Case No. IPR2016-01373
`Patent Owners’ Motion For Admission Pro Hac Vice Of Daralyn J. Durie
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________________________________
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`MERCK SHARP & DOHME CORP.,
`Petitioner,
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`v.
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`GENENTECH, INC. AND CITY OF HOPE,
`Patent Owners.
`____________________________________________
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`Case IPR2016-01373
`U.S. Patent 6,331,415
`____________________________________________
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`PATENT OWNERS’ UNOPPOSED MOTION FOR ADMISSION PRO HAC
`VICE OF DARALYN J. DURIE UNDER 37 C.F.R. § 42.10(c)
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`Patent Owners’ Motion For Admission Pro Hac Vice Of Daralyn J. Durie
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________________________________
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`MERCK SHARP & DOHME CORP.,
`Petitioner,
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`v.
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`GENENTECH, INC. AND CITY OF HOPE,
`Patent Owners.
`____________________________________________
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`Case IPR2016-01373
`U.S. Patent 6,331,415
`____________________________________________
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`PATENT OWNERS’ UNOPPOSED MOTION FOR ADMISSION PRO HAC
`VICE OF DARALYN J. DURIE UNDER 37 C.F.R. § 42.10(c)
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`I.
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`Case No. IPR2016-01373
`Patent Owners’ Motion For Admission Pro Hac Vice Of Daralyn J. Durie
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`RELIEF REQUESTED
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`Pursuant to 37 C.F.R. § 42.10(c), Patent Owners Genentech, Inc.
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`(“Genentech”) and City of Hope, by and through its attorneys, respectfully request
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`that the Board admit Daralyn J. Durie pro hac vice in this proceeding, IPR2016-
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`01373. Petitioner Merck Sharp & Dohme Corp. has indicated that it does not
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`oppose this motion.
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`II. GOVERNING LAW, RULES, AND PRECEDENT
`Section 42.10(c) of 37 C.F.R. provides 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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`The Board has specified that a motion for pro hac vice admission shall be
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`filed in accordance with the “ORDER-AUTHORIZING MOTION FOR PRO HAC
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`VICE ADMISSION – 37 C.F.R. § 42.10” in Unified Patents, Inc. v. Parallel Iron,
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`LLC, Case No. IPR2013-00639 (“Representative Order”). The Representative
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`Order states that the motion must “[c]ontain a statement of facts showing there is
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`good cause for the Board to recognize counsel pro hac vice during the
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`Case No. IPR2016-01373
`Patent Owners’ Motion For Admission Pro Hac Vice Of Daralyn J. Durie
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`proceeding,” and “[b]e accompanied by an affidavit or declaration of the individual
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`seeking to appear” which attests to a number of facts concerning the counsel
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`seeking admission pro hac vice specified in the Representative Order.
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`Accompanying this motion as Exhibit 2002 is the Declaration of Daralyn J. Durie
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`in Support of this Motion for Admission Pro Hac Vice (“Durie Decl.”).
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`III. STATEMENT OF FACTS
`1.
`Patent Owners’ lead counsel, David L. Cavanaugh, is a registered
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`practitioner (Reg. No. 36,476).
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`2. Ms. Durie is a Partner at the law firm Durie Tangri LLP. (Durie Decl.
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`¶ 2, Ex. 2002).
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`3. Ms. Durie is an experienced litigating attorney and has been litigating
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`cases relating to patents for over 20 years. (Id. ¶ 2)
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`4. Ms. Durie is a member in good standing of the California State Bar,
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`and among other courts, the United States Court of Appeals for the Federal Circuit
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`(Id. ¶ 3).
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`5. Ms. Durie has never been suspended or disbarred from practice before
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`any court or administrative body. (Id. ¶ 5).
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`6.
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`No application filed under Ms. Durie for admission to practice before
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`any court or administrative body has ever been denied. (Id. ¶ 6).
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`7.
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`No sanctions or contempt citations have been imposed against Ms.
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`Case No. IPR2016-01373
`Patent Owners’ Motion For Admission Pro Hac Vice Of Daralyn J. Durie
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`Durie by any court or administrative body. (Id. ¶ 7).
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`8. Ms. Durie has read and agrees to 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 37
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`C.F.R. (Id. ¶ 8).
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`9. Ms. Durie 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). (Id. ¶ 9).
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`10.
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`In the last three (3) years, Ms. Durie has appeared Pro Hac Vice
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`before the Patent Trial and Appeal Board in the following cases: Sanofi-Aventis
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`U.S. LLC and Regeneron Pharmaceuticals, Inc. v. Genentech, Inc. and City of
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`Hope, IPR2015-01624; Genzyme Corporation v. Genentech, Inc. and City of Hope,
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`IPR2016-00460 (pro hac vice motion filed) (joined with IPR2015-01624);
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`Genzyme Corporation v. Genentech, Inc. and City of Hope, IPR2016-00383 (pro
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`hac vice motion filed) (not instituted). (Id. ¶ 10).
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`11. Ms. Durie has an established familiarity with the subject matter at
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`issue in this proceeding. She has handled patent cases relating to recombinant
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`antibodies for more than twelve years, including six litigations in which U.S.
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`Patent No. 6,331,415 (“the ’415 patent”) was a patent-in-suit. (Id. ¶ 11). In all of
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`these cases involving the ’415 patent, she has represented Genentech and in several
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`of these cases, she also represented City of Hope. During these litigations, she has
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`Case No. IPR2016-01373
`Patent Owners’ Motion For Admission Pro Hac Vice Of Daralyn J. Durie
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`worked closely with Adam R. Brausa, counsel for Genentech and City of Hope in
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`this matter. (Id.).
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`12. Additionally, Ms. Durie has carefully reviewed and has developed
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`extensive familiarity with the matters involved in and implicated by these
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`proceedings, including the ’415 patent and its file history, the prior art presented in
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`the petition, and the legal and factual issues raised by the Petitioner in this
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`proceeding. As a result, Ms. Durie has acquired substantial understanding of the
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`underlying legal and technological issues at stake in this proceeding. (Id. ¶ 12).
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`IV. GOOD CAUSE EXISTS FOR PRO HAC VICE ADMISSION OF
`DARALYN J. DURIE
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`The facts outlined above in the Statement of Facts, supported by the
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`Declaration of Daralyn J. Durie (Ex. 2002), establish there is good cause to admit
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`Ms. Durie pro hac vice in this proceeding under 37 C.F.R. § 42.10. Patent
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`Owners’ lead counsel, David L. Cavanaugh, is a registered practitioner in good
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`standing before the Board. Ms. Durie is an attorney in good standing in the State
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`Bar of California and the United States Court of Appeals for the Federal Circuit.
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`Ms. Durie has extensive experience litigating patents, including the ’415 patent,
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`which is the subject of this proceeding. As a result, Ms. Durie is familiar with the
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`subject matter at issue in this proceeding. Furthermore, Ms. Durie has carefully
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`reviewed the ’415 patent at issue in this proceeding, its prosecution history, the
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`Case No. IPR2016-01373
`Patent Owners’ Motion For Admission Pro Hac Vice Of Daralyn J. Durie
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`prior art, the grounds advanced by the Petitioner and other aspects of the record in
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`this proceeding, and is familiar with these matters. Based on her experience and
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`knowledge, there is good cause to admit Ms. Durie pro hac vice in this proceeding.
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`V. CONCLUSION
`In light of the foregoing, Patent Owners respectfully request that the Board
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`admit Daralyn J. Durie pro hac vice in this proceeding.
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`Respectfully submitted,
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`/s/ Adam R. Brausa
`Adam R. Brausa
`Reg. No. 60,287
`Attorney for Patent Owners
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`By:
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`Dated: September 1, 2016
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`Case No. IPR2016-01373
`Patent Owners’ Motion For Admission Pro Hac Vice Of Daralyn J. Durie
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`PATENT OWNERS’ EXHIBIT LIST
`IPR2016-01373
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`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
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`Case No. IPR2016-01373
`Patent Owners’ Motion For Admission Pro Hac Vice Of Daralyn J. Durie
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`CERTIFICATE OF SERVICE
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`I hereby certify that, on September 1, 2016, I caused a true and correct copy
`of the foregoing materials:
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`Patent Owners’ Unopposed Motion for Admission Pro Hac Vice of
`Daralyn J. Durie
`Exhibit 2002
`Patent Owners’ Updated Exhibit List
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`to be served via electronic mail on the following attorneys of record:
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`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
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`Katherine A. Helm
`SIMPSON THACHER & BARTLETT LLP
`425 Lexington Avenue
`New York, NY 10017
`khelm@stblaw.com
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`/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
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`ActiveUS 157053886v.2
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