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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GENZYME CORPORATION,
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`Petitioner,
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`V.
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`GENENTECH, INC. AND CITY OF HOPE,
`Patent Owner.
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`Case IPR2016-00460
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`Patent 6,331,415 B1
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`DECLARATION OF ROBERT J. GUNTHER, JR. IN SUPPORT OF
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`MOTION FOR ADMISSION PRO HAC VICE
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`Genzyme V. Genentech
`IPR2016-00460
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`Genentech 2101
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`Genzyme v. Genentech
`IPR2016-00460
`Genentech 2101
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`Case No. IPR20l 6-00460
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`Gunther Declaration
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`I, Robert J. Gunther, Jr. declare as follows:
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`I was admitted to the New York Bar in February of 1985 and have been
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`practicing law for 30 years. During the entire time that I have been
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`practicing law, my practice has focused on the field of intellectual property,
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`and particularly, patent litigation.
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`I am a member in good standing of the Bar of New York, and am admitted
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`to practice before District Courts of the Southern District of New York, the
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`Eastern District of New York, the Western District of New York, the
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`Northern District of California, the District of Colorado, the Eastern District
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`of Michigan, the Western District of Michigan, and the Northern District of
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`Illinois.
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`I am also admitted to practice before the U.S. Courts of Appeals for
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`the Second, Ninth, Tenth, and Federal Circuits.
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`I am a fellow of The
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`American College of Trial Lawyers.
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`My New York Bar membership number is 1967652.
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`Over the course of my career, I have been counsel in dozens of patent
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`litigations. Several of these cases have concerned Patent Office rules and
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`regulations. For example, I have litigated a number of cases concerning the
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`duty of candor to the Patent Office embodied in 37 C.F.R. § 1.56. Cases that
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`I have been involved in which implicate this rule include Apotex, Inc. v.
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`Case No. IPR2016-00460
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`Gunther Declaration
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`Cephalon, Inc., et al., Civ. No. 2:06-cV—O2768—MSG (l3.D. Pa.); Anascape
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`Ltd. V. Nintendo ofAmerica Inc., Civ. No. 9:06—CV—158—RC (E.D. Tex.) and
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`Nintendo ofAmerica Inc. v. The Magnavox Company et al, Civ. No. 86 Civ.
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`1606 (LBS) (S.D.N.Y.).
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`I have never been suspended or disbarred from practice before any court or
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`administrative body.
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`I have never had a court or administrative body deny my application for
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`admission to practice.
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`I have never had any sanctions or contempt citations imposed on me by any
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`court or administrative body.
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`I have read and will comply with Office Patent Trial Practice Guide and the
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`Board’s Rules of Practice for Trials, as set forth in 37 C.F.R., Part 42.
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`I agree to be subject to the United States Patent and Trademark Office Rules
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`of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and
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`disciplinary jurisdiction under 37 C.F.R. § 11.l9(a).
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`10.
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`I was admitted pro hac vice in IPR2014—O1093 before the United States
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`Patent Trial and Appeal Board on May 28, 2015 and presented the argument
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`for Petitioner at the oral hearing on August 24, 2015.
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`I also represent
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`Genentech in IPR2015—01624 (pro hac vice motion pending).
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`ll.
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`In addition to this matter, I currently represent Genentech in certain matters
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`Case No. IPR20l 6-00460
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`Gunther Declaration
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`related to biosimilars, and in two co—pending Inter Partes Review
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`proceedings involving U.S. Patent No. 6,331,415 (the ‘4l5 Patent”):
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`IPR20l5-01624 and IPR20l6—OO383.
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`I have also represented Genentech’s
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`corporate parent, Roche, in many patent litigation matters since 2004.
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`Patent and patent related cases in which I represent or have represented
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`Roche Molecular Systems, Inc. or its affiliates include: Roche Diagnostics
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`GmbH et al. v. Enzo Biochem, Inc. et al., Civ. No. l:O4 Civ. 4046 (RJS)
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`(S.D.N.Y.); Enzo Life Sciences, Inc. v. Roche Molecular Systems, Inc., Civ.
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`No. l:20l2—cv-00106 (D. Del.); Digene Corp. V. F. Hoflmann—La Roche Ltd.
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`and Roche Molecular Systems, Inc., Case No. 50 181 T00502 06
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`(International Centre for Dispute Resolution, American Arbitration
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`Association, NY, NY); Roche Molecular Systems, Inc, et al. 1/. One Lambda
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`Inc., ICC Case No. 17613/FM (International Chamber of Commerce, Zurich,
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`Switzerland); Roche Molecular Systems, Inc., et al. v. Cepheia’, ICC Case
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`No. 18130/FM/MHM/EMT (International Chamber of Commerce, Zurich,
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`Switzerland).
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`12.
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`I am intimately familiar with the subject matter of the ‘4l5 Patent and the
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`prior art at issue in this proceeding. While at a prior firm, I was one of the
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`attorneys who litigated on behalf of Genentech against Medimmune with
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`Case No. IPR20l6-00460
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`Gunther Declaration
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`respect to validity and infringement issues relating to the ‘4l5 patent. I am
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`also intimately familiar with antibody technology as a result of my
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`participation as counsel in prior antibody—related patent cases such as Abbott
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`GMBH & C0., er al. v. Cerztocor Ortho Biotech, Inc., Civ. No. 09-1 l340—
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`FDS (D. Mass). In addition, I have represented life sciences and
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`pharmaceutical companies, including AbbVie, Cephalon, Chugai
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`Pharmaceuticals, GSK, Genentech, Novartis and Roche in many patent
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`litigation matters before federal district courts and arbitration tribunals. The
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`technology involved in these disputes includes fully human and humanized
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`monoclonal antibodies generated in transgenic mice and by phage display,
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`antibody/antigen binding affinity and measurement of same through
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`techniques such as surface plasmon resonance, epitope mapping,
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`crystallography, amplification of nucleic acids through techniques such as
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`polymerase chain reaction, antibody/antigen diagnostic assays and the
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`production and use of labeled hybridization probes.
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`13.
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`I hereby declare that all statements made herein of my own knowledge are
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`true and that all statements made on information and belief are believed to
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`be true; and further that these statements are made with the knowledge that
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`willful false statements and the like are punishable by fine, imprisonment, or
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`both, under Section 1001 of Title 18 of the United States Code.
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`Case No. IPR2016-00460
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`Gunther Declaration
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`Respectgflly Submitted,
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`V
` é
`E
`.3
`Robert J. Gurfther, Jr.
`WILMER CUTLER PICKERING
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`_,
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`HALE AND DORR LLP
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`7 World Trade Center
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`New York, New York 10007
`robert.gunther@wi1merha1e.com
`Te1.: 212-230-8830
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`Fax: 212-230-8888
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`Dated: February 5, 2016
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