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`By: Daniel M. Becker, Reg. No. 38,376
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`Jennifer R. Bush, Reg. No. 50,784
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`Fenwick & West LLP
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`801 California Street
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`Mountain View, CA 94041
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`Tel: (650) 988-8500
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`Fax: (650) 938-5200
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
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`ANCESTRY.COM DNA, LLC,
`Petitioner
`v.
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`DNA GENOTEK INC.,
`Patent Owner.
`
`
`
`Inter Partes Review No. IPR 2016-01152
`Patent 8,221,381 B2
`_____________
`
`
`
`DECLARATION OF MICHAEL J. SACKSTEDER IN SUPPORT OF
`PETITIONER’S MOTION FOR PRO HAC VICE ADMISSION OF
`MICHAEL J. SACKSTEDER PURSUANT TO 37 C.F.R. § 42.10(c)
`_____________
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`IPR2016-01152
`Sacksteder Declaration ISO Motion for Pro Hac Vice Admission
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`I, Michael J. Sacksteder, declare as follows:
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`1.
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`I am more than twenty-one years of age, am competent to present this
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`declaration, and have personal knowledge of the facts set forth herein.
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`2.
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`This declaration is made in support of Petitioner Ancestry.com DNA
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`LLC’s Motion for Pro Hac Vice Admission of Michael J. Sacksteder Pursuant to
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`37 C.F.R. § 42.10(c).
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`3.
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`4.
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`I am a Partner at the law firm Fenwick & West LLP.
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`I have been a litigating attorney for more than 18 years. I have been
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`litigating patent cases during that entire time period.
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`5.
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`I am a member in good standing of the Bar of the State of California. I
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`have never been suspended or disbarred from practice before any court or
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`administrative body.
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`6.
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`No court or administrative body has ever denied my application for
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`admission to practice before it.
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`7.
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`No court or administrative body has ever imposed sanctions or
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`contempt citations on me.
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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 the C.F.R.
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`1
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`IPR2016-01152
`Sacksteder Declaration ISO Motion for Pro Hac Vice Admission
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`9.
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`I understand that I will be subject to the USPTO Code of Professional
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`Responsibility set forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction
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`under 37 C.F.R. § 11.19(a).
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`10.
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`I have served as counsel for an inter partes review proceeding before,
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`and I have been admitted to appear pro hac vice in six other inter partes review
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`proceedings before the Office within the last three years. One of those proceedings
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`is IPR2016-00060, which has been instituted and is directed to the same patent at
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`issue in the instant inter partes review petition ― U.S. Patent No. 8,221,381.
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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 was previously serving as a supervising attorney in two of the co-
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`pending district court litigations identified as Related Matters pursuant to 37
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`C.F.R. § 42.8(b)(2) by Petitioner (Paper No. 1) and by Patent Owner (Paper No. 5):
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`(i) DNA Genotek, Inc. v. Ancestry.com DNA LLC, Case No. 15-cv-00355-SLR (D.
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`Del.) (the “Ancestry litigation”); and (ii) DNA Genotek, Inc. v. Spectrum DNA,
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`Spectrum Solutions LLC, and Spectrum Packaging, LLC, Case No. 15-cv-00661-
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`SLR (D. Del.) (the “Spectrum litigation”). Both of these district court litigations
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`involve the same patent at issue in this proceeding, U.S. Patent No. 8,221,381 (“the
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`’381 patent”). As trial counsel for Petitioner in the Ancestry litigation and for the
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`Spectrum defendants in the Spectrum litigation, I was actively involved in all
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`2
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`IPR2016-01152
`Sacksteder Declaration ISO Motion for Pro Hac Vice Admission
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`
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`aspects of the district court litigations, including factual investigation and
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`development of non-infringement and invalidity positions regarding the claims of
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`the ’381 patent challenged in this proceeding. In addition, I am admitted pro hac
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`vice in IPR2016-00060, which has been instituted and is also directed to the ’381
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`patent.
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`12.
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`I have also reviewed in detail the ’381 patent, which is the patent
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`involved in this proceeding, as well as the Petition and prior art upon which the
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`Petitioner bases its challenge. I am thus very familiar with the ’381 patent and the
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`issues in this case.
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`13.
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`I hereby declare that all statements made herein of my own
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`knowledge are true and that all statements made on information and belief are
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`believed to be true; and further that these statements are made with the knowledge
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`that willful false statements and the like so made are punishable by fine or
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`imprisonment, or both, under Section 1001 of Title 18 of the United States Code.
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`
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`EXECUTED at San Francisco, California this 20th day of September, 2016.
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`/ Michael J. Sacksteder/
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`Michael J. Sacksteder
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`3
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