Case IPR2016-00822
`U.S. Patent No. 7,064,197
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`
`
`HOLOGIC, INC.,
`Petitioner
`
`
`
`v.
`
`
`
`ENZO LIFE SCIENCES, INC.,
`Patent Owner
`
`__________________
`
`
`
`Case IPR2016-00822
`
`U.S. Patent No. 7,064,197
`TITLE: SYSTEM, ARRAY AND NON-POROUS SOLID SUPPORT
`COMPRISING FIXED OR IMMOBILIZED NUCLEIC ACIDS
`Issue Date: June 20, 2006
`
`__________________
`
`
`
`ENZO’S UNOPPOSED MOTION FOR PRO HAC VICE ADMISSION OF
`KERRI-ANN LIMBEEK
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`

`
`Case IPR2016-00822
`U.S. Patent No. 7,064,197
`
`Enzo
`Exhibit No.
`2101
`2102
`
`2103
`2104
`
`2105
`
`2106
`
`2107
`
`2108
`2109
`2110
`2111
`
`2112
`
`2113
`
`2114
`
`2115
`
`2116
`
`PATENT OWNER’S EXHIBIT LIST
`
`DESCRIPTION
`
`Declaration of Gregory Buck, Ph.D.
`Declaration of Dollie M.W. Kirtikar, Ph.D., submitted in U.S.
`Patent App. No. 08/486,070 (Oct. 28, 2003).
`Robberson, D. L. and Davidson, N., Biochemistry 11, 533 (1972).
`Schott, Herbert, “Special Methods for the Immobilization of RNA
`and Polyribonucleotides,” in Affinity Chromatography,
`Chromatographic Science Series, Vol. 27 (allegedly 1984).
`Petitioner’s Petition for Inter Partes Review of U.S. Patent No.
`7,064,197 in Case IPR2016-00820.
`Anish Desai, Christopher Marando, & Amanda Do Couto, PTAB
`Approaches To Accessibility Of Printed Publication, LAW360 (Oct.
`3, 2016), http://www.law360.com/articles/845934/print?section=ip.
`Michael R. Weiner, APJs Dispute Requirements for a Reference to
`Qualify as a Printed Publication, PTABWATCH (Oct. 15, 2015),
`http://www.ptabwatch.com/2015/10/apjs-dispute-requirements-for-
`a-reference-to-qualify-as-a-printed-publication.
`Affidavit of Michael P. Stadnick.
`Affidavit of Justin P.D. Wilcox.
`Affidavit of Kerri-Ann Limbeek.
`Herzer, Sibylle and Englert, David, “Nucleic Acid Hybridization,”
`Ch. 14 from Molecular Biology Problem Solver: A Laboratory
`Guide (Gerstein, Alan ed.) (2001).
`Spiegelman, George et al., “Kinetics of Ribonucleic Acid-
`Deoxyribonucleic Acid Membrane Filter Hybridization,”
`Biochemistry, Vol. 12, No. 6, 1234-1242 (1973).
`Söderlund, H., “DNA Hybridization: Comparison of Liquid and
`Solid Phase Formats,” Ann. Biol. Clin., 48, 489-491 (1990).
`Reed, Ken and Mann, David, “Rapid Transfer of DNA From
`Agarose Gels to Nylon Membranes,” Nucleic Acid Research, Vol.
`13, No. 20, 7207-7221 (1985).
`Kahn, Michael, “The Effect of Thymine Dimers on DNA: DNA
`Hybridization,” Biopolymers, Vol. 13, 669-675 (1974).
`Smith, G.L.F. et al., “’Reverse’ DNA Hybridization Method for the
`Rapid Identification of Subgingival Microorganisms,” Oral
`Microbiology Immunology, 4: 141-145 (1989).
`
`
`
`

`
`Case IPR2016-00822
`U.S. Patent No. 7,064,197
`
`Enzo
`Exhibit No.
`2117
`
`2118
`
`2119
`
`2120
`
`2121
`
`2122
`
`2123
`
`2124
`2125
`
`2126
`
`2127
`2128
`2129
`2130
`2131
`
`2132
`
`2133
`
`DESCRIPTION
`
`Deposition Transcript of Norman Nelson, Ph.D., taken in Hologic,
`Inc., v. Enzo Life Sciences, Inc., IPR Case Nos. 2016-00820 and
`2016-00822 on Dec. 21, 2016.
`Meinkoth, Judy and Wahl, Geoffrey, “Review: Hybridization of
`Nucleic Acids Immobilized on Solid Supports,” Analytical
`Biochemistry, 138, 267-284 (1984).
`U.S. Patent Application Publication No. US2016/0017392 to
`Arnold et al., published Jan. 21, 2016.
`Excerpt from File History for U.S. Patent No. 7,064,197 – June 30,
`2004 Amendment.
`Excerpt from File History for U.S. Patent No. 7,064,197 – May 25,
`2005 Amendment.
`Diagram of Cell Structure, obtained from:
`http://training.seer.cancer.gov/anatomy/cells_tissues_membranes/ce
`lls/structure.html.
`Excerpt from File History for U.S. Patent No. 7,064,197 – Nov. 26,
`2004 Office Action.
`U.S. Patent No. 4,732,847 to Stuart et al., issued Mar. 22, 1988.
`Sigma-Aldrich Particle Size Conversion Table, obtained from:
`http://www.sigmaaldrich.com/chemistry/stockroom-
`reagents/learning-center/technical-library/particle-size-
`conversion.html.
`Whatling, Carl et al., “Expression Microarrays,” Ch. 2 from
`Microarrays & Microplates – Applications in Biomedical Sciences
`(Ye, S. and Day, I.N.M. eds.) (2003).
`Enzo Biochem, Inc. SEC Form 8-K dated July 20, 2015.
`Enzo Biochem, Inc. SEC Form 8-K dated Oct. 9, 2015.
`Enzo Biochem, Inc. SEC Form 8-K dated Jan. 6, 2016.
`Enzo Biochem, Inc. SEC Form 8-K dated July 1, 2016.
`Plaintiff’s Supplemental Infringement Charts for Siemens
`Healthcare Diagnostics, served on Sept. 30, 2014 in C.A. No. 12-
`cv-505-LPS (D. Del.) (cover pleading only).
`Plaintiff’s Supplemental Infringement Charts for Affymetrix,
`served on Sept. 30, 2014 in C.A. No. 12-cv-433-LPS (D. Del.)
`(cover pleading only).
`Plaintiff’s Supplemental Infringement Charts for Agilent
`Technologies, served on Sept. 30, 2014 in C.A. No. 12-cv-434-LPS
`
`
`
`

`
`Case IPR2016-00822
`U.S. Patent No. 7,064,197
`
`Enzo
`Exhibit No.
`
`DESCRIPTION
`
`2134
`
`2135
`
`2136
`
`2137
`
`2138
`
`2139
`
`2140
`
`2141
`
`2142
`2143
`
`(D. Del.) (cover pleading only).
`Plaintiff’s Supplemental Infringement Charts for Illumina, served
`on Sept. 30, 2014 in C.A. No. 12-cv-435-LPS (D. Del.) (cover
`pleading only).
`Enzo “Invention Record and Report,” Barbara Thalenfeld and
`Kenneth Johnston (May 1982).
`Weetall, H.H. and Filbert, A.M., “Porous Glass for Affinity
`Chromatography Applications,” from Methods in Enzymology,
`Volume XXXIV, Affinity Techniques, Enzyme Purification: Part B
`(Jakoby, W. and Wilchek, M. eds.) (1974).
`Enzo Laboratory Notebook, Dollie M.W. Kirtikar, entitled “T4
`Expts,” (1982).
`Enzo Laboratory Notebook (Number 126), Barbara Thalenfeld,
`(July-August 1982).
`Enzo Laboratory Notebook (Number 127), Barbara Thalenfeld,
`(July-September 1982).
`Enzo Experiment Record, Barbara Thalenfeld and Kenneth
`Johnston, (June 1982).
`Enzo Laboratory Notebook Pages, Barbara Thalenfeld, (May-
`August 1982).
`Declaration of Gregory Buck, Ph.D.
`Declaration of Barry Weiner.
`
`
`
`
`
`
`
`

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`Case IPR2016-00822
`U.S. Patent No. 7,064,197
`
`I.
`
`
`
`RELIEF REQUESTED
`
`Patent Owner Enzo Life Sciences, Inc. (“Enzo”) hereby respectfully moves
`
`the Patent Trial and Appeal Board for the pro hac vice admission of Kerri-Ann
`
`Limbeek as back-up counsel for Enzo in Case IPR2016-00822. Enzo has
`
`conferred with counsel for Petitioner, who confirmed that Petitioner does not
`
`oppose this motion.
`
`II. GOVERNING LAW, RULES, AND PRECEDENT
`
`
`
`Under 37 C.F.R. § 42.10(c),
`
`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.
`
`
`
`The Patent Trial and Appeal Board established its current procedure for
`
`moving for pro hac vice admission in inter partes reviews in Unified Patents, Inc.
`
`v. Parallel Iron LLC, Case IPR2013-00639, Paper 7 (“Order – Authorizing Motion
`
`For Pro Hac Vice Admission – 37 C.F.R. § 42.10”) (PTAB Oct. 15, 2013).
`
`Specifically, a motion for pro hac vice admission must 1) be filed no sooner than
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`1
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`Case IPR2016-00822
`U.S. Patent No. 7,064,197
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`twenty-one (21) days after the service of the petition; 2) “[c]ontain a statement of
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`facts showing there is good cause for the Board to recognize counsel pro hac vice
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`during the proceeding;” and 3) “[b]e accompanied by an affidavit or declaration of
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`the individual seeking to appear attesting to the following:”
`
`i. Membership in good standing of the Bar of at least
`
`one State or the District of Columbia;
`
`ii.
`
`No suspensions or disbarments from practice
`
`before any court or administrative body;
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`iii. No application for admission to practice before
`
`any court or administrative body ever denied;
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`iv. No sanctions or contempt citations imposed by any
`
`court or administrative body;
`
`v.
`
`The individual seeking to appear has 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.;
`
`vi.
`
`The individual will be subject to the USPTO Rules
`
`of Professional Conduct set forth in 37 C.F.R.
`
`§ 11.101 et seq. and subject to the Office’s
`
`disciplinary
`
`jurisdiction
`
`under
`
`37 C.F.R.
`
`§ 11.19(a);
`
`vii. All other proceedings before the Office for which
`
`the individual has applied to appear pro hac vice in
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`the last three (3) years; and
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`Case IPR2016-00822
`U.S. Patent No. 7,064,197
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`viii. Familiarity with the subject matter at issue in the
`
`proceeding.
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`III. STATEMENT OF MATERIAL FACTS
`
`
`
`Supported by the Affidavit of Kerri-Ann Limbeek filed concurrently
`
`herewith (Ex. 2110), Enzo respectfully shows the following facts:
`
`1.
`
`Enzo filed this motion on January 13, 2017, no sooner than 21 days
`
`after service of Hologic, Inc.’s petition on March 30, 2016.
`
`2.
`
`Enzo’s lead counsel, Kevin K. McNish, is a registered practitioner
`
`(Reg. No. 65,047).
`
`3. Ms. Limbeek is an associate at the law firm of Desmarais LLP, an
`
`intellectual property litigation firm. (Ex. 2110 ¶ 3.)
`
`4. Ms. Limbeek is an experienced patent litigation attorney. She has
`
`practiced patent litigation for approximately three (3) years. (Id. ¶ 4.)
`
`5. Ms. Limbeek has an established familiarity with the subject matter at
`
`issue in this proceeding. The patent involved in this proceeding is
`
`U.S. Patent No. 7,064,197, and Ms. Limbeek has reviewed U.S.
`
`Patent No. 7,064,197 and its prosecution file history. (Id. ¶ 5.)
`
`6. Ms. Limbeek has also reviewed the Petition, Institution Decision, and
`
`the exhibits in this proceeding. (Id.) Ms. Limbeek also worked on the
`
`preparation of Enzo’s preliminary response and patent owner response
`
`in this proceeding. (Id.)
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`3
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`Case IPR2016-00822
`U.S. Patent No. 7,064,197
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`7. Ms. Limbeek is a member in good standing of the State Bar of New
`
`York. (Id. ¶ 6.)
`
`8. Ms. Limbeek has never been suspended or disbarred from practice
`
`before any court or administrative body. (Id. ¶ 7.)
`
`9. Ms. Limbeek has never been denied admission to practice before any
`
`court or administrative body. (Id. ¶ 8.)
`
`10. No court or administrative body has ever imposed contempt sanctions
`
`against Ms. Limbeek. (Id. ¶ 9.)
`
`11. Ms. Limbeek has read and will comply with the Office Patent Trial
`
`Practice Guide and the Board’s Rules of Practice for Trials set forth in
`
`37 C.F.R. § 42. (Id. ¶ 10.)
`
`12. Ms. Limbeek understands that she will be subject to the USPTO Rules
`
`of Professional Conduct set forth in 37 C.F.R. § 11.101 et seq. and
`
`subject to the Office’s disciplinary jurisdiction under 37 C.F.R.
`
`§ 11.19(a). (Id. ¶ 11.)
`
`13. Ms. Limbeek has not sought pro hac vice admission in any previous
`
`proceedings before the USPTO in the last three (3) years. (Id. ¶ 12).
`
`Ms. Limbeek is concurrently seeking pro hac vice admission in Case
`
`IPR2016-00820, which also involves a petition filed by Hologic, Inc.
`
`against U.S. Patent No. 7,064,197. (Id. ¶ 12).
`
`4
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`Case IPR2016-00822
`U.S. Patent No. 7,064,197
`
`IV. GOOD CAUSE EXISTS TO ADMIT MS. LIMBEEK PRO HAC VICE
`IN THIS PROCEEDING.
`
`
`
`The Board permits the pro hac vice admission as back-up counsel of an
`
`attorney not registered to practice before the USPTO, subject to the condition that
`
`lead counsel be a registered practitioner and subject to any other conditions the
`
`Board may impose. 37 C.F.R. § 42.10(c). Both the registered practitioner lead
`
`counsel condition and the Board’s other conditions are satisfied here.
`
`
`
`Lead counsel for Enzo, Kevin K. McNish, is a registered practitioner. Ms.
`
`Limbeek, for whom Enzo seeks pro hac vice admission as back-up counsel, is an
`
`experienced litigator who has an established familiarity with the subject matter at
`
`issue in this proceeding. Ms. Limbeek has practiced patent litigation for
`
`approximately three years. Ms. Limbeek has familiarized herself with U.S. Patent
`
`7,064,197 and its prosecution history. Ms. Limbeek has also reviewed the parties’
`
`papers and exhibits in this proceeding, and worked on the preparation of Enzo’s
`
`preliminary response and patent owner response.
`
`
`
`Because Enzo has appointed a registered practitioner as lead counsel and
`
`because Ms. Limbeek is an experienced litigator who has an established familiarity
`
`with the subject matter of this proceeding, including U.S. Patent No. 7,064,197,
`
`there is good cause to admit Ms. Limbeek pro hac vice as back-up counsel for
`
`Enzo in this proceeding. Thus, the Board should admit Ms. Limbeek pro hac vice
`
`as back-up counsel in this proceeding.
`
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`Case IPR2016-00822
`U.S. Patent No. 7,064,197
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`V. CONCLUSION
`
`
`
`For the foregoing reasons, Enzo respectfully requests that Ms. Limbeek be
`
`admitted pro hac vice as back-up counsel in this proceeding.
`
`
`
`Dated: January 13, 2017
`
`
`
`
`
`Respectfully submitted,
`
`/kkm/
`Kevin K. McNish (Reg. No. 65,047)
`kmcnish@desmaraisllp.com
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`Telephone: 212-351-3400
`Facsimile: 212-351-3401
`
`Lead Counsel for Patent Owner
`Enzo Life Sciences, Inc.
`
`
`
`
`
`6
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`

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`Case IPR2016-00822
`U.S. Patent No. 7,064,197
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on January 13,
`
`2017, a complete copy of the foregoing was served on counsel of record for the
`Petitioner by filing this document through PTAB E2E and by sending this
`document via electronic mail to the following addresses:
`
`M. Paul Barker (Reg. No. 32,013)
`Finnegan, Henderson, Farabow, Garrett &
`Dunner, L.L.P.
`Stanford Research Park
`3300 Hillview Avenue
`Palo Alto, CA 94304-1203
`Telephone: 650.849.6620
`Facsimile: 650.849.6666
`paul.barker@finnegan.com
`
`Thomas L. Irving (Reg. No. 28,619)
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, L.L.P.
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Telephone: 202.408.4082
`Facsimile: 202.408.4400
`tom.irving@finnegan.com
`
`Arpita Bhattacharyya
`63,681)
`Finnegan, Henderson,
`Garrett & Dunner, L.L.P.
`Two Seaport Lane, 6th Floor
`Boston, MA 02210-2001
`Telephone: 617.646.1675
`Facsimile: 617.646.1600
`arpita.bhattacharyya@finnegan.com
`
`Respectfully submitted,
`
`(Reg. No.
`
`Farabow,
`
`Dated: January 13, 2017
`
`
`
`7
`
`/kkm/
`Kevin K. McNish (Reg. No. 65,047)
`kmcnish@desmaraisllp.com
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`Telephone: 212-351-3400
`Facsimile: 212-351-3401
`
`Lead Counsel for Patent Owner
`Enzo Life Sciences, Inc.