UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________________________
`
`MERCK SHARP & DOHME CORP.,
`Petitioner,
`
`v.
`
`GENENTECH, INC. AND CITY OF HOPE,
`Patent Owners.
`____________________________________________
`
`Case IPR2016-01373
`U.S. Patent 6,331,415
`____________________________________________
`
`
`
`
`
`PATENT OWNERS’ UNOPPOSED MOTION FOR ADMISSION
`PRO HAC VICE OF JOSEPH M. LIPNER
`
`
`
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________________________
`
`MERCK SHARP & DOHME CORP.,
`Petitioner,
`
`v.
`
`GENENTECH, INC. AND CITY OF HOPE,
`Patent Owners.
`____________________________________________
`
`Case IPR2016-01373
`U.S. Patent 6,331,415
`____________________________________________
`
`
`
`
`
`PATENT OWNERS’ UNOPPOSED MOTION FOR ADMISSION
`PRO HAC VICE OF JOSEPH M. LIPNER
`
`
`
`Case No. IPR2016-01373
`Patent Owners’ Motion For Admission Pro Hac Vice Of Joseph M. Lipner
`
`
`I. Statement of Precise Relief Requested
`
`Pursuant to 37 C.F.R. § 42.10(c), Patent Owners Genentech, Inc.
`
`(“Genentech”) and City of Hope request that the Patent Trial and Appeal Board
`
`(the “Board”) admit Joseph M. Lipner pro hac vice in this proceeding, IPR2016-
`
`01373. Petitioner Merck Sharp & Dohme Corp. has indicated that it does not
`
`oppose this motion.
`
`II. Statement of Facts Showing Good Cause for the Board to Recognize
`Counsel Pro Hac Vice During the Proceeding
`
`In accordance with 37 C.F.R. § 42.10(c), 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. Section 42.10(c) indicates that “where 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 a showing that counsel is an
`
`experienced litigating attorney and has an established familiarity with the subject
`
`matter at issue in the proceeding.” The facts here establish good cause for the
`
`Board to recognize Joseph M. Lipner pro hac vice in this proceeding.
`
`1. Lead counsel, David L. Cavanaugh, is a registered practitioner. Backup
`
`counsel, Owen K. Allen, Heather M. Petruzzi and Adam R. Brausa, are also
`
`registered practitioners.
`
`
`
`- 2 -
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`
`
`Case No. IPR2016-01373
`Patent Owners’ Motion For Admission Pro Hac Vice Of Joseph M. Lipner
`
`2. Counsel, Joseph M. Lipner, is an experienced litigator and has an established
`
`familiarity with the subject matter at issue in the proceeding. Accompanying
`
`this motion as Exhibit 2003 is the Declaration of Joseph M. Lipner in
`
`support of this Motion for Admission Pro Hac Vice (“Lipner Decl.”). In his
`
`declaration, Mr. Lipner asserts:
`
`I am a member in good standing of the Bar of the State of
`California, the Bar of Massachusetts and the Bar of New York.
`I am also admitted to practice before the United States Supreme
`Court, the United States Courts of Appeals for the Federal,
`Fourth and Ninth Circuits, and the United States District Courts
`for the Central District of California, Northern District of
`California, Southern District of California, and the United
`States District Court for the District of Colorado.
`Lipner Decl. ¶ 2 (Ex. 2003). Mr. Lipner also states that he has a long-
`
`standing relationship with Patent Owner City of Hope and has worked with
`
`Patent Owner Genentech. Lipner Decl. ¶ 11 (Ex. 2003). Mr. Lipner also
`
`demonstrates that he has a detailed working knowledge of the relevant
`
`subject matter through his participation in prior litigations involving the ʼ415
`
`patent as well as his familiarity with antibody technologies as a result of
`
`participation as counsel in prior recombinant antibody-related patent cases.
`
`Lipner Decl. ¶¶ 12-13 (Ex. 2003).
`
`
`
`- 3 -
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`
`
`Case No. IPR2016-01373
`Patent Owners’ Motion For Admission Pro Hac Vice Of Joseph M. Lipner
`
`
`3. In his declaration, Mr. Lipner also attests to each of the listed items required
`
`by the Order – Authorizing Motion for Pro Hac Vice Admission – 37 C.F.R.
`
`§ 42.10 in IPR2013-00639. See Lipner Decl. ¶¶ 1-13 (Ex. 2003). Mr.
`
`Lipner attests that he has read and will comply with the Office Patent Trial
`
`Practice Guide and the Board’s Rules of Practice for Trials set forth in 37
`
`C.F.R. § 42. See id. ¶ 7. Mr. Lipner further attests that he agrees to be
`
`subject to the United States Patent and Trademark Office’s Rules of
`
`Professional Conduct as set forth in 37 C.F.R. §§ 11.101 et seq. and
`
`disciplinary jurisdiction under 37 C.F.R. § 11.19(a). See id. ¶ 8.
`
`III. Conclusion
`For the foregoing reasons, Patent Owners respectfully request that the Board
`
`admit Joseph M. Lipner pro hac vice in this proceeding.
`
`
`
`Date: September 1, 2016
`
`Respectfully submitted,
`
`By: /David L. Cavanaugh/
`David L. Cavanaugh
`Reg. No. 36,476
`Wilmer Cutler Pickering Hale and Dorr LLP
`1875 Pennsylvania Avenue NW
`Washington, DC 20006
`
`
`
`- 4 -
`
`
`
`Case No. IPR2016-01373
`Patent Owners’ Motion For Admission Pro Hac Vice Of Joseph M. Lipner
`
`
`PATENT OWNERS’ EXHIBIT LIST
`IPR2016-01373
`
`2001 Declaration of Robert J. Gunther, Jr. in Support of Motion for
`Admission Pro Hac Vice
`2002 Declaration of Daralyn J. Durie in Support of Motion for Admission
`Pro Hac Vice
`2003 Declaration of Joseph M. Lipner in Support of Motion for Admission
`Pro Hac Vice
`2004 Declaration of David I. Gindler in Support of Motion for Admission
`Pro Hac Vice
`
`
`
`
`
`
`
`- i -
`
`
`
`Case No. IPR2016-01373
`Patent Owners’ Motion For Admission Pro Hac Vice Of Joseph M. Lipner
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that, on September 1, 2016, I caused a true and correct copy
`of the foregoing materials:
`
`
`
` Patent Owners’ Unopposed Motion for Admission Pro Hac Vice of
`Joseph M. Lipner
` Exhibit 2003
` Patent Owners’ Updated Exhibit List
`
`to be served via electronic mail on the following attorneys of record:
`
`Raymond N. Nimrod
`Matthew A. Traupman
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`51 Madison Ave., 22nd Floor
`New York, NY 10010
`raynimrod@quinnemanuel.com
`matthewtraupman@quinnemanuel.com
`
`Katherine A. Helm
`SIMPSON THACHER & BARTLETT LLP
`425 Lexington Avenue
`New York, NY 10017
`khelm@stblaw.com
`
`
`/Owen K. Allen/
`Owen K. Allen
`Reg. No. 71,118
`Wilmer Cutler Pickering Hale and Dorr LLP
`950 Page Mill Road
`Palo Alto, CA 94304
`(650) 600-5029
`
`
`
`
`ActiveUS 157053310v.1
`
`- ii -
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