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Case No. IPR2016-01693
`Patent Owner’s Motion For Admission Pro Hac Vice Of Daralyn J. Durie
`
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`Filed on behalf of Patent Owner Genentech, Inc. by:
`
`David L. Cavanaugh
`Reg. No. 36,476
`Owen K. Allen
`Reg. No. 71,118
`Robert J. Gunther, Jr.
`Pro Hac Vice Pending
`Wilmer Cutler Pickering
`Hale and Dorr LLP
`1875 Pennsylvania Ave., NW
`Washington, DC 20006
`
`Adam R. Brausa
`Reg. No. 60,287
`Daralyn J. Durie
`Pro Hac Vice Pending
`Durie Tangri LLP
`217 Leidesdorff Street
`San Francisco, CA 94111
`
`
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________________________
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`GENENTECH, INC.,
`Patent Owner.
`____________________________________________
`
`Cases IPR2016-01693
`Patent 6,407,213
`____________________________________________
`
`PATENT OWNER’S UNOPPOSED MOTION FOR ADMISSION PRO HAC
`VICE OF DARALYN J. DURIE UNDER 37 C.F.R. § 42.10(C)
`
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`1
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`I.
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`Case No. IPR2016-01693
`Patent Owner’s Motion For Admission Pro Hac Vice Of Daralyn J. Durie
`
`RELIEF REQUESTED
`Pursuant to 37 C.F.R. § 42.10(c), Patent Owner Genentech, Inc.
`
`(“Genentech”), by and through its attorneys, respectfully requests that the Board
`
`admit Daralyn J. Durie pro hac vice in this proceeding, IPR2016-01693.
`
`Petitioner’s counsel has indicated that it does not oppose this motion.
`
`II. GOVERNING LAW, RULES, AND PRECEDENT
`Section 42.10(c) of 37 C.F.R. provides as follows:
`
`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.
`
`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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`proceeding,” and “[b]e accompanied by an affidavit or declaration of the individual
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`Case No. IPR2016-01693
`Patent Owner’s Motion For Admission Pro Hac Vice Of Daralyn J. Durie
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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 2033 is the Declaration of Daralyn J. Durie
`
`in Support of this Motion for Admission Pro Hac Vice (“Durie Decl.”).
`
`III. STATEMENT OF FACTS
`1.
`Patent Owners’ lead counsel, David L. Cavanaugh, is a registered
`
`practitioner (Reg. No. 36,476).
`
`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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`Durie by any court or administrative body. (Id. ¶ 7).
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`Case No. IPR2016-01693
`Patent Owner’s Motion For Admission Pro Hac Vice Of Daralyn J. Durie
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`8. Ms. Durie has read and agrees to comply with the Office Patent Trial
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`
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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).
`
`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 (pro hac vice granted); Genzyme Corporation v. Genentech,
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`Inc. and City of Hope, IPR2016-00460 (pro hac vice motion filed) (joined with
`
`IPR2015-01624); Genzyme Corporation v. Genentech, Inc. and City of Hope,
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`IPR2016-00383 (pro hac vice motion filed) (not instituted); Merck Sharp &
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`Dohme Corp. v. Genentech, Inc. and City of Hope, IPR2016-01373 (pro hac vice
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`motion granted); Mylan Pharmaceuticals Inc. v. Genentech, Inc. and City of Hope,
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`IPR2016-00710 (pro hac vice granted); Merck Sharp & Dohme Corp. v.
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`Genentech, Inc. and City of Hope, IPR2017-00047 (pro hac vice to be filed); and
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`Mylan Pharmaceuticals, Inc. v. Genentech, Inc., IPR2016-01694 (pro hac vice
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`pending). (Id. ¶ 10).
`
`11. Ms. Durie has an established familiarity with the subject matter at
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`Case No. IPR2016-01693
`Patent Owner’s Motion For Admission Pro Hac Vice Of Daralyn J. Durie
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`issue in this proceeding. She has handled patent cases relating to antibodies for
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`more than twelve years. (Id. ¶ 11). In many of these cases involving antibodies,
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`she has represented Genentech. During these litigations, she has worked closely
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`with Adam R. Brausa, counsel for Genentech in 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 ’213 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
`The facts outlined above in the Statement of Facts, supported by the
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`Declaration of Daralyn J. Durie (Ex. 2033), 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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`Owner’s 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
`
`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 cases related to
`
`antibodies. As a result, Ms. Durie is familiar with the subject matter at issue in this
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`Case No. IPR2016-01693
`Patent Owner’s Motion For Admission Pro Hac Vice Of Daralyn J. Durie
`
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`proceeding. Furthermore, Ms. Durie has carefully reviewed the ’213 patent at
`
`issue in this proceeding, its prosecution history, the prior art, the grounds advanced
`
`by the Petitioner and other aspects of the record in this proceeding, and is familiar
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`with these matters. Based on her experience and knowledge, there is good cause to
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`admit Ms. Durie pro hac vice in this proceeding.
`
`V. CONCLUSION
`In light of the foregoing, Patent Owner respectfully requests that the Board
`
`admit Daralyn J. Durie pro hac vice in this proceeding.
`
`
`
`Respectfully submitted,
`
`/David L. Cavanaugh/
`David L. Cavanaugh, Reg. No. 36,476
`WILMER CUTLER PICKERING
`HALE AND DORR LLP
`1875 Pennsylvania Avenue, N.W.
`Washington, D.C. 20006
`Tel.: 202-663-6000
`Fax: 202-663-6363
`
`Attorney for Patent Owner
`Genentech, Inc.
`
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`5
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`By:
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`Dated: December 29, 2016
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`Case No. IPR2016-01693
`Patent Owner’s Motion For Admission Pro Hac Vice Of Daralyn J. Durie
`
`PATENT OWNER’S EXHIBIT LIST
`IPR2016-01693
`Exhibit Name
`
`Genentech, Inc. Laboratory Notebook No. 10098 (Leonard
`Presta)
`PROTECTIVE ORDER MATERIAL
`Genentech, Inc. Laboratory Notebook No. 10823 (Leonard
`Presta)
`PROTECTIVE ORDER MATERIAL
`Genentech, Inc. Laboratory Notebook No. 11268 (Paul Carter)
`PROTECTIVE ORDER MATERIAL
`Genentech, Inc. Laboratory Notebook No. 11643 (Paul Carter)
`PROTECTIVE ORDER MATERIAL
`Genentech, Inc. Laboratory Notebook No. 10840 (John Brady)
`PROTECTIVE ORDER MATERIAL
`Genentech, Inc. Laboratory Notebook No. 11162 (John Brady)
`PROTECTIVE ORDER MATERIAL
`Excerpts from Genentech, Inc. Laboratory Notebook No. 11008
`(Ann Rowland)
`PROTECTIVE ORDER MATERIAL
`Excerpts from Genentech, Inc. Laboratory Notebook No. 11297
`(Tim Hotaling)
`PROTECTIVE ORDER MATERIAL
`Excerpts from Genentech, Inc. Laboratory Notebook No. 11568
`(Monique Carver)
`PROTECTIVE ORDER MATERIAL
`Genentech, Inc. Interoffice Memorandum from Paul Carter to
`Leonard Presta and Dennis Henner
`PROTECTIVE ORDER MATERIAL
`Genentech, Inc. Interoffice Memorandum from Paul Carter to
`Leonard Presta
`PROTECTIVE ORDER MATERIAL
`Genentech, Inc. Synthetic DNA Requests
`PROTECTIVE ORDER MATERIAL
`Genentech, Inc. Synthetic DNA Requests
`PROTECTIVE ORDER MATERIAL
`
`6
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`Patent Owner’s
`Exhibit Number
`2001
`
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`2013
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`Case No. IPR2016-01693
`Patent Owner’s Motion For Admission Pro Hac Vice Of Daralyn J. Durie
`
`Exhibit Name
`
`Genentech, Inc. Protein Engineering of 4D5 Status Report
`PROTECTIVE ORDER MATERIAL
`Genentech, Inc. Interoffice Memorandum re: RCC Minutes and
`Recommendations
`PROTECTIVE ORDER MATERIAL
`Declaration of Irene Loeffler
`Modified Default Standing Protective Order – Redline
`Declaration of John Ridgway Brady
`PROTECTIVE ORDER MATERIAL
`Paul Carter, et al., Humanization of the Anti-p185 Antibody for
`Human Cancer Therapy, 89 PROC. NATL. ACAD. SCI. 4285-
`4289 (1992)
`Leonard Presta, et al., Humanization of an Anti-Vascular
`Endothelial Growth Factor Monoclonal Antibody for the
`Therapy of Solid Tumors and Other Disorders, 57 CANCER
`RESEARCH 4593-4599 (1997)
`Marianne Bruggerman, et al., The Immunogenicity of Chimeric
`Antibodies, 170 J. EXP. MED. 2153-2157 (1989)
`Jatinderpal Kalsi, et al., Structure-function Analysis and the
`Molecular Origins of Anti-DNA Antibodies in Systemic Lupus
`Erythematosus, EXPERT REVIEWS IN MOLECULAR MEDICINE 1-
`28 (1999)
`Scott Gorman, et al., Reshaping a Therapeutic CD4 Antibody,
`88 PROC. NATL. ACAD. SCI. 4181-4185 (1991)
`John Isaacs, et al., Humanised Monoclonal Antibody Therapy
`for Rheumatoid Arthritis, 340 THE LANCET 748-752 (1992)
`Elvin Kabat, et al., Sequences of Proteins of Immunological
`Interest 1-23 (4th ed. 1987)
`Anna Tramontano, et al., Framework Residue 71 Is a Major
`Determinant of the Position and Conformation of the Second
`Hypervariable Region in the VH Domains of Immunoglobulins,
`215 J. MOL. BIOL. 175-182 (1990)
`H.M. SHEPARD, et al., Herceptin, in Therapeutic Antibodies.
`HANDBOOK OF EXPERIMENTAL PHARMACOLOGY 183-219 (Y.
`Chernajovsky & A. Nissim, eds. 2008)
`Excerpt from Roche Finance Report 2015
`
`7
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`
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`Patent Owner’s
`Exhibit Number
`2014
`
`
`2015
`
`2016
`2017
`2018
`
`2019
`
`2020
`
`2021
`
`2022
`
`2023
`
`2024
`
`2025
`
`2026
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`2027
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`2028
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`Case No. IPR2016-01693
`Patent Owner’s Motion For Admission Pro Hac Vice Of Daralyn J. Durie
`
`Exhibit Name
`
`Declaration of Dr. Leonard G. Presta
`PROTECTIVE ORDER MATERIAL
`Declaration of Dr. Paul J. Carter
`PROTECTIVE ORDER MATERIAL
`Modified Default Standing Protective Order and Patent
`Owner’s Certification of Agreement to Terms
`Declaration of Robert J. Gunther, Jr. in Support of Motion for
`Admission Pro Hac Vice
`Declaration of Daralyn J. Durie in Support of Motion for
`Admission Pro Hac Vice
`
`
`
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`Patent Owner’s
`Exhibit Number
`2029
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`2030
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`2031
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`2032
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`2033
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`Case No. IPR2016-01693
`Patent Owner’s Motion For Admission Pro Hac Vice Of Daralyn J. Durie
`
`CERTIFICATE OF SERVICE
`I hereby certify that, on December 29, 2016, I caused a true and correct copy
`
`of the following materials:
`
` Patent Owners’ Unopposed Motion for Pro Hac Vice Admission of Daralyn
`J. Durie
` Exhibit 2033
` Patent Owner’s Exhibit List
`
`
`to be served via electronic mail on the following attorneys of record:
`
`Jeffrey W. Guise
`WILSON SONSINI GOODRICH & ROSATI
`650 Page Mill Road
`Palo Alto, CA 94304
`jguise@wsgr.com
`
`Deanne M. Mazzochi
`RAKOCZY MOLINO MAZZOCHI SIWIK LLP
`6 West Hubbard Street, Suite 500
`Chicago, IL 60654
`dmazzochi@rmmslegal.com
`
`
`
`/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
`
`
`9
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`ActiveUS 160132136v.1

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