`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`LUPIN LIMITED
`AND LUPIN PHARMACEUTICALS INC.,
`Petitioners
`
`v.
`iCEUTICA PTY LTD.
`
`Patent Owner
`
`Case No. IPR2016-00399
`U.S. Patent No. 9,017,721
`
`DECLARATION OF WILLIAM R. ZIMMERMAN IN SUPPORT OF
`MOTION TO APPEAR PRO HAC VICE ON BEHALF OF PETITIONERS
`
`LUPIN EX. 1039
`Lupin v. iCeutica
`IPR2016-00399
`
`
`
`Lupin V. iCeutica Pty Ltd
`IPR2016—00399
`
`I, William R. Zimmerman, do hereby declare:
`
`l.
`
`I am a partner in the law firm of Knobbe Martens Olson & Bear, LLP.
`
`Lead counsel in this inter partes review proceeding is Christy G. Lea, who is also a
`
`partner in the law firm of Knobbe Martens Olson & Bear, LLP. Ms. Lea is
`
`registered to practice before the United States Patent and Trademark Office and
`
`holds Registration No. 51,754. With respect to this proceeding, I will work closely
`
`with Ms. Lea.
`
`2.
`
`I have over 16 years of experience as a patent litigator and have
`
`represented clients in numerous patent litigation cases in various United States
`
`District Courts and the Court of Appeals for the Federal Circuit.
`
`I also have
`
`experience in inter partes review proceedings,
`
`for example,
`
`IPR20l3—00024,
`
`IPR2013~0O128,
`
`IPR20l3—O0266,
`
`IPR20l3-00517,
`
`IPR20l3—005l8,
`
`IPR2014-
`
`01093, IPR2015—O0265, and IPR20l5-00268.
`
`3.
`
`I am comfortable and experienced with technically and legally
`
`complex matters, such as will be present in this proceeding. In particular, I am
`
`experienced with technically and legally complex matters in the field of chemistry
`
`and biotechnology. In addition to my experience with technically and legally
`
`complex patent matters,
`
`I hold a Bachelor of Science degree in Chemical
`
`Engineering from the University of Notre Dame. I also served as a law clerk to the
`
`
`
`Lupin V. iCeutica Pty Ltd
`IPR20 1 6—003 99
`
`Honorable Alvin A. Schall, Circuit Judge of the United States Court of Appeals for
`
`the Federal Circuit.
`
`4.
`
`I am familiar with U.S. Patent No. 9,017,721 and with the legal
`
`subject matter, technical subject matter, and prior art discussed in Petitioners’
`
`request for inter partes review of US. Patent No. 9,017,721, which forms the basis
`
`for this proceeding. In view of my legal experience, technical background, and
`
`familiarity with the issues in the present matter, Petitioners have requested my
`
`services in the present matter. Denial of my appearance in this case would create
`
`an undue burden on Petitioners.
`
`5.
`
`I am a member in good standing of the Bar of the State of California
`
`and the Bar of the District of Columbia. I am admitted to practice before the
`
`Supreme Court of the United States and before the United States Court of Appeals
`
`for the Federal Circuit.
`
`6.
`
`I have never been suspended or disbarred from practice before any
`
`court or administrative body.
`
`7.
`
`I have never had a court or administrative body deny my application
`
`for admission to practice.
`
`8.
`
`I have never been sanctioned or cited for contempt by any court or
`
`administrative body.
`
`
`
`Lupin V. iCeutica Pty Ltd
`IPR20 1 6-003 99
`
`9.
`
`I have 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 the Code
`
`of Federal Regulations.
`10.
`I agree to be subj ect to the United States Patent and Trademark Office
`
`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).
`
`11.
`
`In the past three (3) years, I have appeared pro hac Vice in proceedings
`
`before the United States Patent and Trademark Office in the matter of Ranbaxy
`
`Laboratories Ltd. and Ranbaxy Inc. v. Vertex Pharmaceuticals, Inc.,
`
`IPR2013—
`
`00024; in the matters of Intelligent Rz'o—Systerns, Inc. v. Illamina Cambridge IJd.,
`TPR2013—OO128,
`IPR2013~00266,
`IPR2013—00517, and IPR2013—00518;
`in the
`
`matter of Ariosa Diagnostics, Inc. v. Illumina, Inc., IPR2014—Ol093; and in the
`
`matters of Mylan Plzarrns., Inc. v. Novartis AG and LTS Lohman Tlzerapie—Systeme
`
`AG, IPR20l5-00265 and IPR2015—00268.
`
`
`
`Lupin V. iCeutica Pty Ltd
`IPR2016—00399
`
`12.
`
`I 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 were 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.
`
`Dated:
`
`3417! 16
`
`22368650
`123015
`
`W
`
`William R. Zimmerman
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