`Declaration of Vinita Ferrera
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Foundation Medicine,Inc.
`Petitioner
`
`V.
`
`Caris MPI, Inc.
`Patent Owner
`
`Case IPR2019-00170
`U.S. Patent No. 9,372,193
`
`DECLARATIONOF VINITA FERRERA IN SUPPORT OF
`MOTION FOR ADMISSION PRO HAC VICE
`
`FMI v. Caris MPI
`FMI v. Caris MPI
`Exhibit 1116
`Exhibit 1116
`IPR2019-00170
`IPR2019-00170
`
`
`
`IPR2019-00170
`Declaration of Vinita Ferrera
`
`I, Vinita Ferrera, declare as follows:
`
`1.
`
`I was admitted to the Massachusetts Bar in February 1996 and the
`
`New York Barin April 1996.
`
`I have been practicing law for over 20 years. My
`
`practice has focused onpatentlitigation disputes in a variety ofjurisdictions, with a
`
`particular emphasis on patentlitigation in the life sciences.
`
`2.
`
`I have been counsel of record in over 40 patentlitigations and
`
`participated in all aspectsofthe litigation, includingtrial.
`
`3.
`
`I am a memberin goodstanding of the Bars of Massachusetts and
`
`New York and am admitted to practice before the U.S. District Court for the
`
`District of Massachusetts and the U.S. District Court for the District of Colorado.
`
`I
`
`am admitted to practice before the U.S. Courts of Appeal for the Federal Circuit,
`
`the First Circuit, and the Second Circuit.
`
`4,
`
`My Massachusetts Bar membership numberis 631190. My New
`
`York Bar membership numberis 2750727.
`
`5.
`
`I have never been suspendedor disbarred from practice before any
`
`court or administrative body.
`
`6.
`
`I have never had a court or administrative body deny my application
`
`for admission to practice.
`
`7.
`
`I have neverhad any sanctions or contemptcitations imposed by any
`
`court or administrative body.
`
`
`
`IPR2019-00170
`Declaration of Vinita Ferrera
`
`8.
`
`I have read and will comply with the Patent Office Trial Practice
`
`Guide and the Board’s Rulesfor Practice for Trials, as set forth in 37 C.F.R. Part
`
`42.
`
`9.
`
`I agree to be subject to the United States Patent and Trademark Office
`
`Rules of Professional Conductset forth in 37 C.F.R. §§ 11.101 et seg. and
`
`disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
`
`10.
`
`Ihave not appeared pro hac vice before the Patent Trial and Appeal
`
`Board.
`
`11.
`
`In addition to this matter, I have represented Petitioner Foundation
`
`Medicine,Inc. (“FMI”) in other patent matters, including Caris MPI, Inc.v.
`
`Foundation Medicine, Inc., No. 1:17-cv-12194-MLW (D. Mass.), in which U.S.
`
`Patent No. 9,372,193 has been asserted against FMI.
`
`I have also advised FMIin a
`
`numberof other matters, including other litigations and various confidential
`
`matters.
`
`12.
`
`Iam familiar with the subject matter of U.S. Patent No. 9,372,193. As
`
`a result of my work with FMIin the case listed in the previous paragraph and my
`
`work on other confidential matters, I am also familiar with molecularprofiling and
`
`diagnostics technology. In addition, I have represented a numberoflife sciences,
`
`pharmaceutical, biotechnology, and diagnostics companies—including Gilead
`
`Sciences, Inc.; AbbVie, Inc.; GlaxoSmithKline; Novartis Corporation; Precision
`
`-2-
`
`
`
`IPR2019-00170
`Declaration of Vinita Ferrera
`
`Biosciences, Inc.; Palomar Medical Technologies, Inc.; Proctor & Gamble Co.;
`
`Millennium Pharmaceuticals, Inc.; Shionogi, Inc.; and other companiesin
`
`confidential representations—in many patent litigation matters, including before
`
`federal district courts. The technology involved in some of these matters included
`
`gene targeting technology, as well as methods of diagnosing and treating cancer
`
`and symptomsof cancer.
`
`13.
`
`Thereby declare that all statements made herein of my own knowledge
`
`are true andthatall statements made on information and belief are believed to be
`
`true; and further that these statements are made with the knowledgethat willful
`
`false statements and the like are punishable by fine, imprisonment, or both under
`
`Section 1001 of Title 18 of the United States Code.
`
`Dated: September 13, 2019
`
`Respectfully submitted,
`
`Vinita Ferrera
`Wilmer Cutler Pickering
`Hale and Dorr LLP
`60 State Street
`Boston, MA 02109
`(617) 526-6000
`
`
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