`Date Filed: Nov. 28, 2016
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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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`WOCKHARDT BIO AG,
`Petitioner,
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`v.
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`JANSSEN ONCOLOGY, INC.,
`Patent Owner.
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`________________
`Case IPR2016-01582
`Patent 8,822,438
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`DECLARATION OF DAVID T. PRITIKIN IN
`SUPPORT OF MOTION TO APPEAR PRO HAC VICE
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`JANSSEN EXHIBIT 2008
`Wockhardt v. Janssen IPR2016-01582
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`IPR2016-01582
`Patent No. 8,822,438
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`I, David T. Pritikin, declare as follows:
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`1. I am a partner in the Chicago Office of Sidley Austin LLP. I have personal
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`knowledge of the facts set forth in this declaration and, if called as a witness, could
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`and would testify competently under oath.
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`2. I am a member in good standing of the State Bar of Illinois (Bar No.
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`2256339).
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`3. I have never been suspended or disbarred from practice before any court or
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`administrative body.
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`4. None of my applications for admission to practice before any court or
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`administrative body have ever been denied.
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`5. I have not been sanctioned nor have I had a contempt citation imposed on
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`me by any court or administrative body.
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`6. I have read and will comply with the Office Patent Trial Practice Guide and
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`the Board’s Rules of Practice for Trial set forth in part 42 of 37 C.F.R.
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`7. I acknowledge and agree that I 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).
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`8. I have applied to appear pro hac vice before the Patent Trial and Appeal
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`Board twice in the last three years in IPR2016-00268 and IPR2016-01332. These
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`IPR2016-01582
`Patent No. 8,822,438
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`motions were granted. (See IPR2016-00286, Paper 10 and IPR2016-01332 Paper
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`17).
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`9. I have been a practicing attorney for over 40 years and have been involved
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`in numerous patent cases. I am presently lead counsel for Patent Owner Janssen
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`Oncology, Inc. in four pending patent litigations1 involving the patent under review
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`in this proceeding, U.S. Patent No. 8,822,438 (the “’438 patent”). As part of these
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`litigations, I have studied and analyzed the ’438 patent and have become very
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`familiar with its subject matter. I have also gained familiarity with certain prior art
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`(including prior art asserted in this IPR proceeding), conception and reduction to
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`practice of the inventions claimed in the ’438 patent, and other relevant issues,
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`including claim construction of various claim terms.
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`1 BTG Int’l Ltd., et al. v. Actavis Labs. FL, Inc., et al., C.A. No. 2:15-cv-
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`05909-KM-JBC (D.N.J.), Janssen Biotech, Inc., et al. v. Mylan Pharm. Inc., et al.,
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`C.A. No. 1:15-cv-00130-IMK (N.D. W. Va.), BTG Int’l Ltd., et al. v. Amerigen
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`Pharms., Inc., et al., C.A. No. 2:16-cv-02449-KM-JBC (D.N.J.) (consolidated with
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`C.A. No. 2:15-cv-05909-KM-JBC (D.N.J.)), and BTG Int’l Ltd., et al. v. Glenmark
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`Pharms., Inc., USA et al., C.A. No. 2:16-cv-03743-KM-JBC (D.N.J.).
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`3
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`IPR2016-015 82
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`Patent No. 8,822,438
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`I declare under penalty of perjury that the foregoing is true and correct.
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`Executed on November 2? , 2016 in Chicago, Illinois.
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`By:
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`David T. Pritikin
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`IPR2016-01582
`Patent No. 8,822,438
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Declaration of
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`David T. Pritikin in Support of Motion to Appear Pro Hac Vice was served on
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`counsel of record on November 28, 2016 by filing this document through the End-
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`to-End System, as well as delivering a copy via electronic mail to counsel of record
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`for the Petitioner at the following addresses:
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`Dennies Varughese - dvarughe-PTAB@skgf.com
`Deborah A. Sterling - dsterlin-PTAB@skgf.com
`Christopher M. Gallo - cgallo-PTAB@skgf.com
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`Respectfully submitted,
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`By: /Dianne B. Elderkin/
`Dianne B. Elderkin
`Registration No. 28,598
`Counsel for Patent Owner
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`5
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`Date: Nov. 28, 2016