`Date Filed: Nov. 28, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`WOCKHARDT BIO AG,
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`Petitioner,
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`V.
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`JANSSEN ONCOLOGY, INC.,
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`Patent Owner.
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`Case IPR2016-01582
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`Patent 8,822,438
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`DECLAIMTION OF BINDU DONOVAN IN
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`SUPPORT OF MOTION TO APPEAR PRO HAC VICE
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`JANSSEN EXHIBIT 2009
`Wockhardt v. Janssen IPR2016-01582
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`
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`IPR2016-01582
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`Patent No. 8,822,438
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`I, Bindu Donovan, declare as follows:
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`1.
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`I am a partner in the New York Office of Sidley Austin LLP.
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`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.
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`I am a member in good standing of the State Bar of New York (Bar No.
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`2977981)
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`3.
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`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.
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`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.
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`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.
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`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.
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`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 IPR2016-00286 and IPR2016-01332. These
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`motions were granted (see IPR2016-00286, Paper 9 and IPR2016-01332 Paper 18).
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`
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`IPR2016—O1582
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`Patent No. 8,822,438
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`9.
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`I have been a practicing attorney for over 15 years and have been involved
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`in numerous patent cases.
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`I am presently counsel for Patent Owner Janssen
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`Oncology, Inc. in four pending patent litigationsl 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.
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`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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`I declare under penalty of perjury that the foregoing is true and correct.
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`Executed on November 2 8 , 2016 in New York, New York.
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`By:
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`Bindu Donovan
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`I 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. l:15—cv-OO130—IMK (N.D. W. Va.), BTG Int ’l Ltd., ez‘ al. v. Amerigerz
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`Pharms., Irzc., ez‘ 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-O5909—KM-JBC (D.N.J.)), and BTG Int 7 Ltd., er al. v. Glenmark
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`Pharms., Inc., USA et al., C.A. No. 2:l6—cv-03743-KM-JBC (D.N.J.).
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`
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`IPR20l6-01582
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`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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`Bindu Donovan 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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`Date: Nov. 28, 2016
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`Respectfully submitted,
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`By: /Dianne B. Elderkz'n/
`Diarme B. Elderkin
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`Registration No. 28,598
`Counsel for Patent Owner