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
`JUSTIN P.D. WILCOX
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`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
`JUSTIN P.D. WILCOX
`
`
`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
`
`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
`
`2105
`
`2106
`
`2107
`
`2108
`2109
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`
`
`
`
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`
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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 Justin P.D.
`
`Wilcox 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
`
`facts showing there is good cause for the Board to recognize counsel pro hac vice
`
`during the proceeding;” and 3) “[b]e accompanied by an affidavit or declaration of
`
`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;
`
`iii. No application for admission to practice before
`
`any court or administrative body ever denied;
`
`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);
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`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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`2
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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.
`
`III. STATEMENT OF MATERIAL FACTS
`
`
`
`Supported by the Affidavit of Justin P.D. Wilcox filed concurrently herewith
`
`(Ex. 2109), Enzo respectfully shows the following facts:
`
`1.
`
`Enzo filed this motion on November 15, 2016, 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. Mr. Wilcox is a partner at the law firm of Desmarais LLP, an
`
`intellectual property litigation firm. (Ex. 2109 ¶ 3.)
`
`4. Mr. Wilcox is an experienced patent litigation attorney. He has
`
`practiced patent litigation for approximately twelve (12) years. (Id.
`
`¶ 4.)
`
`5. Mr. Wilcox 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 Mr. Wilcox has reviewed U.S. Patent
`
`No. 7,064,197 and its prosecution file history. (Id. ¶ 5.)
`
`6. Mr. Wilcox has also reviewed the Petition, Institution Decision, and
`
`the exhibits in this proceeding. (Id.) Mr. Wilcox also worked on the
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`3
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`Case IPR2016-00822
`U.S. Patent No. 7,064,197
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`preparation of Enzo’s preliminary response and request for rehearing
`
`in this proceeding. (Id.)
`
`7. Mr. Wilcox is a member in good standing of the State Bars of New
`
`York and Virginia, and the Bar of the District of Columbia. (Id. ¶ 6.)
`
`8. Mr. Wilcox has never been suspended or disbarred from practice
`
`before any court or administrative body. (Id. ¶ 7.)
`
`9. Mr. Wilcox 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 Mr. Wilcox. (Id. ¶ 9.)
`
`11. Mr. Wilcox 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. Mr. Wilcox understands that he 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. Mr. Wilcox has not sought pro hac vice admission in any previous
`
`proceedings before the USPTO in the last three (3) years. (Id. ¶ 12).
`
`Mr. Wilcox is concurrently seeking pro hac vice admission in Case
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`4
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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.
`
`against U.S. Patent No. 7,064,197. (Id. ¶ 12).
`
`IV. GOOD CAUSE EXISTS TO ADMIT MR. WILCOX 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
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`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. Mr.
`
`Wilcox, 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. Mr. Wilcox has practiced patent litigation for
`
`approximately twelve years. Mr. Wilcox has familiarized himself with U.S. Patent
`
`7,064,197 and its prosecution history. Mr. Wilcox has also reviewed the parties’
`
`papers and exhibits in this proceeding, and worked on the preparation of Enzo’s
`
`preliminary response and request for rehearing.
`
`
`
`Because Enzo has appointed a registered practitioner as lead counsel and
`
`because Mr. Wilcox 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 Mr. Wilcox pro hac vice as back-up counsel for Enzo
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`5
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`Case IPR2016-00822
`U.S. Patent No. 7,064,197
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`in this proceeding. Thus, the Board should admit Mr. Wilcox pro hac vice as
`
`back-up counsel in this proceeding.
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`V. CONCLUSION
`
`
`
`For the foregoing reasons, Enzo respectfully requests that Mr. Wilcox be
`
`admitted pro hac vice as back-up counsel in this proceeding.
`
`
`
`Dated: November 15, 2016
`
`
`
`
`
`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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`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 November
`
`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
`
`Respectfully submitted,
`
`(Reg. No.
`
`Farabow,
`
`Dated: November 15, 2016
`
`
`
`
`
`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.
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