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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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`PETITIONER ANCESTRY.COM DNA, LLC’S MOTION FOR
`PRO HAC VICE ADMISSION OF MELANIE L. MAYER
`PURSUANT TO 37 C.F.R. § 42.10(c)
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`_____________
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`IPR2016-01152
`Petitioner’s Motion for Pro Hac Vice Admission of Melanie L. Mayer
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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 page
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`2, Petitioner Ancestry.com DNA, LLC petitions under 37 C.F.R. § 42.10(c) for the
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`pro hac vice admission of Melanie L. Mayer 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
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`Based on the following facts, and supported by the Declaration of Melanie
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`L. Mayer submitted herewith as Exhibit 1027 (“Ex. 1027”), Petitioner submits that
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`a showing of good cause has been made and respectfully requests the pro hac vice
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`admission of Melanie L. Mayer 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 Melanie L. Mayer
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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.
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`Dr. Mayer is an associate at the law firm of Fenwick & West LLP
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`where Dr. Becker is a partner. Ex. 1027, ¶ 3.
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`4.
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`Dr. Mayer, who has a Ph.D. in Molecular Biology and Genetics, is an
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`experienced litigating attorney who has been litigating cases relating to patents for
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`over 10 years. Ex. 1027, ¶ 4.
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`5.
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`Dr. Mayer has an established familiarity with the subject matter at
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`issue in this proceeding. She was previously an attorney in two of the co-pending
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`district court litigations identified as Related Matters pursuant to 37 CFR
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`§ 42.8(b)(2) by Petitioner (Paper No. 1) and by Patent Owner (Paper No. 5): (i)
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`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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`IPR2016-01152
`Petitioner’s Motion for Pro Hac Vice Admission of Melanie L. Mayer
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`Spectrum defendants in the Spectrum litigation, Dr. Mayer was actively involved
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`in all 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. Dr. Mayer has also reviewed in
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`detail the ’381 patent, as well as the Petition and prior art upon which the Patent
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`Owner bases its challenge. In addition, Dr. Mayer is admitted pro hac vice in
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`IRP2016-00060, which has been instituted and is also directed to the ’381 patent.
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`Ex. 1027, ¶¶ 11, 12.
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`6.
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`Dr. Mayer is an attorney in good standing of the State Bar of
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`Washington. Ex. 1027, ¶ 5.
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`7.
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`Dr. Mayer has never been suspended or disbarred from practice before
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`any court or administrative body. Ex. 1027, ¶ 5.
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`8.
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`No application of Dr. Mayer for admission to practice before any
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`court or administrative body has ever been denied. Ex. 1027, ¶ 6.
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`9.
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`No sanctions or contempt citations have been imposed against Dr.
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`Mayer by any court or administrative body. Ex. 1027, ¶ 7.
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`10. Dr. Mayer has read and will comply with the Office Patent Trial
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`Practice Guide and the Board’s Rules of Practice for Trials set forth in part 42 of
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`37 C.F.R. Ex. 1027, ¶ 8.
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`IPR2016-01152
`Petitioner’s Motion for Pro Hac Vice Admission of Melanie L. Mayer
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`11. Dr. Mayer understands that she will be subject to the USPTO Rules of
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`Professional Conduct set forth in 37 C.F.R. §§ 11.101 et. seq. and disciplinary
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`jurisdiction under 37 C.F.R. § 11.19(a). Ex. 1027, ¶ 9.
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`12. Dr. Mayer has been admitted to appear pro hac vice in one other inter
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`partes review proceeding before the Office in the last three years. As explained
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`above, that proceeding (IPR2016-00060) has been instituted and is also directed to
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`the ’381 patent. Ex. 1027, ¶ 10.
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`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION OF
`MELANIE L. MAYER
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`The facts outlined above in the Statement of Facts, and contained in the
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`Declaration of Melanie L. Mayer (Ex. 1027), establish that there is good cause to
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`admit Dr. Mayer pro hac vice in this proceeding under 37 C.F.R. § 42.10. Dr.
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`Mayer is an experienced litigating attorney and has an established familiarity with
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`the subject matter at issue in this proceeding.
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`IPR2016-01152
`Petitioner’s Motion for Pro Hac Vice Admission of Melanie L. Mayer
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`V. CONCLUSION
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`For the foregoing reasons as well as the reasons in the attached declaration,
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`Petitioner Ancestry.com DNA LLC respectfully requests admission of Melanie L.
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`Mayer as counsel pro hac vice 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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`5
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`IPR2016-01152
`Petitioner’s Motion for Pro Hac Vice Admission of Melanie L. Mayer
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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 MELANIE L. MAYER PURSUANT TO
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`37 C.F.R. § 42.10(c) and supporting EXHIBIT 1027 were served on Patent
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`Owner’s lead and backup counsel as agreed (Paper 5) by electronic mail to 60414-
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`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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