`U.S. Patent No. 7,064,197
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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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`
`
`HOLOGIC, INC.,
`Petitioner
`
`
`
`v.
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`
`
`ENZO LIFE SCIENCES, INC.,
`Patent Owner
`
`__________________
`
`
`
`Case IPR2016-00822
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`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
`MICHAEL P. STADNICK
`
`
`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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`
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`
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`Case IPR2016-00822
`U.S. Patent No. 7,064,197
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`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 IPR2016-00822.
`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.
`
`Enzo
`Exhibit No.
`2101
`2102
`
`2103
`2104
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`2105
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`2106
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`2107
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`2108
`2109
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`Case IPR2016-00822
`U.S. Patent No. 7,064,197
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`I.
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`
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`RELIEF REQUESTED
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`Patent Owner Enzo Life Sciences, Inc. (“Enzo”) hereby respectfully moves
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`the Patent Trial and Appeal Board for the pro hac vice admission of Michael P.
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`Stadnick as back-up counsel for Enzo in Case IPR2016-00822. Enzo has conferred
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`with counsel for Petitioner, who confirmed that Petitioner does not oppose this
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`motion.
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`II. GOVERNING LAW, RULES, AND PRECEDENT
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`
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`Under 37 C.F.R. § 42.10(c),
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`The Board may recognize counsel pro hac vice during a
`
`proceeding upon a showing of good cause, subject to the
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`condition that lead counsel be a registered practitioner
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`and to any other conditions as the Board may impose.
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`For example, where the lead counsel is a registered
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`practitioner, a motion to appear pro hac vice by counsel
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`who is not a registered practitioner may be granted upon
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`showing that counsel is an experienced litigating attorney
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`and has an established familiarity with the subject matter
`
`at issue in the proceeding.
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`
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`The Patent Trial and Appeal Board established its current procedure for
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`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
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`For Pro Hac Vice Admission – 37 C.F.R. § 42.10”) (PTAB Oct. 15, 2013).
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`Specifically, a motion for pro hac vice admission must 1) be filed no sooner than
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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:”
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`i. Membership in good standing of the Bar of at least
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`one State or the District of Columbia;
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`ii.
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`No suspensions or disbarments from practice
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`before any court or administrative body;
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`iii. No application for admission to practice before
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`any court or administrative body ever denied;
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`iv. No sanctions or contempt citations imposed by any
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`court or administrative body;
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`v.
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`The individual seeking to appear has read and will
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`comply with the Office Patent Trial Practice Guide
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`and the Board’s Rules of Practice for Trials set
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`forth in part 42 of 37 C.F.R.;
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`vi.
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`The individual will be subject to the USPTO Rules
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`of Professional Conduct set forth in 37 C.F.R.
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`§ 11.101 et seq. and subject to the Office’s
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`disciplinary
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`jurisdiction
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`under
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`37 C.F.R.
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`§ 11.19(a);
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`vii. All other proceedings before the Office for which
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`the individual has applied to appear pro hac vice in
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`the last three (3) years; and
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`U.S. Patent No. 7,064,197
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`viii. Familiarity with the subject matter at issue in the
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`proceeding.
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`III. STATEMENT OF MATERIAL FACTS
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`
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`Supported by the Affidavit of Michael P. Stadnick filed concurrently
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`herewith (Ex. 2108), Enzo respectfully shows the following facts:
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`1.
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`Enzo filed this motion on November 15, 2016, no sooner than 21 days
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`after service of Hologic, Inc.’s petition on March 30, 2016.
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`2.
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`Enzo’s lead counsel, Kevin K. McNish, is a registered practitioner
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`(Reg. No. 65,047).
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`3. Mr. Stadnick is a partner at the law firm of Desmarais LLP, an
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`intellectual property litigation firm. (Ex. 2108 ¶ 3.)
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`4. Mr. Stadnick is an experienced patent litigation attorney. He has
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`practiced patent litigation for approximately fifteen (15) years. (Id. ¶
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`4.)
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`5. Mr. Stadnick has an established familiarity with the subject matter at
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`issue in this proceeding. The patent involved in this proceeding is
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`U.S. Patent No. 7,064,197, and Mr. Stadnick has reviewed U.S. Patent
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`No. 7,064,197 and its prosecution file history. (Id. ¶ 5.)
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`6. Mr. Stadnick has also reviewed the Petition, Institution Decision, and
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`the exhibits in this proceeding. (Id.) Mr. Stadnick also worked on the
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`U.S. Patent No. 7,064,197
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`preparation of Enzo’s preliminary response and request for rehearing
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`in this proceeding. (Id.)
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`7. Mr. Stadnick is a member in good standing of the State Bar of New
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`York. (Id. ¶ 6.)
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`8. Mr. Stadnick has never been suspended or disbarred from practice
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`before any court or administrative body. (Id. ¶ 7.)
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`9. Mr. Stadnick has never been denied admission to practice before any
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`court or administrative body. (Id. ¶ 8.)
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`10. No court or administrative body has ever imposed contempt sanctions
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`against Mr. Stadnick. (Id. ¶ 9.)
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`11. Mr. Stadnick has read and will comply with the Office Patent Trial
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`Practice Guide and the Board’s Rules of Practice for Trials set forth in
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`37 C.F.R. § 42. (Id. ¶ 10.)
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`12. Mr. Stadnick understands that he will be subject to the USPTO Rules
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`of Professional Conduct set forth in 37 C.F.R. § 11.101 et seq. and
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`subject to the Office’s disciplinary jurisdiction under 37 C.F.R.
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`§ 11.19(a). (Id. ¶ 11.)
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`13. Mr. Stadnick has not sought pro hac vice admission in any previous
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`proceedings before the USPTO in the last three (3) years. (Id. ¶ 12).
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`Mr. Stadnick is concurrently seeking pro hac vice admission in Case
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`Case IPR2016-00822
`U.S. Patent No. 7,064,197
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`IPR2016-00820, which also involves a petition filed by Hologic, Inc.
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`against U.S. Patent No. 7,064,197. (Id. ¶ 12).
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`IV. GOOD CAUSE EXISTS TO ADMIT MR. STADNICK PRO HAC VICE
`IN THIS PROCEEDING.
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`
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`The Board permits the pro hac vice admission as back-up counsel of an
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`attorney not registered to practice before the USPTO, subject to the condition that
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`lead counsel be a registered practitioner and subject to any other conditions the
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`Board may impose. 37 C.F.R. § 42.10(c). Both the registered practitioner lead
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`counsel condition and the Board’s other conditions are satisfied here.
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`
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`Lead counsel for Enzo, Kevin K. McNish, is a registered practitioner. Mr.
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`Stadnick, for whom Enzo seeks pro hac vice admission as back-up counsel, is an
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`experienced litigator who has an established familiarity with the subject matter at
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`issue in this proceeding. Mr. Stadnick has practiced patent litigation for
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`approximately fifteen years. Mr. Stadnick has familiarized himself with U.S.
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`Patent 7,064,197 and its prosecution history. Mr. Stadnick has also reviewed the
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`parties’ papers and exhibits in this proceeding, and worked on the preparation of
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`Enzo’s preliminary response and request for rehearing.
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`
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`Because Enzo has appointed a registered practitioner as lead counsel and
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`because Mr. Stadnick is an experienced litigator who has an established familiarity
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`with the subject matter of this proceeding, including U.S. Patent No. 7,064,197,
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`there is good cause to admit Mr. Stadnick pro hac vice as back-up counsel for
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`Enzo in this proceeding. Thus, the Board should admit Mr. Stadnick pro hac vice
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`as back-up counsel in this proceeding.
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`V. CONCLUSION
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`
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`For the foregoing reasons, Enzo respectfully requests that Mr. Stadnick be
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`admitted pro hac vice as back-up counsel in this proceeding.
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`
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`Dated: November 15, 2016
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`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.
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`U.S. Patent No. 7,064,197
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on November
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`15, 2016, 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
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`Respectfully submitted,
`
`(Reg. No.
`
`Farabow,
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`Dated: November 15, 2016
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`
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`7
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`/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.