Case IPR2017-00047
`Patent 6,331,415
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`Filed on behalf of: Merck Sharp & Dohme Corp.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________________
`
`MERCK SHARP & DOHME CORP.,
`Petitioner
`
`v.
`
`GENENTECH, INC. AND CITY OF HOPE,
`Patent Owners
`________________________
`
`Case IPR 2017-00047
`Patent 6,331,415
`
`________________________
`
`PETITIONER MERCK SHARP & DOHME CORP.’S MOTION FOR PRO
`HAC VICE ADMISSION OF KATHERINE A. HELM
`
`
`Patent 6,331,415
`
`Filed on behalf of: Merck Sharp & Dohme Corp.
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________________
`
`MERCK SHARP & DOHME CORP.,
`Petitioner
`
`v.
`
`GENENTECH, INC. AND CITY OF HOPE,
`Patent Owners
`________________________
`
`Case IPR 2017-00047
`Patent 6,331,415
`
`________________________
`
`PETITIONER MERCK SHARP & DOHME CORP.’S MOTION FOR PRO
`HAC VICE ADMISSION OF KATHERINE A. HELM
`
`
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`Case IPR2017-00047
`Patent 6,331,415
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`I.
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`RELIEF REQUESTED
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`Pursuant to the Board’s October 19, 2016 Notice of Filing Date Accorded to
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`Petition and Time for Filing Patent Owner Preliminary Response authorizing
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`motions for pro hac vice admission (Paper No. 4, at 2), and 37 C.F.R. § 42.10(c),
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`Petitioner Merck Sharp & Dohme Corp. (“Merck”) respectfully requests that the
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`Patent Trial and Appeal Board (“Board”) admit Katherine A. Helm of Simpson
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`Thacher & Bartlett LLP to appear pro hac vice in the above-captioned proceeding.
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`II.
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`REASONS THE REQUESTED RELIEF SHOULD BE GRANTED
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`In accordance with 37 C.F.R. § 42.10(c), the Board may recognize counsel
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`pro hac vice during a proceeding upon a showing of good cause, subject to the
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`condition that lead counsel be a registered practitioner and to any other conditions
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`as the Board may impose. Notably, section 42.10(c) states as follows:
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`[W]here 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 also required that a motion for pro hac vice be filed in
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`accordance with the Order – Authorizing Motion for Pro Hac Vice Admission in
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`Unified Patents, Inc. v. Parallel Iron, LLC, Case IPR2013-00639 (“Representative
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`Order”). The Representative Order specifies that a motion for pro hac vice
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`admission must “[c]ontain a statement of facts showing there is good cause for the
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`Case IPR2017-00047
`Patent 6,331,415
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`Board to recognize counsel pro hac vice during the proceeding,” and “[b]e
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`accompanied by an affidavit or declaration of the individual seeking to appear,”
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`setting forth certain facts specified in the Representative Order.
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`The statement of facts set forth herein establish good cause for the Board to
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`recognize Katherine A. Helm pro hac vice in this proceeding. In particular, Dr.
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`Helm is an experienced litigating attorney and has been involved in numerous
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`patent litigations in various United States District Courts and Courts of Appeals.
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`Dr. Helm has also appeared as counsel in several previous litigations challenging
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`the U.S. Patent No. 6,331,415 (“the ’415 Patent”), which is at issue in this
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`proceeding, in the United States District Court for the Central District of California
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`and the United States District Court for the District of Delaware. As a result, Dr.
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`Helm has established an in-depth familiarity with the subject matter at issue in this
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`proceeding, including the patent and file history, the technology, and the prior art.
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`In light of the facts presented in detail below, as well as the accompanying
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`Declaration of Katherine A. Helm in Support of this Motion for Admission Pro
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`Hac Vice (“Helm Decl.”) (Merck Exhibit 1059), good cause exists for the pro hac
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`vice admission of Dr. Helm in this proceeding under 37 C.F.R. § 42.10(c).
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`Case IPR2017-00047
`Patent 6,331,415
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`III.
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`STATEMENT OF FACTS SHOWING GOOD CAUSE FOR THE
`BOARD TO RECOGNIZE DR. HELM PRO HAC VICEIN THIS
`PROCEEDING
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`The following statement of facts establishes good cause for the Board
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`to recognize Dr. Helm pro hac vice in this proceeding.
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`As an initial matter, lead counsel, Raymond N. Nimrod, is registered to
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`practice before the United States Patent and Trademark Office (“USPTO”) and
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`holds Registration No. 31,987. Backup counsel, Matthew A. Traupman, is also a
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`registered practitioner and holds Registration No. 50,832.
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`Counsel, Katherine A. Helm, is an experienced litigator and has an
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`established familiarity with the subject matter at issue in this proceeding. As set
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`forth in Merck Exhibit 1059, Dr. Helm is a senior associate and member of the
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`Litigation Department and Intellectual Property Group in the New York Office of
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`Simpson Thacher & Bartlett LLP. Helm Decl. ¶ 2. Dr. Helm is an experienced
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`litigating attorney and has an established familiarity with the subject matter at issue
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`in this proceeding. In particular, Dr. Helm has over eight years of experience as a
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`licensed patent litigator, including numerous cases in the pharmaceutical and
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`biotechnology industries. Id. She has appeared as counsel in patent litigations
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`before various United States District Courts and United States Courts of Appeals,
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`including the United States Court of Appeals for the Federal Circuit. Id. She also
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`spent five years prior to and during law school working as a technical advisor in
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`Case IPR2017-00047
`Patent 6,331,415
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`the Intellectual Property Group of a large New York law firm, where she focused
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`on pharmaceutical and biotechnology patent prosecution and a variety of contested
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`proceedings in the USPTO and the European Patent Office. Id.
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`Dr. Helm has served as counsel for Human Genome Sciences, Inc. (“HGS”)
`
`and for Eli Lilly and Company (“Eli Lilly”) in prior litigations involving the ’415
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`patent in Human Genome Sciences Inc. v. Genentech, Inc. et al., Case No. 2:11-cv-
`
`06519 (C.D. Cal.); Human Genome Sciences Inc. v. Genentech, Inc., Case No.
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`2:11-cv-06546 (C.D. Cal.); Human Genome Sciences Inc. v. Genentech, Inc. et al.,
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`Case No. 11-082-LPS (D. Del.); Human Genome Sciences Inc. v. Genentech, Inc.,
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`Case No. 11-156-LPS (D. Del.); and Eli Lilly & Co. et al. v. Genentech, Inc., et al.,
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`Case No. 13-cv-07248 (C.D. Cal.). Helm Decl. ¶ 10. Merck has also moved for
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`the pro hac vice admission of Dr. Helm on its behalf in connection with an inter
`
`partes review of the ’415 patent currently pending before the Board entitled Merck
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`Sharp & Dohme Corp. v. Genentech, Inc. and City of Hope, Case IPR2016-01373
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`(“the ’1373 Petition”). Id. ¶ 13; see also ’1373 Petition, Paper 4 (Petitioner Merck
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`Sharp & Dohme Corp.’s Motion for Pro Hac Vice Admission of Katherine A.
`
`Helm) (July 28, 2016).
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`Dr. Helm has also served as counsel in related district court patent litigation
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`matters concerning U.S. Patent No. 7,923,221 (“the ’221 patent”) which was filed
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`as a continuation of the application that issued as the challenged ’415 patent and
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`Case IPR2017-00047
`Patent 6,331,415
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`involves the same recombinant antibody technology claimed by the ’415 patent.
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`Helm Decl. ¶ 11 (citing Human Genome Sciences Inc. v. Genentech, Inc. et al.,
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`Case No. 11-328-LPS (D. Del.); Human Genome Sciences Inc. v. Genentech, Inc.
`
`et al., Case No. 2:11-cv-6594 (C.D. Cal.); Genentech, Inc. et al. v. Glaxo Group
`
`Limited et al., Case No. 2:11-cv-3065 (C.D. Cal.). In addition, Dr. Helm presently
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`serves as counsel for Merck in a patent litigation matter also relating to the ’221
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`patent, entitled Merck Sharp & Dohme Corp. v. Genentech, Inc. and City of Hope,
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`Case No. 16-cv-04992-GW (C.D. Cal.) (“Merck District Court Litigation”). Id. ¶
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`12.
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`Given Dr. Helm’s prior experience as counsel for HGS and Eli Lilly, and her
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`current role as counsel for Merck in the Merck District Court Litigation and the
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`’1373 Petition, Dr. Helm has carefully reviewed, developed an extensive
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`familiarity with, and acquired a substantial understanding of the ’415 patent and
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`file history, the legal subject matter, the factual and technical subject matter, and
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`the prior art and expert testimony presented in Merck’s request for inter partes
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`review of the ’415 patent, which forms the basis of this proceeding. Id. ¶ 14.
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`Dr. Helm has 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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`Id. ¶ 7. Dr. Helm also agrees to be subject to the USPTO Code of Professional
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`Case IPR2017-00047
`Patent 6,331,415
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`Responsibility set forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction
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`under 37 C.F.R. § 11.19(a). Id. ¶ 8.
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`Finally, Dr. Helm has attested to the remaining elements of paragraph 2(b)
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`of the Representative Order. Helm Decl. ¶¶ 1, 3-6, 9. Namely, Dr. Helm is a
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`member in good standing of the Bar of New York, the Bar of Massachusetts, and
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`the District of Columbia Bar, and all courts before which she is admitted to
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`practice, including the United States Court of Appeals for the Federal Circuit, the
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`United States Court of Appeals for the Third Circuit, and the United States District
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`Courts for the Southern and Eastern Districts of New York. Id. ¶¶ 1, 3. Dr. Helm
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`has never been suspended, disbarred or sanctioned by a court or administrative
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`body. Id. ¶¶ 4, 6. She has never had a court or administrative body deny her
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`application for admission to practice. Id. ¶ 5. She has never been sanctioned or
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`cited for contempt by any court or administrative body. Id. ¶ 6. As discussed
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`above, Merck currently has a motion pending for Dr. Helm’s admission pro hac
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`vice in connection with the ’1373 Petition, however as of the filing date of this
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`motion she has not appeared pro hac vice in any proceedings before the Board in
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`the past three years. Id. ¶ 9.
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`IV. CONCLUSION
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`In view of the foregoing, and having satisfied the requirements of 37 C.F.R.
`
`§ 42.10(c), Merck respectfully moves for an Order allowing Katherine A. Helm of
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`Case IPR2017-00047
`Patent 6,331,415
`
`Simpson Thacher & Bartlett LLP to appear pro hac vice on behalf of Merck in the
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`above-captioned case.
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`Dated: November 1, 2016
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`Respectfully submitted,
`
`By: s/Matthew A. Traupman
`Raymond N. Nimrod (Reg. No. 31,987)
`Matthew A. Traupman (Reg. No. 50,832)
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`Tel: (212) 849-7000
`Fax: (212) 849-7100
`
`Attorneys for Petitioner Merck Sharp &
`Dohme Corp.
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`Case IPR2017-00047
`Patent 6,331,415
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`CERTIFICATE OF SERVICE
`I hereby certify that true and correct copies of the foregoing Motion for Pro
`Hac Vice Admission of Katherine A. Helm and Exhibit 1059 were served on
`November 1, 2016, via FEDEX PRIORITY OVERNIGHT service to counsel for
`Patent Owners at the following address:
`
`Jeffrey P. Kushan, Esq.
`Sidley Austin LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`
`and
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`Sean Johnston, Esq.
`Genentech, Inc.
`1 DNA Way
`South San Francisco, CA 94080
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`Dated: November 1, 2016
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`Respectfully submitted,
`
` s/Matthew A. Traupman
`Raymond N. Nimrod (31,987)
`Matthew A. Traupman (50,832)
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`Tel: (212) 849-7000
`Fax: (212) 849-7100
`
`9
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