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. IPR2016-01152
`Patent 8,221,381 B2
`_____________
`
`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)
`
`_____________
`
`
`
`
`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. IPR2016-01152
`Patent 8,221,381 B2
`_____________
`
`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)
`
`_____________
`
`
`
`
`IPR2016-01152
`Petitioner’s Motion for Pro Hac Vice Admission of Melanie L. Mayer
`
`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 Melanie L. Mayer 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 facts, and supported by the Declaration of Melanie
`
`L. Mayer submitted herewith as Exhibit 1027 (“Ex. 1027”), Petitioner submits that
`
`a showing of good cause has been made and respectfully requests the pro hac vice
`
`admission of Melanie L. Mayer 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 Melanie L. Mayer
`
`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.
`
`Dr. Mayer is an associate at the law firm of Fenwick & West LLP
`
`where Dr. Becker is a partner. Ex. 1027, ¶ 3.
`
`4.
`
`Dr. Mayer, who has a Ph.D. in Molecular Biology and Genetics, is an
`
`experienced litigating attorney who has been litigating cases relating to patents for
`
`over 10 years. Ex. 1027, ¶ 4.
`
`5.
`
`Dr. Mayer has an established familiarity with the subject matter at
`
`issue in this proceeding. She was previously an 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
`
`
`
`
`2
`
`
`
`
`
`IPR2016-01152
`Petitioner’s Motion for Pro Hac Vice Admission of Melanie L. Mayer
`
`Spectrum defendants in the Spectrum litigation, Dr. Mayer was actively involved
`
`in all 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. Dr. Mayer has also reviewed in
`
`detail the ’381 patent, as well as the Petition and prior art upon which the Patent
`
`Owner bases its challenge. In addition, Dr. Mayer is admitted pro hac vice in
`
`IRP2016-00060, which has been instituted and is also directed to the ’381 patent.
`
`Ex. 1027, ¶¶ 11, 12.
`
`6.
`
`Dr. Mayer is an attorney in good standing of the State Bar of
`
`Washington. Ex. 1027, ¶ 5.
`
`7.
`
`Dr. Mayer has never been suspended or disbarred from practice before
`
`any court or administrative body. Ex. 1027, ¶ 5.
`
`8.
`
`No application of Dr. Mayer for admission to practice before any
`
`court or administrative body has ever been denied. Ex. 1027, ¶ 6.
`
`9.
`
`No sanctions or contempt citations have been imposed against Dr.
`
`Mayer by any court or administrative body. Ex. 1027, ¶ 7.
`
`10. Dr. Mayer has read and will 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. 1027, ¶ 8.
`
`
`
`
`3
`
`
`
`
`
`IPR2016-01152
`Petitioner’s Motion for Pro Hac Vice Admission of Melanie L. Mayer
`
`
`11. Dr. Mayer understands that she will be subject to the USPTO Rules of
`
`Professional Conduct set forth in 37 C.F.R. §§ 11.101 et. seq. and disciplinary
`
`jurisdiction under 37 C.F.R. § 11.19(a). Ex. 1027, ¶ 9.
`
`12. Dr. Mayer has been admitted to appear pro hac vice in one other inter
`
`partes review proceeding before the Office in the last three years. As explained
`
`above, that proceeding (IPR2016-00060) has been instituted and is also directed to
`
`the ’381 patent. Ex. 1027, ¶ 10.
`
`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION OF
`MELANIE L. MAYER
`
`The facts outlined above in the Statement of Facts, and contained in the
`
`Declaration of Melanie L. Mayer (Ex. 1027), establish that there is good cause to
`
`admit Dr. Mayer pro hac vice in this proceeding under 37 C.F.R. § 42.10. Dr.
`
`Mayer is an experienced litigating attorney and has an established familiarity with
`
`the subject matter at issue in this proceeding.
`
`/ / /
`
`/ / /
`
`/ / /
`
`/ / /
`
`/ / /
`
`
`
`
`
`
`
`
`4
`
`
`
`
`
`IPR2016-01152
`Petitioner’s Motion for Pro Hac Vice Admission of Melanie L. Mayer
`
`V. CONCLUSION
`
`For the foregoing reasons as well as the reasons in the attached declaration,
`
`Petitioner Ancestry.com DNA LLC respectfully requests admission of Melanie L.
`
`Mayer as counsel pro hac vice 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 Melanie L. Mayer
`
`
`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 MELANIE L. MAYER PURSUANT TO
`
`37 C.F.R. § 42.10(c) and supporting EXHIBIT 1027 were served on Patent
`
`Owner’s lead and backup counsel as agreed (Paper 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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