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`Paper No. ___
`Filed: May 31, 2018
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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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`_____________________________
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`MODERNA THERAPEAUTICS, INC.,
`Petitioner,
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`v.
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`PROTIVA BIOTHERAPEAUTICS, INC.,
`Patent Owner.
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`_____________________________
`
`Case IPR2018-00739
`Patent 9,364,435
`_____________________________
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`PATENT OWNER’S MOTION FOR PRO HAC VICE ADMISSION UNDER
`37 C.F.R. § 42.10(c)
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`Case IPR2018-00739
`Patent 9,364,435
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`I.
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`STATEMENT OF THE PRECISE RELIEF REQUESTED
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`Pursuant to the Board’s March 14, 2018 Notice of Filing Date Accorded to
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`Petition and Time for Filing Patent Owner Preliminary Response (Paper No. 5) and
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`37 C.F.R. § 42.10(c), Patent Owner Protiva Biotherapeautics, Inc. (“Protiva”)
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`respectfully requests that the Board recognize Edward Reines of Weil, Gotshal &
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`Manges LLP as counsel pro hac vice in this proceeding.
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`Protiva has conferred with Petitioner Moderna Therapeutics, Inc.
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`(“Moderna”) who has stated it does not oppose this motion.
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`II. REASONS THE REQUESTED RELIEF SHOULD BE GRANTED
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`As set forth below in the Statement of Material Facts, Protiva has made all
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`of the showings required under 37 C.F.R. § 42.10(c) for recognizing Mr. Reines
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`pro hac vice. In particular, Mr. Reines is an experienced litigating attorney who
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`has represented clients in numerous patent litigation cases in various United States
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`District Courts and the Court of Appeals for the Federal Circuit, including
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`technically and legally complex matters such as will be present in this proceeding.
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`Mr. Reines has previously appeared pro hac vice in IPR proceedings related to
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`biotechnology patents, which are at issue here. See, e.g., Ariosa Diagnostics, Inc. v.
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`Illumina, Inc., IPR2014-01093, Paper No. 29 (March 16, 2015). Accordingly,
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`allowing Mr. Reines to appear pro hac vice on behalf of Protiva is appropriate in
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`this proceeding.
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`1
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`Case IPR2018-00739
`Patent 9,364,435
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`III. STATEMENT OF MATERIAL FACTS
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`1.
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`37 C.F.R. § 42.10(c) provides that “[t]he Board may recognize
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`counsel pro hac vice during a proceeding upon a showing of good cause, subject to
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`the condition that lead counsel be a registered practitioner and to any other
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`conditions as the Board may impose. For example, where the lead counsel is a
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`registered practitioner, a motion to appear pro hac vice by counsel who is not a
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`registered practitioner may be granted upon showing that counsel 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 the proceeding.”
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`2.
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`Lead counsel in this inter partes review proceeding is Michael T.
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`Rosato. Mr. Rosato is registered to practice before the United States Patent and
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`Trademark Office and holds Registration No. 52,182.
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`3.
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`As set forth in the Declaration of Edward R. Reines (Ex. 2001), Mr.
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`Reines is an experienced litigating attorney and has an established familiarity with
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`the subject matter at issue in this proceeding. Ex. 2001, ¶¶ 1-2. In particular, Mr.
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`Reines has 25 years of experience as a patent litigator and has represented clients
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`in numerous patent litigation cases in various United States District Courts and the
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`Court of Appeals for the Federal Circuit. Id. ¶1.
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`Case IPR2018-00739
`Patent 9,364,435
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`4.
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`Further, Mr. Reines is experienced with technically and legally
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`complex matters in the life sciences, including life sciences-related technologies,
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`including the following representative matters:
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`• Verinata Health, Inc. et al. v. Sequenom, Inc. et al. (N.D. Cal.
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`2012) — Lead trial counsel for Verinata Health in patent litigation
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`related to prenatal diagnostics based on cell free fetal DNA.
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`• The Trustees of Columbia University in the City of New York v.
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`Illumina, Inc. (Fed. Cir. 2014) — Appellate counsel for Illumina in
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`Federal Circuit appeals of IPR proceedings related to DNA
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`sequencing nucleotides.
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`• Promega Corp. v. Life Techs. Corp. et al. (2014) — District court
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`and appellate counsel for Life Technologies in litigation related to
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`DNA testing kits.
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`• Helicos Corp. v. Pacific Biosciences of California, Inc. (D. Del.
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`2010) — Lead trial counsel for Pacific Biosciences in patent
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`litigation related to single molecule real time DNA sequencing.
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`• Applera Corp. and Roche Molecular Sys. v. MJ Research, Inc. (D.
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`Conn. 2005) — Trial counsel for Applera in six patent litigation
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`involving foundational PCR intellectual property.
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`3
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`Case IPR2018-00739
`Patent 9,364,435
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`Id. ¶ 2. Mr. Reines has previously appeared pro hac vice in IPR proceedings
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`related to biotechnology patents, which are at issue here. See, e.g., Ariosa
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`Diagnostics, Inc. v. Illumina, Inc., IPR2014-01093, Paper No. 29 (March 16,
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`2015). Id.
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`5. Mr. Reines has read and will comply with the Office Patent Trial
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`Practice Guide and the Board’s Rules of Practice for Trials set forth in Part 42 of
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`37 C.F.R. Id. ¶ 9. Mr. Reines also agrees to be subject to the United States Patent
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`and Trademark Office Rules of Professional Conduct set forth in 37 C.F.R. §§
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`11.101 et seq., and disciplinary jurisdiction under 37 C.F.R. § 11.19(a). Id. ¶10.
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`6.
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`Finally, Mr. Reines has attested to the remaining elements of
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`Admission” in Case IPR2013-00639, Paper 7, Oct. 15, 2013. Id. ¶¶ 3-12; see
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`Paragraph 2(b) of the representative “Order – Authorizing Motion for Pro Hac Vice
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`Notice of Filing Date Accorded to Petition and Time for Filing Patent Owner
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`Preliminary Response (Paper 5) at 2. Regarding the required element in Paragraph
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`2(b)(iv) of the aforementioned representative order, Mr. Reines in his declaration at
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`¶ 6 has provided an explanation of the circumstances relating to the Federal Circuit
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`reprimand of November 5, 2014, as required under Paragraph 2(c) of the
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`aforementioned representative order. Also submitted with his declaration is the
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`explanation of circumstances that Mr. Reines submitted to the Federal Circuit.
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`Exhibit 2003.
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`Case IPR2018-00739
`Patent 9,364,435
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`IV.
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`CONCLUSION
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`For the foregoing reasons, Protiva respectfully requests that the Board admit
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`Edward R. Reines of Weil, Gotshal & Manges LLP as counsel Pro Hac Vice in this
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`proceeding.
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`
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`Date: May 31, 2018
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`
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`Respectfully submitted,
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`
`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
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`5
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`Case IPR2018-00739
`Patent 9,364,435
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`Exhibit No
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`2001
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`2002
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`2003
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`LIST OF EXHIBITS
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`Description
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`Declaration of Edward R. Reines in Support of Patent Owner’s
`Motion for Pro Hac Vice Admission
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`In re Reines, No. 14-MA004 (14-4) (Fed. Cir. Nov. 5, 2014)
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`Personal Statement of Edward R. Reines
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`6
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`Case IPR2018-00739
`Patent 9,364,435
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`CERTIFICATE OF SERVICE
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`I certify that the foregoing Patent Owner’s Motion for Pro Hac Vice
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`Admission Under 37 C.F.R. § 42.10(c) and Exhibits 2001 through 2003 were
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`served on this 31st day of May, 2018, on the Petitioner at the electronic service
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`addresses of the Petitioner as follows:
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`
`Michael Fleming
`C. Maclain Wells
`Alan Heinrich
`IRELL & MANELLA LLP
`mfleming@irell.com
`mwells@irell.com
`aheinrich@irell.com
`ModernaIPR@irell.com
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`
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`Date: May 31, 2018
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`
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`Respectfully submitted,
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`
`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
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`7
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