Filed on behalf of Ancestry.com DNA, LLC
`
`By: Daniel M. Becker, Reg. No. 38,376
`
`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
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ANCESTRY.COM DNA, LLC,
`Petitioner,
`
`v.
`
`DNA GENOTEK INC.,
`Patent Owner.
`
`Inter Partes Review No. IPR 2016-01152
`Patent 8,221,381 B2
`____________
`
`
`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)
`
`———————
`
`
`
`
`
`
`
`
`By: Daniel M. Becker, Reg. No. 38,376
`
`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
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ANCESTRY.COM DNA, LLC,
`Petitioner,
`
`v.
`
`DNA GENOTEK INC.,
`Patent Owner.
`
`Inter Partes Review No. IPR 2016-01152
`Patent 8,221,381 B2
`____________
`
`
`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)
`
`———————
`
`
`
`
`
`
`
`
`IPR2016-01152
`Petitioner’s Motion for Pro Hac Vice Admission of Michael J. Sacksteder
`
`
`
`I.
`
`
`RELIEF REQUESTED
`
`Pursuant to the authorization provided by the Board in Paper No. 3 at
`
`page 2, Petitioner Ancestry.com DNA, LLC petitions under 37 C.F.R. § 42.10(c)
`
`for the pro hac vice admission of Michael J. Sacksteder in this proceeding.
`
`II. GOVERNING LAWS, RULES, AND PRECEDENT
`Section 42.10(c) states as follows:
`
`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.
`
`III. STATEMENT OF FACTS
`Based on the following statement of facts, and supported by the Declaration
`
`of Michael J. Sacksteder submitted herewith as Exhibit 1026 (“Ex. 1026”),
`
`Petitioner submits that a showing of good cause has been made and respectfully
`
`requests the pro hac vice admission of Michael J. Sacksteder in this proceeding:
`
`1.
`
`This authorized petition is filed more than twenty-one (21) days after
`
`Petitioner’s service of the PETITION FOR INTER PARTES REVIEW OF U.S.
`
`
`
`1
`
`
`
`IPR2016-01152
`Petitioner’s Motion for Pro Hac Vice Admission of Michael J. Sacksteder
`
`
`
`PATENT 8,221,381 (Paper No. 1) and after the filing of PATENT OWNER’S
`
`MANDATORY NOTICES (Paper No. 5).
`
`2.
`
`Petitioner’s current lead counsel, Daniel M. Becker, is a registered
`
`practitioner (Reg. No. 38,376).
`
`3. Mr. Sacksteder is Dr. Becker’s partner at the law firm of Fenwick &
`
`West LLP. Ex. 1026 ¶ 3.
`
`4. Mr. Sacksteder is an experienced litigating attorney and has been
`
`litigating cases relating to patents for over 18 years. Ex. 1026 ¶ 4.
`
`5. Mr. Sacksteder has an established familiarity with the subject matter
`
`at issue in this proceeding. He was previously the supervising attorney in two of
`
`the co-pending district court litigations identified as Related Matters pursuant to 37
`
`CFR § 42.8(b)(2) by Petitioner (Paper No. 1) and by Patent Owner (Paper No. 5):
`
`(i) DNA Genotek, Inc. v. Ancestry.com DNA LLC, Case No. 15-cv-00355-SLR (D.
`
`Del.) (the “Ancestry litigation”); and (ii) DNA Genotek, Inc. v. Spectrum DNA,
`
`Spectrum Solutions LLC, and Spectrum Packaging, LLC, Case No. 15-cv-00661-
`
`SLR (D. Del.) (the “Spectrum litigation”). Both of these district court litigations
`
`involve the same patent at issue in this proceeding, U.S. Patent No. 8,221,381 (“the
`
`’381 patent”). As trial counsel for Petitioner in the Ancestry litigation and for the
`
`Spectrum defendants in the Spectrum litigation, he was actively involved in all
`
`
`
`2
`
`
`
`IPR2016-01152
`Petitioner’s Motion for Pro Hac Vice Admission of Michael J. Sacksteder
`
`aspects of the district court litigations, including factual investigation and
`
`
`
`development of invalidity and non-infringement positions regarding the claims of
`
`the ’381 patent challenged in this proceeding. In addition, he has been admitted
`
`pro hac vice in IPR2016-00060, which has been instituted and is also directed to
`
`the ’381 patent. Ex. 1026 ¶¶ 11, 12.
`
`6. Mr. Sacksteder is a member in good standing of the California State
`
`Bar. Ex. 1026 ¶ 5.
`
`7. Mr. Sacksteder has never been suspended or disbarred from practice
`
`before any court or administrative body. Ex. 1026 ¶ 5.
`
`8.
`
`No application filed by Mr. Sacksteder for admission to practice
`
`before any court or administrative body has ever been denied. Ex. 1026 ¶ 6.
`
`9.
`
`No sanctions or contempt citations have been imposed against
`
`Mr. Sacksteder by any court or administrative body. Ex. 1026 ¶ 7.
`
`10. Mr. Sacksteder has read and agrees to 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. Ex. 1026 ¶ 8.
`
`11. Mr. Sacksteder understands that he will be subject to the USPTO
`
`Rules of Professional Conduct 37 C.F.R. §§ 11.101 et seq. and disciplinary
`
`jurisdiction under 37 C.F.R. § 11.19(a). Ex. 1026 ¶ 9.
`
`
`
`3
`
`
`
`IPR2016-01152
`Petitioner’s Motion for Pro Hac Vice Admission of Michael J. Sacksteder
`
`
`
`12. Mr. Sacksteder has served in a consulting and supervisory role on
`
`several inter partes review proceedings. Ex. 1026 ¶ 10. He has applied to appear
`
`pro hac vice in six other proceedings before the Office within the last three (3)
`
`years. One of those proceedings is IPR2016-00060, which has been instituted and
`
`is also directed to the ’381 patent. Ex. 1026 ¶ 10.
`
`IV. GOOD CAUSE EXISTS FOR THE ADMISSION PRO HAC VICE OF
`MR. SACKSTEDER IN THIS PROCEEDING
`
`The facts outlined above in the Statement of Facts, and contained in the
`
`Declaration of Michael J. Sacksteder (Ex. 1026), establish that there is good cause
`
`to admit Mr. Sacksteder pro hac vice in this proceeding under 37 C.F.R. § 42.10.
`
`Mr. Sacksteder is an experienced litigating attorney, and Mr. Sacksteder has an
`
`established familiarity with the subject matter at issue.
`
`/ / /
`
`
`
`
`
`
`
`4
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`
`
`IPR2016-01152
`Petitioner’s Motion for Pro Hac Vice Admission of Michael J. Sacksteder
`
`
`
`V. CONCLUSION
`For the foregoing reasons as well as the reasons in the attached declaration,
`
`Petitioner Ancestry.com DNA LLC respectfully requests the pro hac vice
`
`admission of Michael J. Sacksteder in this proceeding.
`
`Dated: September 20, 2016
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/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
`
`Backup Counsel for Petitioner,
`Ancestry.com DNA, LLC
`
`5
`
`
`
`IPR2016-01152
`Petitioner’s Motion for Pro Hac Vice Admission of Michael J. Sacksteder
`
`CERTIFICATE OF SERVICE
`
`
`
`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on September 20,
`
`2016, a copy of the foregoing document, PETITIONER’S MOTION FOR PRO
`
`HAC VICE ADMISSION OF MICHAEL J. SACKSTEDER PURSUANT TO
`
`37 C.F.R. § 42.10(c), and supporting EXHIBIT 1026 were served on Patent
`
`Owner’s lead and backup counsel as agreed (Paper No. 5) by electronic mail to
`
`60414-381-IPR@mofo.com.
`
`
`
`
`
`
`
`
`
`
`
`
`
`/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
`
`6
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