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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ALERE INC.
`Petitioner
`v.
`
`REMBRANDT DIAGNOSTICS, LP
`Patent Owner
`
`Case No. IPR2016-01498
`Patent No. 8,623,291
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`AFFIDAVIT OF J. ANTHONY DOWNS IN SUPPORT OF PATENT
`OWNER’S MOTION FOR PRO HAC VICE ADMISSION OF J. ANTHONY
`DOWNS UNDER 37 C.F.R. § 42.10(c)
`
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`
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`1 of 6
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`Case No. IPR2016-01498
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`1.
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`I, J. Anthony Downs, am more than twenty-one years of age, am
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`competent to present this affidavit, and have personal knowledge of the facts set
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`forth herein.
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`2.
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`This affidavit is given in support of Petitioner’s Motion for Pro Hac
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`Vice Admission of J. Anthony Downs.
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`3.
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`4.
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`I am a partner with the law firm Goodwin Procter LLP.
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`I have an established familiarity with the subject matter at issue in this
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`proceeding. I have represented and continue to represent petitioner Alere Inc. and
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`its subsidiaries Alere Toxicology Services, Inc., America Biotech, Inc., Ameditech,
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`Inc., Innovacon, Inc., Instant Technologies, Inc., Instant Tech Subsidiary
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`Acquisition Inc. d/b/a US Diagnostics, and Branan Medical Corp. as their lead
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`counsel in co-pending litigation in the Southern District of California, captioned
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`Rembrandt Diagnostics, LP v. Alere Inc., et al., No. 3:16-cv-698-CAB-NLS (“the
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`district court litigation”) since shortly after it was filed on March 23, 2016.
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`Among other things, the district court litigation asserts infringement of the same
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`patent at issue here, U.S. Patent No. 8,623,291.
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`5.
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`I have reviewed and analyzed the patent at issue in this proceeding,
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`the Petition and accompanying exhibits filed in this proceeding, and all other
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`papers associated with this proceeding. Moreover, in the district court litigation, I
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`developed invalidity, non-infringement, and claim construction positions
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`concerning the patent at issue here.
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`6.
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`I am an experienced litigation attorney. I have been practicing law
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`since 1986, and have been litigating patent cases for more than 15 years. I have
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`extensive experience litigating patent infringement cases in many different courts
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`across the United States.
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`7. My experience in patent litigation matters includes serving as lead
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`counsel in patent jury trials, including making opening and closing statements,
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`presentation of non-expert and expert-testimony, arguing Markman hearings,
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`patent summary judgment proceedings, and other patent-related hearings and
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`preparation of pleadings concerning, inter alia, patent validity and infringement
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`issues. I have also represented clients in appeals before the Court of Appeals for
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`the Federal Circuit and the U.S. Supreme Court.
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`8.
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`I have represented petitioner Alere Inc. and/or its affiliates in many
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`patent litigation matters since 2002, including:
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`Name
`Alere Inc., et. al. v. Church & Dwight
`Co., Inc.
`Inverness Medical Innovations, Inc. et al.
`v. Orasure Technologies, Inc.
`Abbott Laboratories et al v. Church
`& Dwight, Inc.
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`
`
`Number District
`1-10-cv-
`10027
`3-08-cv-
`01856
`1-07-cv-
`03428
`
`IL ND
`
`MA
`
`NJ
`
`Filed
`January 8,
`2010
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`April 15, 2008
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`June 18, 2007
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`3 of 6
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`
`
`Name
`Inverness Medical, et al v.
`Quidel Corporation
`Quidel Corporation v. Inverness
`Medical, et al.
`Inverness Medical Switzerland GmbH
`et al v. Acon Laboratories, Inc.
`Inverness Medical, et al v.
`Acon Labortories, Inc.
`Inverness Medical SW, et al. v.
`Pfizer Inc., et al.
`Inverness Medical, et al v. Pfizer, Inc.,
`et al.
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`Case No. IPR2016-01498
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`Filed
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`CA SD March 9, 2004
`CA SD February 20,
`2004
`
`July 15, 2003
`
`November 26,
`2002
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`March 7, 2002
`
`November 29,
`2001
`
`Number District
`3-04-cv-
`00489
`3-04-cv-
`00378
`1-03-cv-
`11323
`1-02-cv-
`12303
`2-02-cv-
`01029
`2-01-cv-
`05516
`
`MA
`
`MA
`
`NJ
`
`NJ
`
`
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`8.
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`I am a member in good standing of the Bar of the State of
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`Massachusetts and am admitted to practice before the U.S. Supreme Court, the
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`U.S. Court of Appeals for the First, Second, and Federal Circuits, the District
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`Court for the District of Massachusetts, the District Court for the Eastern District
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`of Texas, the District Court for the Northern District of Illinois, the Massachusetts
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`Supreme Judicial Court, and the International Trade Commission.
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`9.
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`I have never been suspended or disbarred from practice before any
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`court or administrative body.
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`10. No application of mine for admission to practice before any court or
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`administrative body has ever been denied.
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`11. No sanctions or contempt citations have ever been imposed against
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`me by any court or administrative body.
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`12.
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`I have read and will comply with the Office Patent Trial Practice
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`Guide and the Board’s Rules of Practice for Trials set forth in part 42 of 37 C.F.R.
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`13.
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`I understand that I will be subject to the U.S.P.T.O. Code of
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`Professional Conduct set forth in 37 C.P.R. §§ 10.101 et seq. and disciplinary
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`jurisdiction under 37 C.P.R. §§ 11.19(a).
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`14.
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`I am also applying for pro hac vice admission in Case IPR2016-
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`01502, in a concurrently filed motion, which involves a patent related to the patent
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`at issue in the instant proceeding. I have not applied for pro hac vice admission in
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`any other proceedings before the Office in the last three years.
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`Dated: October 25, 2016
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`Respectfully submitted,
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`Case No. IPR2016-01498
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`B (\f;/
`J. /'XntH'ony Downs
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`V
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`GOOD W I N PROCTER LLP
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