Case No. IPR2016-00383
`U. S. Patent No. 6,331,415
`Filed on behalf of: Genzyme Corporation
`
`
`
`
`
`
`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
`____________________________________
`
`Case No. IPR2016-00383
`U. S. Patent No. 6,331,415
`____________________________________
`
`
`
`MOTION FOR LISA M. FERRI TO APPEAR PRO HAC VICE ON BEHALF
`OF PETITIONER GENZYME CORPORATION
`
`REDACTED
`
`
`U. S. Patent No. 6,331,415
`Filed on behalf of: Genzyme Corporation
`
`
`
`
`
`
`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
`____________________________________
`
`Case No. IPR2016-00383
`U. S. Patent No. 6,331,415
`____________________________________
`
`
`
`MOTION FOR LISA M. FERRI TO APPEAR PRO HAC VICE ON BEHALF
`OF PETITIONER GENZYME CORPORATION
`
`REDACTED
`
`
`
`Case No. IPR2016-00383
`U. S. Patent No. 6,331,415
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`Pursuant to the Board’s January 7, 2016 Notice authorizing motions for pro
`
`hac vice admission (Paper No. 3), and 37 C.F.R. §§ 42.10(c) and 42.22, Petitioner
`
`Genzyme Corporation (“Genzyme”) hereby moves for an Order authorizing Lisa
`
`M. Ferri of Mayer Brown LLP to appear pro hac vice on behalf of Genzyme
`
`Corporation in the above-captioned case.
`
`II. LIST OF EXHIBITS RELIED UPON FOR THIS MOTION
`
`For this motion, Petitioner relies on Genzyme Exhibit 1059 – Declaration of
`
`Lisa M. Ferri in Support of Motion to Appear Pro Hac Vice on Behalf of Petitioner
`
`Genzyme Corporation, and Genzyme 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, Genzyme has made
`
`the showings required under 37 C.F.R. § 42.10(c) for recognizing Ms. Ferri pro
`
`hac vice in this case. Ms. Ferri is an experienced litigating attorney and has an
`
`established familiarity with the subject matter at issue in the above-captioned
`
`proceeding.
`
`Ms. Ferri has been involved in numerous patent litigations in various U.S.
`
`District Courts and has been admitted pro hac vice in three previous inter partes
`
`1
`
`REDACTED
`
`
`
`Case No. IPR2016-00383
`U. S. Patent No. 6,331,415
`
`review proceedings before the United States Patent and Trademark Office.
`
`(Genzyme Exhibit 1059, Declaration of Lisa M. Ferri). In particular, Ms. Ferri has
`
`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 and expertise with the subject matter at
`
`issue in this proceeding, including the patent, file history, technology and prior art.
`
`In light of the facts presented in detail below and in Ms. Ferri’s accompanying
`
`Declaration and Professional Profile, good cause exists for the pro hac vice
`
`admission of Ms. Ferri in this proceeding under 37 C.F.R. § 42.10(c).
`
`IV. STATEMENT OF MATERIAL FACTS
`
`
`
`37 C.F.R. § 42.10(c) states
`
`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.
`
`Lead counsel in the instant inter partes review proceeding is Richard J.
`
`McCormick. Mr. McCormick is registered to practice before the United States
`
`Patent and Trademark Office and holds Registration No. 55,902. The following
`
`statement of facts demonstrates that Ms. Ferri is an experienced litigating attorney
`
`2
`
`REDACTED
`
`
`
`Case No. IPR2016-00383
`U. S. Patent No. 6,331,415
`
`and has an established familiarity with the subject matter at issue in this
`
`proceeding. Accordingly, there is good cause for the Board to recognize Ms. Ferri
`
`pro hac vice.
`
`As set forth in Genzyme 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. Genzyme 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 numerous cases in the pharmaceutical and biotechnology fields.
`
`1059, ¶ 1. She has appeared as lead trial counsel before the United States District
`
`Courts and the U.S. International Trade Commission. Id. Furthermore, she has
`
`represented clients before the United States Court of Appeals for the Federal
`
`Circuit, including as lead counsel. Id.; Genzyme Exhibit 1060. Ms. Ferri is an
`
`adjunct professor of law at Fordham University School of Law, where she teaches
`
`patent litigation. Genzyme Exhibit 1059, ¶2.
`
`Ms. Ferri has expertise with the technology and file history of the patent
`
`challenged in the instant proceeding, having served as counsel for
`
`GlaxoSmithKline, Human Genome Sciences, and Bristol-Myers Squibb in
`
`previous litigations concerning the ’415 patent: Glaxo Group Ltd., et al., v.
`
`Genentech, Inc., et al., Case No. 10-cv-02764 (C.D. Cal.), Human Genome
`
`3
`
`REDACTED
`
`
`
`Case No. IPR2016-00383
`U. S. Patent No. 6,331,415
`
`Sciences Inc. v. Genentech, Inc., et al., Case No. 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., ¶ 3.
`
`Ms. Ferri also presently serves as lead counsel in patent litigations involving
`
`U.S. Patent No. 7,923,221, which is a continuation of the presently-challenged
`
`’415 patent and involves the same recombinant antibody technology claimed in the
`
`’415 patent. These cases are Genzyme Corp. v. Genentech, Inc. and City of Hope,
`
`Case No. 15-cv-09991 (C.D. Cal.), and Sanofi Aventis U.S. LLC and Regeneron
`
`Pharmaceuticals, Inc. v. Genentech, Inc. and City of Hope, Case No. 15-cv-05685
`
`(C.D. Cal.). Id.
`
`
`
`Ms. Ferri therefore is familiar with the ’415 patent at issue in this proceeding
`
`as well as the legal, technical, and prior art subject matter discussed in Genzyme’s
`
`Petition for inter partes review of the ’415 patent, which forms the basis of this
`
`proceeding. Id., ¶ 4.
`
`
`
`Ms. Ferri has read and will 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., ¶ 9. Ms Ferri also agrees to be subject to the United States Patent and
`
`Trademark Office Code of Professional Responsibility set forth in 37 C.F.R. §§
`
`11.101 et seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a). Id., ¶ 10.
`
`4
`
`REDACTED
`
`
`
`Case No. IPR2016-00383
`U. S. Patent No. 6,331,415
`
`
`Finally, Ms. Ferri has attested to the remaining elements of Paragraph 2(b)
`
`of the representative “Order – Authorizing Motion for Pro Hac Vice Admission” in
`
`Case IPR2013-00639, Paper No. 7. Id., ¶¶ 5-8 and 11. Namely, she is a member
`
`in good standing of the Bar of New York and the Bar of New Jersey. Id., ¶5. Ms.
`
`Ferri is also admitted to practice before the U.S. Supreme Court, the U.S. Court of
`
`Appeals for the Federal Circuit and several additional courts, including the U.S.
`
`District Court for the Southern District of New York, the District of New Jersey,
`
`and the United States Court of International Trade. Id. Ms. Ferri has never been
`
`suspended, disbarred or sanctioned by a court or administrative body. Id. ¶6. She
`
`has never had a court or administrative body deny her application for admission to
`
`practice. Id. ¶7. She has never been sanctioned or cited for contempt by any court
`
`or administrative body. Id. ¶8. She has applied for and been admitted pro hac vice
`
`in three prior inter partes proceedings before the U.S. Patent and Trademark
`
`Office: Ranbaxy Laboratories Ltd. et al., v. Vertex Pharmaceuticals Incorporated,
`
`Case No. IPR2013-00024; Lupin Ltd. v. Vertex Pharmaceuticals Incorporated,
`
`Case No. IPR2015-00405; and Sanofi-Aventis U.S. LLC and Regeneron
`
`Pharmaceuticals, Inc. v. Genentech, Inc. and City of Hope, Case No. IPR2015-
`
`01624; and Ms. Ferri applied for pro hac vice admission today, February 18, 2016,
`
`in Genzyme Corp. v. Genentech, Inc. and City of Hope, Case No. IPR2016-00460,
`
`which is currently pending. Id. ¶ 11.
`
`5
`
`REDACTED
`
`
`
`Case No. IPR2016-00383
`U. S. Patent No. 6,331,415
`
`V. CONCLUSION
`
`In view of the foregoing, and having satisfied the requirements of 37 C.F.R.
`
`§ 42.10(c), Petitioner respectfully moves for an Order allowing Lisa M. Ferri of
`
`Mayer Brown LLP to appear pro hac vice on behalf of Petitioner in the above-
`
`captioned case.
`
`Dated: February 18, 2016
`
`Respectfully submitted,
`
`
`
`/Richard J. McCormick/
`Richard J. McCormick (Reg. No. 55,902)
`rmccormick@mayerbrown.com
`Lisa M. Ferri (pro hac vice submitted herewith)
`Brian W. Nolan (Reg. No. 45,821)
`Mayer Brown LLP
`1221 Avenue of the Americas
`New York, NY 10020
`Tel: (212) 506-2500
`Fax: (212) 262-1910
`
`For Petitioner Genzyme Corporation
`
`
`
`
`
`
`
`
`
`
`
`6
`
`REDACTED
`
`
`
`IPR2016-00383
`U.S. Patent No. 6,331,415
`CERTIFICATE OF SERVICE
`
`I hereby certify that true and correct copies of the Motion for Lisa M. Ferri
`to Appear Pro Hac Vice on Behalf of Petitioner Genzyme Corporation, Genzyme
`Exhibit 1059 – Declaration of Lisa M. Ferri in Support of Motion to Appear Pro
`Hac Vice on Behalf of Petitioner Genzyme Corporation, and Genzyme Exhibit
`1060 – Mayer Brown Professional Profile of Lisa M. Ferri, were served February
`18, 2016 via electronic mail on counsel of record for the Patent Owners of U.S.
`Patent No. 6,331,415 in IPR2016-00383, pursuant to Paper Nos. 4-6 and 37 C.F.R.
`§ 42.6(e), at the following addresses:
`
`David L. Cavanaugh, Reg. No. 36,476
`David.Cavanaugh@wilmerhale.com
`
`Robert J. Gunther, Jr., pro hac vice motion pending
`Robert.Gunther@wilmerhale.com
`
`Heather M. Petruzzi, Reg. No. 71,270
`Heather.Petruzzi@wilmerhale.com
`
`Adam R. Brausa, Reg. No. 60,287
`abrausa@durietangri.com
`
`Daralyn J. Durie, pro hac vice motion pending
`ddurie@durietangri.com
`
`Jeffrey P. Kushan, Reg. No. 43,401
`jkushan@sidley.com
`
`Respectfully submitted,
`
`/Scott A. McMurry/
`Scott A. McMurry (Reg. No. 61,152)
`smcmurry@mayerbrown.com
`MAYER BROWN LLP
`1221 Avenue of the Americas
`New York, NY 10020-1001
`Telephone: (212) 506-2216
`Fax: (212) 849 5682
`
`
`
`Dated: February 18, 2016
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`REDACTED
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
