`Declaration of David F. McGowan
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________________________________
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`MYLAN PHARMACEUTICALS, INC., AND
`MERCK SHARP & DOHME CORP.,
`Petitioners,
`v.
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`GENENTECH, INC. AND CITY OF HOPE,
`Patent Owners.
`____________________________________________
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`Case IPR2016-007101
`Patent 6,331,415 B1
`____________________________________________
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`DECLARATION OF DAVID F. MCGOWAN IN SUPPORT OF PATENT
`OWNERS’ MOTION FOR PRO HAC VICE ADMISSION
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`1 Case IPR2017-00047 has been joined with this proceeding.
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`Mylan/Merck v. Genentech
`IPR2016-00710
`Genentech Exhibit 2138
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`I, David F. McGowan, declare as follows:
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`IPR2016-00710
`Declaration of David F. McGowan
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`1.
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`2.
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`I am an attorney licensed to practice law in the State of California.
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`I am a partner at the law firm Durie Tangri LLP and have litigated
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`cases relating to patents for the past seven years.
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`3.
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`I am a member in good standing of the State Bar of California and the
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`United States Court of Appeal for the Federal Circuit. I am also admitted to
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`practice before the United States Court of Appeals for the 2nd Circuit, the United
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`States Court of Appeals for the 9th Circuit, the United States District Courts in the
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`Northern, Central and Southern Districts of California.
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`4.
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`I am a member in good standing in all jurisdictions where I have been
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`admitted to practice.
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`5.
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`I have never been suspended or disbarred from practice before any
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`court or administrative body.
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`6.
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`I have never had an application denied for admission to practice
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`before any court or administrative body.
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`7.
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`I have not had any sanctions or contempt citations imposed against me
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`by any court or administrative body.
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`8.
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`I have read and will comply with the Office Patent Trial Practice
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`Guide and the Board’s Rules of Practice for Trials set forth in part 42 of 37 C.F.R.
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`9.
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`I agree to be subject to the USPTO Rules of Professional Conduct set
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`1
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`IPR2016-00710
`Declaration of David F. McGowan
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`forth in 37 C.F.R. §§ 11.101 et seq., and disciplinary jurisdiction under 37 C.F.R. §
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`11.19(a).
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`10.
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`I have appeared Pro Hac Vice before the Patent Trial and Appeal
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`Board once in the last three (3) years: Sanofi-Aventis U.S. LLC, Regeneron
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`Pharmaceuticals, Inc., and Genzyme Corporation v. Genentech, Inc. and City of
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`Hope, IPR2015-01624 (to which IPR2016-00460 was joined), in which U.S. Patent
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`No. 6,331,415 (“the ’415 patent”) was the challenged patent.
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`11.
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`I have an established familiarity with the subject matter at issue in this
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`proceeding. I have handled patent cases relating to recombinant antibodies for the
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`past six years, including cases wherein the ’415 patent was a patent-in-suit (e.g.,
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`IPR2015-01624, in which I was admitted pro hac vice). In all of these cases
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`involving the ‘’415 patent, I have represented Genentech and in some instances,
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`City of Hope. I have worked closely with Adam R. Brausa, counsel for Patent
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`Owners in this matter.
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`12. Additionally, I am familiar with the matters involved in and
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`implicated by these proceedings, including the ’415 patent and its licensing history,
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`and the legal and factual issues raised by the Petitioners in this proceeding. As a
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`result, I have acquired substantial understanding of the underlying legal and
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`technological issues at stake in this proceeding.
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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 be true;
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`IPR2016-00710
`Declaration of David F. McGowan
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`and further that these statements are made with the knowledge that willful false
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`statements and the like so made are punishable by fine or imprisonment, or both,
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`under Section 1001 of Title 18 of the United States Code and that such willful false
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`statements may jeopardize the validity of U.S. Patent No. 6,331,415.
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`Date: January 05, 2017
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`David F. McGowan
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`Durie Tangri LLP
`217 Leidesdorff Street
`San Francisco, CA 94111
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