
`Patent 6,331,415
`
`8. Ms. Durie has 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. (Id. ¶ 8).
`
`9. Ms. Durie understands that she will 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). (Id. ¶ 9).
`
`10. Ms. Durie has submitted a motion for pro hac vice admission in IPR
`
`2015-01624 (motion pending). (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 all of
`
`these cases involving the ’415 patent, she has represented Genentech and in several
`
`of these cases, she also represented City of Hope. During these litigations, she has
`
`worked closely with Adam R. Brausa, back-up counsel for Genentech and City of
`
`Hope in this matter. (Id.).
`
`12. Additionally, she has carefully reviewed and has developed extensive
`
`familiarity with the matters involved in and implicated by these proceedings,
`
`
`
`4
`
`
`
`
`
`Case IPR2016-00383
`Patent 6,331,415
`
`
`
`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, 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
`
`counsel, David L. Cavanaugh, is a registered practitioner in good standing before
`
`the Board. Ms. Durie is an attorney in good standing in the State Bar of California
`
`and the United States Court of Appeals for the Federal Circuit. Ms. Durie has
`
`extensive experience litigating patents, including the ’415 patent, which is the
`
`subject of this proceeding. As a result, Ms. Durie is familiar with the subject
`
`matter at issue in this proceeding. Furthermore, Ms. Durie has carefully reviewed
`
`the ’415 patent at issue in this proceeding, its prosecution history, the prior art, the
`
`grounds advanced by the Petitioners and other aspects of the record in this
`
`proceeding, and is familiar with these matters. Based on her experience and
`
`knowledge, there is good cause to admit Ms. Durie pro hac vice in this proceeding.
`
`
`
`5
`
`
`
`
`
`Case IPR2016-00383
`Patent 6,331,415
`
`CONCLUSION
`
`
`
`V.
`
`In light of the foregoing, Patent Owner respectfully requests that the Board
`
`admit Daralyn J. Durie pro hac vice in this proceeding.
`
`
`
`Date: February 8, 2016
`
`
`
`
`
`Respectfully submitted,
`
` By: /David L. Cavanaugh/
`David L. Cavanaugh
`Reg. No. 36,476
`Wilmer Cutler Pickering Hale and Dorr LLP
`1875 Pennsylvania Avenue NW
`Washington, DC 20006
`
`6
`
`
`
`Case IPR2016-00383
`Patent 6,331,415
`
`
`
`Table of Exhibits for IPR2016-00383
`
`
`
`2001 DECLARATION OF ROBERT J. GUNTHER, JR. IN SUPPORT OF
`MOTION FOR ADMISSION PRO HAC VICE
`2002 DECLARATION OF DARALYN J. DURIE IN SUPPORT OF
`PATENT OWNERS’ MOTION FOR PRO HAC VICE ADMISSION
`
`
`
`
`
`Case IPR2016-00383
`Patent 6,331,415
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that, on February 8, 2016, I caused a true and correct copy of the
`foregoing materials:
`
`
`Patent Owners’ Motion for Pro Hac Vice Admission Of
`Daralyn J. Durie Under 37 C.F.R. § 42.10(C)
`
`Exhibit 2002, Declaration of Daralyn J. Durie in Support of
`Patent Owner’s Motion for Pro Hac Vice Admission
`
`•
`
`•
`
`
`
`
`
`Exhibit List
`
`
`
`/Margareta K. Sorenson/
`Margareta K. Sorenson
`Reg. No. 71,601
`Wilmer Cutler Pickering Hale and Dorr LLP
`1875 Pennsylvania Ave., N.W.
`Washington, DC 20006
`Tel: 202-663-6000
`
`
`to be served via electronic mail on the following attorneys of record:
`Richard McCormick
`Lisa M. Ferri
`Brian W. Nolan
`Mayer Brown LLP
`1675 Broadway
`New York, NY 10019
`Rmccormick@mayerbrown.com
`LFerri@mayerbrown.com
`BNolan@mayerbrown.com
`MB-Genzyme-Cabilly-IPR@mayerbrown.com
`
`•
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
