`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`
`MODERNA THERAPEUTICS, INC.,
`Petitioner,
`
`v.
`PROTIVA BIOTHERAPEUTICS, INC.,
`Patent Owner.
`
`
`___________________
`
`Case No. IPR2018-00739
`Patent No. 9,364,435
`
`___________________
`
`
`
`
`
`MODERNA THERAPEUTICS, INC.’S UNOPPOSED MOTION
`FOR PRO HAC VICE ADMISSION OF MORGAN CHU
` UNDER 37 C.F.R. § 42.10
`
`
`
`
`
`
`Mail Stop: PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2018-00739
`Patent No. 9,364,435
`
`
`I.
`
`RELIEF REQUESTED
`Pursuant to 37 C.F.R. § 42.10(c) and the Board’s “Notice of Filing Date
`
`Accorded to the Petition and Time for Filing Patent Owner’s Preliminary Response”
`
`entered February 14, 2018, Paper 5, granting authorization to file motions for pro
`
`hac vice admission under 37 C.F.R. § 42.10(c), Petitioner Moderna Therapeutics,
`
`Inc. requests that the Board admit Morgan Chu pro hac vice in this proceeding.
`
`II.
`
`STATEMENT OF FACTS
`Pursuant to 37 C.F.R. § 42.10(c), 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.
`
`37 C.F.R. § 42.10(c). The facts, supported by the Declaration of Morgan Chu in
`
`Support of Motion for Admission Pro Hac Vice (“Chu Decl.”, Ex. 1027) establish
`
`good cause to admit Morgan Chu pro hac vice in this proceeding.
`
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`- 1 -
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`Case IPR2018-00739
`Patent No. 9,364,435
`
`
`1.
`
`Lead counsel Michael R. Fleming is a registered practitioner,
`
`experienced in inter partes proceedings before the USPTO.
`
`2.
`
`Backup counsel Maclain Wells is a registered practitioner, experienced
`
`in inter partes proceedings before the USPTO.
`
`3. Morgan Chu is an experienced litigating attorney. Mr. Chu has
`
`extensive experience in patent law and has been litigating patent cases for forty (40)
`
`years. Chu Decl. ¶ 10. Mr. Chu is a member in good standing of the California State
`
`Bar, with no suspensions or disbarments from practice, nor any application for
`
`admission to practice denied, nor any sanctions or contempt citations. Chu Decl.
`
`¶¶ 1-6. Mr. Chu is also admitted to practice before the United States Supreme Court,
`
`the United States Courts of Appeals for the Federal, Second, Fifth, Ninth, and
`
`Eleventh Circuits, and the United States District Courts for the Central District of
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`California, Northern District of California, Southern District of California, Eastern
`
`District of California, United States District Court for District of Colorado, United
`
`States District Court for the Western District of Wisconsin, and United States
`
`District Court for the Eastern District of Texas. Chu Decl. ¶ 2.
`
`4. Mr. Chu has familiarity with the subject matter at issue in this
`
`proceeding and has engaged closely in issues related to the ’435 patent. Chu Decl.
`
`¶ 11.
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`- 2 -
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`Case IPR2018-00739
`Patent No. 9,364,435
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`5. Mr. Chu has read and will comply with the Office Patent Trial
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`Practice Guide and the Board’s Rules for Practice for Trials set forth in Title 42 of
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`the C.F.R., and he agrees to be subject to the USPTO Code of Professional
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`Responsibility set forth in 37 C.F.R. §§ 11.101 et seq., and to disciplinary
`
`jurisdiction under 37 C.F.R. § 11.19(a). Chu Decl. ¶¶ 7-8.
`
`6. Mr. Chu has appeared pro hac vice before the Patent Trial and Appeal
`
`Board in connection with IPR Nos. IPR2013-00004, IPR2013-00007, IPR2014-
`
`00727, IPR2014-01510, IPR2014-01511, IPR2014-01513, IPR2015-01719,
`
`IPR2015-01764, IPR2015-01767, IPR2015-01768, IPR2017-00607, IPR2017-
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`00608, IPR2017-00617, IPR2017-00619, IPR2017-00620, IPR2017-00621 and
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`IPR2017-00623. Mr. Chu is concurrently applying for pro hac vice admission in
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`IPR2018-00680. Chu Decl. ¶ 9.
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`III. ANALYSIS
`The facts contained in the Statement of Facts above, and contained in the
`
`Chu Declaration, establish that there is good cause to admit Morgan Chu pro hac
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`vice in this proceeding under 37 C.F.R. § 42.10. Lead and backup counsel are
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`registered practitioners, Mr. Chu is an experienced litigating attorney, and Mr. Chu
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`has an established familiarity with the subject matter at issue in the proceeding.
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`- 3 -
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`Case IPR2018-00739
`Patent No. 9,364,435
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`IV. NO OPPOSITION TO THIS MOTION
`Patent Owner has confirmed with Patent Owner that Patent Owner does not
`
`oppose the present motion.
`
`V. CONCLUSION
`For the foregoing reasons, Moderna respectfully requests that the Board
`
`admit Morgan Chu pro hac vice in this proceeding.
`
`
`
`Dated: May 15, 2019
`
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`Respectfully submitted,
`
`/Michael R. Fleming/
`
`Michael R. Fleming, Reg. No. 67,933
`C. Maclain Wells, Reg. No. 48,991
`IRELL & MANELLA LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067-4276
`Telephone: (310) 277-1010
`Fax: (310) 203-7199
`
`Attorney for Petitioner
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`- 4 -
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`Case IPR2018-00739
`Patent No. 9,364,435
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that, pursuant to 37 CFR § 42.6(e), a copy
`
`of the foregoing MODERNA THERAPEUTICS, INC.’S UNOPPOSED
`
`MOTION FOR PRO HAC VICE ADMISSION OF MORGAN CHU UNDER
`
`37 C.F.R. § 42.10 and Ex. 1027 were served electronically via electronic mail on
`
`counsel for the Petitioner as follows:
`
`
`WILSON SONSINI GOODRICH & ROSATI
`
`Michael T. Rosato, Reg. No. 52,182
`mrosato@wsgr.com
`
`Steven W. Parmelee, Reg. No. 31,990
`sparmelee@wsgr.com
`
`Sonja R. Gerrard, Reg. No. 72,802
`sgerrard@wsgr.com
`
`Edward R. Reines
`Edward.reines@weil.com
`
`Derek C. Walter
`Derek.Walter@weil.com
`
`
`
`By: Susan M. Langworthy
`May 15, 2019
` Susan M. Langworthy
`
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