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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,
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`v.
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`DNA GENOTEK INC.,
`Patent Owner.
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`Inter Partes Review No. IPR 2016-01152
`Patent 8,221,381 B2
`____________
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`PETITIONER ANCESTRY.COM DNA, LLC’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
`Petitioner’s Motion for Pro Hac Vice Admission of Michael J. Sacksteder
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`I.
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`RELIEF REQUESTED
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`Pursuant to the authorization provided by the Board in Paper No. 3 at
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`page 2, Petitioner Ancestry.com DNA, LLC petitions under 37 C.F.R. § 42.10(c)
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`for the pro hac vice admission of Michael J. Sacksteder in this proceeding.
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`II. GOVERNING LAWS, RULES, AND PRECEDENT
`Section 42.10(c) states as follows:
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`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.
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`III. STATEMENT OF FACTS
`Based on the following statement of facts, and supported by the Declaration
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`of Michael J. Sacksteder submitted herewith as Exhibit 1026 (“Ex. 1026”),
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`Petitioner submits that a showing of good cause has been made and respectfully
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`requests the pro hac vice admission of Michael J. Sacksteder in this proceeding:
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`1.
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`This authorized petition is filed more than twenty-one (21) days after
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`Petitioner’s service of the PETITION FOR INTER PARTES REVIEW OF U.S.
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`IPR2016-01152
`Petitioner’s Motion for Pro Hac Vice Admission of Michael J. Sacksteder
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`PATENT 8,221,381 (Paper No. 1) and after the filing of PATENT OWNER’S
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`MANDATORY NOTICES (Paper No. 5).
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`2.
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`Petitioner’s current lead counsel, Daniel M. Becker, is a registered
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`practitioner (Reg. No. 38,376).
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`3. Mr. Sacksteder is Dr. Becker’s partner at the law firm of Fenwick &
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`West LLP. Ex. 1026 ¶ 3.
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`4. Mr. Sacksteder is an experienced litigating attorney and has been
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`litigating cases relating to patents for over 18 years. Ex. 1026 ¶ 4.
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`5. Mr. Sacksteder has an established familiarity with the subject matter
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`at issue in this proceeding. He was previously the supervising attorney in two of
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`the co-pending district court litigations identified as Related Matters pursuant to 37
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`CFR § 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, he was actively involved in all
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`IPR2016-01152
`Petitioner’s Motion for Pro Hac Vice Admission of Michael J. Sacksteder
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`aspects of the district court litigations, including factual investigation and
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`development of invalidity and non-infringement positions regarding the claims of
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`the ’381 patent challenged in this proceeding. In addition, he has been admitted
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`pro hac vice in IPR2016-00060, which has been instituted and is also directed to
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`the ’381 patent. Ex. 1026 ¶¶ 11, 12.
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`6. Mr. Sacksteder is a member in good standing of the California State
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`Bar. Ex. 1026 ¶ 5.
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`7. Mr. Sacksteder has never been suspended or disbarred from practice
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`before any court or administrative body. Ex. 1026 ¶ 5.
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`8.
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`No application filed by Mr. Sacksteder for admission to practice
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`before any court or administrative body has ever been denied. Ex. 1026 ¶ 6.
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`9.
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`No sanctions or contempt citations have been imposed against
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`Mr. Sacksteder by any court or administrative body. Ex. 1026 ¶ 7.
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`10. Mr. Sacksteder has read and agrees to comply with the Office Patent
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`Trial Practice Guide and the Board’s Rules of Practice for Trials set forth in part 42
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`of 37 C.F.R. Ex. 1026 ¶ 8.
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`11. Mr. Sacksteder understands that he will be subject to the USPTO
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`Rules of Professional Conduct 37 C.F.R. §§ 11.101 et seq. and disciplinary
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`jurisdiction under 37 C.F.R. § 11.19(a). Ex. 1026 ¶ 9.
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`IPR2016-01152
`Petitioner’s Motion for Pro Hac Vice Admission of Michael J. Sacksteder
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`12. Mr. Sacksteder has served in a consulting and supervisory role on
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`several inter partes review proceedings. Ex. 1026 ¶ 10. He has applied to appear
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`pro hac vice in six other proceedings before the Office within the last three (3)
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`years. One of those proceedings is IPR2016-00060, which has been instituted and
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`is also directed to the ’381 patent. Ex. 1026 ¶ 10.
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`IV. GOOD CAUSE EXISTS FOR THE ADMISSION PRO HAC VICE OF
`MR. SACKSTEDER IN THIS PROCEEDING
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`The facts outlined above in the Statement of Facts, and contained in the
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`Declaration of Michael J. Sacksteder (Ex. 1026), establish that there is good cause
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`to admit Mr. Sacksteder pro hac vice in this proceeding under 37 C.F.R. § 42.10.
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`Mr. Sacksteder is an experienced litigating attorney, and Mr. Sacksteder has an
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`established familiarity with the subject matter at issue.
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`/ / /
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`Petitioner’s Motion for Pro Hac Vice Admission of Michael J. Sacksteder
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`V. CONCLUSION
`For the foregoing reasons as well as the reasons in the attached declaration,
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`Petitioner Ancestry.com DNA LLC respectfully requests the pro hac vice
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`admission of Michael J. Sacksteder in this proceeding.
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`Dated: September 20, 2016
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`Respectfully submitted,
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`/Jennifer R. Bush/
`Jennifer R. Bush
`Reg. No. 50,784
`FENWICK & WEST LLP
`801 California Street
`Mountain View, CA 94041
`Tel: (650) 988-8500
`Fax: (650) 938-5200
`Email: jbush-ptab@fenwick.com
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`Backup Counsel for Petitioner,
`Ancestry.com DNA, LLC
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`IPR2016-01152
`Petitioner’s Motion for Pro Hac Vice Admission of Michael J. Sacksteder
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on September 20,
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`2016, a copy of the foregoing document, PETITIONER’S MOTION FOR PRO
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`HAC VICE ADMISSION OF MICHAEL J. SACKSTEDER PURSUANT TO
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`37 C.F.R. § 42.10(c), and supporting EXHIBIT 1026 were served on Patent
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`Owner’s lead and backup counsel as agreed (Paper No. 5) by electronic mail to
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`60414-381-IPR@mofo.com.
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`/Jennifer R. Bush/
`Jennifer R. Bush
`Reg. No. 50,784
`FENWICK & WEST LLP
`801 California Street
`Mountain View, CA 94041
`Tel: (650) 988-8500
`Fax: (650) 938-5200
`Email: jbush-ptab@fenwick.com
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