UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ALERE INC.
`Petitioner
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`v.
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`REMBRANDT DIAGNOSTICS, LP
`Patent Owner
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`Case No. IPR2016-01498
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`Patent No. 8,623,291
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`PETITIONER’S MOTION FOR PRO HAC VICE ADMISSION OF J.
`ANTHONY DOWNS UNDER 37 C.F.R. § 42.10(c)
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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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`
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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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`PETITIONER’S MOTION FOR PRO HAC VICE ADMISSION OF J.
`ANTHONY DOWNS UNDER 37 C.F.R. § 42.10(c)
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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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`
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`Case No. IPR2016-01498
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`Alere Inc. (“Petitioner”) respectfully requests the pro hac vice admission of
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`J. Anthony Downs in this proceeding, IPR2016-01498, concerning U.S. Patent No.
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`8,623,291 (“the ‘291 patent”), pursuant to 37 C.F.R. § 42.10(c).
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`I.
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`THE REQUEST IS TIMELY
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`As stated in the Patent Trial and Appeal Board’s (“Board”) August 15, 2016
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`Notice of Filing Date Accorded to Petition And Time For Filing Patent Owner
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`Preliminary Response, any motion for pro hac vice admission must be filed in
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`accordance with the guidance specified in Case IPR2013-00639 (Paper 7) (“PHV
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`Admission Order”). According to that guidance, pro hac vice motions can be filed
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`no sooner than (21) days after service of the Petition. This pro hac vice motion is
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`filed more than 21 days after the service of the Petition and is therefore timely.
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`II.
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`STATEMENT OF FACTS
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`As required by the PHV Admission Order, the following statement of facts
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`show that there is good cause for the Board to recognize Mr. Downs pro hac vice.
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`An affidavit by Mr. Downs containing the required statements and information is
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`submitted herewith. (Ex. 1015).
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`1. Douglas J. Kline, lead counsel for Petitioner Alere Inc. in this
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`proceedings, is a registered practitioner holding Registration No. 35,574.
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`2. Mr. Downs is a partner with Goodwin Procter LLP.
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`1
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`Case No. IPR2016-01498
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`3. Mr. Downs has an established familiarity with the subject matter at
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`issue in this proceeding. Mr. Downs has represented and continues to represent
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`petitioner Alere Inc. and its subsidiaries Alere Toxicology Services, Inc., America
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`Biotech, Inc., Ameditech, Inc., Innovacon, Inc., Instant Technologies, Inc., Instant
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`Tech Subsidiary Acquisition Inc. d/b/a US Diagnostics, and Branan Medical Corp.
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`as their lead counsel in co-pending litigation in the Southern District of California,
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`captioned Rembrandt Diagnostics, LP v. Alere Inc., et al., No. 3:16-cv-698-CAB-
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`NLS (“the district court litigation”) since shortly after it was filed on March 23,
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`2016. Among other things, the district court litigation asserts infringement of the
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`same patent at issue here, U.S. Patent No. 8,623,291.
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`4. Mr. Downs represents that he has reviewed and analyzed the patent at
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`issue in this proceeding, the Petition and accompanying exhibits filed in this
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`proceeding, and all other papers associated with this proceeding. Moreover, he
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`represents that in the district court litigation, he developed invalidity, non-
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`infringement, and claim construction positions concerning the patent at issue here.
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`He therefore has extensive knowledge of this patent and of the cited prior art.
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`5. Mr. Downs is an experienced litigation attorney. Mr. Downs has been
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`practicing law since 1986, and have been litigating patent cases for more than 15
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`years. Mr. Downs has extensive experience litigating patent infringement cases in
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`many different courts across the United States.
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`2
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`Case No. IPR2016-01498
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`6. Mr. Downs’ experience in patent litigation matters includes serving as
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`lead 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. Mr. Downs has also represented clients in appeals before the Court of
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`Appeals for the Federal Circuit and the U.S. Supreme Court.
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`7. Mr. Downs has represented petitioner Alere Inc. and/or its affiliates in
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`many 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.
`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.
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`3
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`Filed
`January 8,
`2010
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`April 15, 2008
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`June 18, 2007
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`MAD
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`NJD
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`ILND
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`Number District
`1-10-cv-
`10027
`3-08-cv-
`01856
`1-07-cv-
`03428
`3-04-cv-
`00489
`3-04-cv-
`00378
`1-03-cv-
`11323
`1-02-cv-
`12303
`2-02-cv-
`01029
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`CASD March 9, 2004
`CASD February 20,
`2004
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`MAD
`July 15, 2003
`MAD November 26,
`2002
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`NJD
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`March 7, 2002
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`Case No. IPR2016-01498
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`Name
`Inverness Medical, et al v. Pfizer, Inc.,
`et al.
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`Number District
`2-01-cv-
`05516
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`NJD
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`Filed
`November 29,
`2001
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`
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`8. Mr. Downs is a member in good standing of the Bar of the State of
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`Massachusetts and admitted to practice before the U.S. Supreme Court, the U.S.
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`Court of Appeals for the First, Second, and Federal Circuits, the District Court for
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`the District of Massachusetts, the District Court for the Eastern District of Texas,
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`the District Court for the Northern District of Illinois, the Massachusetts Supreme
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`Judicial Court, and the International Trade Commission.
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`9. Mr. Downs has never been suspended or disbarred from practice
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`before any court or administrative body.
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`10. No application of Mr. Downs for admission to practice before any
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`court or 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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`Mr. Downs by any court or administrative body.
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`12. Mr. Downs represents that he has read will comply with the Office
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`Patent Trial Practice Guide and the Board’s Rules of Practice for Trials set forth in
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`part 42 of 37 C.F.R.
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`4
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`Case No. IPR2016-01498
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`13. Mr. Downs represents that he understand that he will be subject to the
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`U.S.P.T.O. Code of Professional Conduct set forth in 37 C.P.R. §§ 10.101 et seq.
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`and disciplinary jurisdiction under 37 C.P.R. §§ 11.19(a).
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`14. Mr. Downs is also applying for pro hac vice admission in Case
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`IPR2016-01502, in a concurrently filed motion, which involves a patent related to
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`the patent at issue in the instant proceeding. Mr. Downs has not applied for pro
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`hac vice admission in any other proceedings before the Office in the last three
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`years.
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`
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`Dated: October 25, 2016
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`Respectfully submitted,
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`
`
`/ Douglas J. Kline /
`(Reg. No. 35,574)
`Goodwin Procter LLP
`100 Northern Avenue
`Boston, MA 02110
`Tel: 617-523-1000
`Fax: 617-523-1231
`Email: dkline@goodwinlaw.com
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`Counsel for Petitioner Alere Inc.
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`5
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the foregoing document captioned
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`PETITIONER’S MOTION FOR PRO HAC VICE ADMISSION OF J.
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`ANTHONY DOWNS UNDER 37 C.F.R. § 42.10(c) was served electronically via
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`e-mail on this 25th day of October, 2016, as follows:
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`Joseph F. Jennings (Reg. No. 40,664)
`Jared C. Bunker (Reg. No. 58,474)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Tel: 949-760-0404
`Fax: 949-760-9502
`Email: BoxRembrandt-LP2@knobbe.com
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`Counsel for Rembrandt Diagnostics, LP
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`/Douglas J. Kline/
`Douglas J. Kline
`Registration No. 35,574
`GOODWIN PROCTER LLP
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`Dated: October 25, 2016
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