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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
`_______________
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`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.
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`Inter Partes Review No. IPR2016-01152
`Patent 8,221,381 B2
`_____________
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`DECLARATION OF MELANIE L. MAYER IN SUPPORT OF
`PETITIONER’S MOTION FOR PRO HAC VICE ADMISSION OF
`MELANIE L. MAYER PURSUANT TO 37 C.F.R. § 42.10(c)
`_____________
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`IPR2016-01152
`Mayer Declaration ISO Motion for Pro Hac Vice Admission
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`I, Melanie L. Mayer, 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 Melanie L. Mayer 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 an associate at the law firm Fenwick & West LLP.
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`I earned a Ph.D. in Molecular Biology and Genetics from Johns
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`Hopkins School of Medicine in 2001. I have been a litigating attorney for more
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`than 10 years. I have been litigating patent cases during that entire time period.
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`5.
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`I am an attorney in good standing of the State Bar of Washington. 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 against 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 37 C.F.R.
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`1
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`IPR2016-01152
`Mayer 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 Rules of Professional
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`Conduct set forth in 37 C.F.R. §§ 11.101 et. seq. and disciplinary jurisdiction under
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`37 C.F.R. § 11.19(a).
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`10.
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`I have been admitted to appear pro hac vice in one other inter partes
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`review proceeding before the Office in the last three years. That proceeding is
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`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 am one of the attorneys that has previously represented the
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`defendants in two of the co-pending district court litigations identified as Related
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`Matters pursuant to 37 C.F.R. § 42.8(b)(2) by Petitioner (Paper No. 1) and by
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`Patent Owner (Paper No. 5): (i) DNA Genotek, Inc. v. Ancestry.com DNA LLC,
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`Case No. 15-cv-00355-SLR (D. Del.) (the “Ancestry litigation”); and (ii) DNA
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`Genotek, Inc. v. Spectrum DNA, Spectrum Solutions LLC, and Spectrum
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`Packaging, LLC, Case No. 15-cv-00661-SLR (D. Del.) (the “Spectrum litigation”).
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`Both of these district court litigations involve the same patent, U.S. Patent No.
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`8,221,381 (“the ’381 patent”), at issue in this proceeding. As trial counsel for
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`Petitioner in the Ancestry litigation and for the Spectrum defendants in the
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`Spectrum litigation, I was actively involved in all aspects of the district court
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`IPR2016-01152
`Mayer Declaration ISO Motion for Pro Hac Vice Admission
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`litigations, including factual investigation and development of non-infringement
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`and invalidity positions regarding the claims of the ’381 patent challenged in this
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`proceeding. In addition, I am admitted pro hac vice in IPR2016-00060, which has
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`been instituted and is also directed to the ’381 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 are punishable by fine, imprisonment, or
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`both, under Section 1001 of Title 18 of the United States Code.
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`EXECUTED at Seattle, Washington this 20th day of September, 2016.
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`/Melanie L. Mayer/
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`Melanie L. Mayer
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`3