Case No. IPR2016-00460
`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. IPR2016-00460
`U. S. Patent No. 6,331,415
`
`____________________________________
`
`DECLARATION OF LISA M. FERRI IN SUPPORT OF MOTION TO
`APPEAR PRO HAC VICE ON BEHALF OF PETITIONER
`GENZYME CORPORATION
`
`
`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. IPR2016-00460
`U. S. Patent No. 6,331,415
`
`____________________________________
`
`DECLARATION OF LISA M. FERRI IN SUPPORT OF MOTION TO
`APPEAR PRO HAC VICE ON BEHALF OF PETITIONER
`GENZYME CORPORATION
`
`
`
`Case No. IPR2016-00460
`U. S. Patent No. 6,331,415
`Filed on behalf of: Genzyme Corporation
`
`I, Lisa M. Ferri, do hereby declare:
`
`1.
`
`I am a partner in the law firm of Mayer Brown LLP and the head of
`
`the Intellectual Property group for the New York Office. I have over 20 years of
`
`experience as a patent litigator and trial lawyer, appearing and acting as lead
`
`counsel in numerous patent litigation matters before various United States District
`
`Courts and the U.S. International Trade Commission. I have also appeared on
`
`behalf of litigants before the U.S. Court of Appeals for the Federal Circuit,
`
`including as lead counsel. See Genzyme Exhibit 1060. The majority of these
`
`cases have been in the technical field of the pharmaceutical and chemical arts.
`
`2.
`
`I am also an adjunct professor of law at Fordham University School of
`
`Law, where I teach Patent Litigation. Subsequent to graduating from law school I
`
`served as law clerk to Chief Judge Edward D. Re, U.S. Court of International
`
`Trade, who sat by designation on a number of courts of appeal, including the
`
`Federal Circuit.
`
`3.
`
`I am familiar with the subject matter at issue in this proceeding, and
`
`U.S. Patent No. 6,331,415 (“the ’415 patent”). Specifically, I served as lead
`
`counsel for GlaxoSmithKline, Human Genome Sciences and Bristol-Myers Squibb
`
`in litigations involving the ’415 patent in Glaxo Group Ltd, et al., v. Genentech,
`
`Inc., et al., Case No. 10-cv-02764 (C.D. Cal.); Human Genome Sciences Inc. v.
`
`1
`
`
`
`Case No. IPR2016-00460
`U. S. Patent No. 6,331,415
`Filed on behalf of: Genzyme Corporation
`
`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. I also currently serve as lead counsel in litigations that involve a
`
`continuation of the challenged ’415 patent—U.S. Patent No. 7,923,221, which also
`
`involve the same recombinant antibody technology claimed in the challenged '415
`
`patent. Specifically, I am lead counsel for Sanofi Aventis U.S. LLC (“Sanofi”) and
`
`Regeneron Pharmaceuticals, Inc. (“Regeneron”) in a matter entitled Sanofi Aventis
`
`U.S. LLC and Regeneron Pharmaceuticals, Inc. v. Genentech, Inc. and City of
`
`Hope, Case No. 15-cv-05685 (C.D. Cal.), filed on July 27, 2015; and I am lead
`
`counsel for Petitioner, Genzyme Corporation (“Genzyme”), in a matter entitled
`
`Genzyme Corp. v. Genentech, Inc. and City of Hope, Case No. 15-cv-09991 (C.D.
`
`Cal.), filed on December 30, 2015.
`
`4.
`
`Given my involvement in Glaxo Group Ltd, et al., v. Genentech, Inc.,
`
`et al., Human Genome Sciences Inc. v. Genentech, Inc. et al., and Bristol Myers
`
`Squibb Co. v. Genentech, Inc., et al., I am familiar not only with the ’415 patent
`
`and file history, but also with the legal, technical, and prior art subject matter
`
`discussed in Genzyme’s request for inter partes review of the ’415 patent, which
`
`forms the basis for this proceeding.
`
`2
`
`
`
`Case No. IPR2016-00460
`U. S. Patent No. 6,331,415
`Filed on behalf of: Genzyme Corporation
`
`5.
`
`I am a member in good standing of the Bar of the State of New York
`
`and the Bar of the State of New Jersey. I am admitted to practice before the United
`
`States Supreme Court, the United States Court of Appeals for the Federal Circuit,
`
`and several other appellate and district courts including the United States District
`
`Court for the District of New Jersey, the United States District Court for the
`
`Southern District of New York, and the United States Court of International Trade.
`
`6.
`
`I have never been suspended, disbarred or sanctioned by 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.
`
`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 37 C.F.R.
`
`10.
`
`I agree 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).
`
`11.
`
`In the past three (3) years, I have applied for and been admitted pro
`
`hac vice in three inter partes review proceedings before the United States Patent
`
`3
`
`
`
`Case No. IPR2016-00460
`U. S. Patent No. 6,331,415
`Filed on behalf of: Genzyme Corporation
`
`and Trademark Office: Sanofi-Aventis U.S. LLC, et al., v. Genentech, Inc., et al.,
`
`Case No. IPR2015-01624 (U.S. Patent No. 6,331,415); Ranbaxy Laboratories Ltd.
`
`et al., v. Vertex Pharmaceuticals Incorporated, Case No. IPR2013-00024 (U.S.
`
`Patent No. 6,436,989); and Lupin Ltd. v. Vertex Pharmaceuticals Incorporated,
`
`Case No. IPR2015-00405 (U.S. Patent No. 6,436,989). Also, today, February 16,
`
`2018, I filed an application for admission pro hac vice in Genzyme Corp. v.
`
`Genentech, Inc., and City of Hope, Case No. IPR2016-00383, which is currently
`
`pending.
`
`*
`
`*
`
`*
`
`I hereby 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 are 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 and that such willful false
`
`statements may jeopardize the validity of U.S. Patent No. 6,331,415.
`
`Dated: February 18, 2016
`
`By: _________________________
`Lisa M. Ferri
`
`4
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