`Patent 6,331,415
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
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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,
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`Patent Owners.
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`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. IPR2016-00460
`____________________
`
`_________________________________________________________________
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`PATENT OWNERS’ MOTION FOR PRO HAC VICE ADMISSION OF
`DARALYN J. DURIE UNDER 37 C.F.R. § 42.10(C)
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`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Case IPR2016-00460
`Patent 6,331,415
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`I.
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`RELIEF REQUESTED
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`Pursuant to 37 C.F.R. § 42.10(c), Patent Owners Genentech, Inc.
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`(“Genentech”) and City of Hope by and through its attorneys, respectfully requests
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`that the Board admit Daralyn J. Durie pro hac vice in this proceeding.
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`II. GOVERNING LAW, RULES, AND PRECEDENT
`Section 42.10(c) of 37 C.F.R. provides as follows:
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`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.
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`The Board has specified that a motion for pro hac vice admission shall be
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`filed in accordance with the “ORDER-AUTHORIZING MOTION FOR PRO HAC
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`VICE ADMISSION – 37 C.F.A. § 42.10” in Unified Patents, Inc. v. Parallel Iron,
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`LLC, Case No. IPR2013-00639 (“Representative Order”). The Representative
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`Order states that the motion must “[c]ontain a statement of facts showing there is
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`good cause for the Board to recognize counsel pro hac vice during the
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`proceeding,” and “[b]e accompanied by an affidavit or declaration of the individual
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`seeking to appear” which attests to a number of facts concerning the counsel
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`seeking admission pro hac vice specified in the Representative Order.
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`III.
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`STATEMENT OF FACTS
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`1.
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`Patent Owners’ lead counsel, David Cavanaugh, is a registered
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`practitioner (Reg. No. 36,476). Backup counsel, Heather M. Petruzzi, Adam R.
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`Brausa, and Jeffrey P. Kushan, are also registered practitioners.
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`2. Ms. Durie is a Partner at the law firm Durie Tangri LLP. (Exhibit
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`2002, Declaration of Daralyn J. Durie in Support of Patent Owners’ Motion for
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`Pro Hac Vice Admission in Case IPR2016-00460, ¶ 2).
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`3. Ms. Durie is an experienced litigating attorney and has been litigating
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`cases relating to patents for over 20 years. (Id. ¶ 2)
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`4. Ms. Durie is a member in good standing of the California State Bar,
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`and among other courts, the United States Court of Appeals for the Federal Circuit
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`(Id. ¶ 3).
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`5. Ms. Durie has never been suspended or disbarred from practice before
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`any court or administrative body. (Id. ¶ 5).
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`6.
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`No application filed under Ms. Durie for admission to practice before
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`any court or administrative body has ever been denied. (Id. ¶ 6).
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`7.
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`No sanctions or contempt citations have been imposed against Ms.
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`Durie by any court or administrative body. (Id. ¶ 7).
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`8. Ms. Durie has read and agrees to comply with the Office Patent Trial
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`Practice Guide and the Board's Rules of Practice for Trials set forth in part 42 of 37
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`C.F.R. (Id. ¶ 8).
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`9. Ms. Durie understands that she will be subject to the USPTO Rules of
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`Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary
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`jurisdiction under 37 C.F.R. § 11.19(a). (Id. ¶ 9).
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`10. Ms. Durie has submitted a motion for pro hac vice admission in IPR
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`2015-01624 (motion pending). (Id. ¶ 10).
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`11. Ms. Durie has an established familiarity with the subject matter at
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`issue in this proceeding. She has handled patent cases relating to recombinant
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`antibodies for more than thirteen years, including six litigations in which U.S.
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`Patent No. 6,331,415 (“the ’415 patent”) was a patent-in-suit. (Id. ¶ 11). In all of
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`these cases involving the ’415 patent, she has represented Genentech and in several
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`of these cases, she also represented City of Hope. During these litigations, she has
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`worked closely with Adam R. Brausa, back-up counsel for Genentech and City of
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`Hope in this matter. (Id.).
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`12. Additionally, she has carefully reviewed and has developed extensive
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`familiarity with the matters involved in and implicated by these proceedings,
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`including the ’415 patent and its file history, the prior art presented in the petition,
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`and the legal and factual issues raised by the Petitioners in this proceeding. As a
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`result, Ms. Durie has acquired substantial understanding of the underlying legal
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`and technological issues at stake in this proceeding. (Id. ¶ 12)
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`IV. GOOD CAUSE EXISTS FOR PRO HAC VICE ADMISSION OF
`DARALYN J. DURIE
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`The facts outlined above in the Statement of Facts, supported by the
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`Declaration of Daralyn J. Durie, establish there is good cause to admit Ms. Durie
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`pro hac vice in this proceeding under 37 C.F.R. § 42.10. Patent Owners’ lead
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`counsel, David L. Cavanaugh, is a registered practitioner in good standing before
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`the Board. Ms. Durie is an attorney in good standing in the State Bar of California
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`and the United States Court of Appeals for the Federal Circuit. Ms. Durie has
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`extensive experience litigating patents, including the ’415 patent, which is the
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`subject of this proceeding. As a result, Ms. Durie is familiar with the subject
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`matter at issue in this proceeding. Furthermore, Ms. Durie has carefully reviewed
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`the ’415 patent at issue in this proceeding, its prosecution history, the prior art, the
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`grounds advanced by the Petitioners and other aspects of the record in this
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`proceeding, and is familiar with these matters. Based on her experience and
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`knowledge, there is good cause to admit Ms. Durie pro hac vice in this proceeding.
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`CONCLUSION
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`V.
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`In light of the foregoing, Patent Owner respectfully requests that the Board
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`admit Daralyn J. Durie pro hac vice in this proceeding.
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`Date: February 8, 2016
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`Respectfully submitted,
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` 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
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`EXHIBIT LIST IPR2016-00460
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`Case IPR2016-00460
`Patent 6,331,415
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`2101 DECLARATION OF ROBERT J. GUNTHER, JR. IN SUPPORT OF
`MOTION FOR ADMISSION PRO HAC VICE
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`2102 DECLARATION OF DARALYN J. DURIE IN SUPPORT OF
`PATENT OWNERS’ MOTION FOR PRO HAC VICE ADMISSION
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`CERTIFICATE OF SERVICE
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`Case IPR2016-00460
`Patent 6,331,415
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`I hereby certify that, on February 8, 2016, I caused a true and correct copy of the
`foregoing materials:
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`
`Patent Owners’ Motion for Pro Hac Vice Admission of Daralyn
`J. Durie Under 37 C.F.R. § 42.10(C)
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`Exhibit 2102, Declaration of Daralyn J. Durie In Support of
`Patent Owners’ Motion for Pro Hac Vice Admission
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`•
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`•
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`•
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`Exhibit List
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`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-2@mayerbrown.com
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`/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
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