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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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`ILLUMINA, INC.,
`Petitioner,
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`v.
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`TRUSTEES OF COLUMBIA UNIVERSITY
`IN THE CITY OF NEW YORK,
`Patent Owner.
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`IPR2020-01177
`Patent 10,435,742
`__________________________________
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`DECLARATION OF WILLIAM R. ZIMMERMAN
`IN SUPPORT OF PRO HAC VICE MOTION
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`Illumina Ex. 1137
`Illumina v. Columbia
`IPR2020-01177
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`I, William R. Zimmerman, declare and state as follows:
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`1.
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`I am a partner in the law firm of Knobbe, Martens, Olson & Bear,
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`LLP. Lead counsel for petitioner Illumina, Inc. (“Illumina”) in this inter partes
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`review proceeding is Kerry S. Taylor, who is also a partner in the law firm of
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`Knobbe, Martens, Olson & Bear, LLP. Mr. Taylor is registered to practice before
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`the United States Patent and Trademark Office and holds Registration No. 43,947.
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`With respect to this proceeding, I will work closely with Mr. Taylor.
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`2.
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`I have approximately 23 years of experience as a patent litigator and
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`have represented clients in numerous patent litigation cases in various United
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`States District Courts and the Court of Appeals for the Federal Circuit. I also have
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`experience in inter partes review proceedings, for example, IPR2013-00024,
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`IPR2013-00128, IPR2013-00266, IPR2013-00517, IPR2013-00518, IPR2014-
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`00549,
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`IPR2014-00550,
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`IPR2014-01093,
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`IPR2015-00265,
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`IPR2015-00268,
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`IPR2016-00397, IPR2016-00399, IPR2016-00549, IPR2016-00553, IPR2016-
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`00557,
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`IPR2016-00559,
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`IPR2016-01198,
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`IPR2016-01201,
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`IPR2017-02172,
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`IPR2017-02174, IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-
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`00385, IPR2018-00795, IPR2018-00797, IPR2018-01317, and IPR2019-01201.
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`3.
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`I am comfortable and experienced with technically and legally
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`complex matters, such as will be present in this proceeding. In particular, I am
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`experienced with technically and legally complex matters in the field of chemistry
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`1
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`and biotechnology. In addition to my experience with technically and legally
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`complex patent matters, I hold a Bachelor of Science degree in Chemical
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`Engineering from the University of Notre Dame. I also served as a law clerk to the
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`Honorable Alvin A. Schall, Circuit Judge of the United States Court of Appeals for
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`the Federal Circuit.
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`4.
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`I am familiar with U.S. Patent 10,435,742 and with the legal subject
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`matter, technical subject matter, and prior art discussed in Illumina’s request for
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`inter partes review of U.S. Patent 10,435,742, which forms the basis for this
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`proceeding. I also am familiar with the U.S. Patents, legal subject matter, technical
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`subject matter, and prior art at issue in related matters IPR2020-00988 (challenging
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`U.S. Patent 10,407,458), IPR2020-01065 (challenging U.S. Patent 10,407,459),
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`IPR2020-01125 (challenging U.S. Patent 10,457,984), and IPR2020-01323
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`(challenging U.S. Patent 10,428,380). In view of my legal experience, technical
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`background, and familiarity with the issues in the present matter and the related
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`matters, Illumina has requested my services in the present matter and related
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`matters IPR2020-00988, IPR2020-01065, IPR2020-01125, and IPR2020-01323.
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`Denial of my appearance in this case would create an undue burden on Petitioner.
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`5.
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`I am a member in good standing of the Bar of the State of California
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`and the Bar of the District of Columbia. I am admitted to practice before the
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`2
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`Supreme Court of the United States and before the United States Court of Appeals
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`for the Federal Circuit.
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`6.
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`I have never been suspended or disbarred from practice before any
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`court or administrative body.
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`7.
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`I have never had a court or administrative body deny my application
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`for admission to practice.
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`8.
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`I have never been sanctioned or cited for contempt by any court or
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`administrative body.
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`9.
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`I have 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 Title 37 of
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`the Code of Federal Regulations.
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`10.
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`I agree to be subject to the United States Patent and Trademark Office
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`Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq., and
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`disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
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`11.
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`In the past three (3) or more years, I have appeared pro hac vice in
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`proceedings before the United States Patent and Trademark Office in the matter of
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`Ranbaxy Laboratories Ltd. and Ranbaxy Inc. v. Vertex Pharmaceuticals, Inc.,
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`IPR2013-00024; in the matters of Intelligent Bio-Systems, Inc. v. Illumina
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`Cambridge Ltd., IPR2013-00128, IPR2013-00266, IPR2013-00517, and IPR2013-
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`00518; in the matter of Ariosa Diagnostics, Inc. v. Illumina, Inc., IPR2014-01093;
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`3
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`in the matters of Noven Pharmaceuticals, Inc. and Mylan Pharmaceuticals Inc. v.
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`Novartis AG and LTS Lohman Therapie-Systeme AG, IPR2014-00549, IPR2014-
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`00550, IPR2015-00265 and IPR2015-00268; in the matters of Lupin Limited and
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`Lupin Pharmaceuticals Inc. v. iCeutica Pty Ltd., IPR2016-00397 and IPR2016-
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`00399; in the matters of Illumina, Inc. v. Cornell Research Foundation, Inc.,
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`IPR2016-00549, IPR216-00553, IPR2016-00557, and IPR2016-00559; in the
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`matters of Apple Inc. v. Voip-Pal.com Inc., IPR2016-01198 and IPR2016-01201; in
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`the matters of Complete Genomics, Inc. v. Illumina Cambridge Ltd., IPR2017-
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`02172 and IPR2017-02174, in the matters of Illumina, Inc. v. The Trustees of
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`Columbia University in the City of New York, IPR2018-00291, IPR2018-00318,
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`IPR2018-00322, IPR2018-00385 and IPR2018-00797; in the matter of Indivior
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`Inc. v. Rhodes Pharmaceuticals L.P., IPR2018-00795; in the matter of Natera, Inc.
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`v. Illumina, Inc., IPR2018-01317, and in the matter of Illumina, Inc. v. Natera,
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`Inc., IPR2019-01201.
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`4
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`I declare that all statements made herein of my own knowledge are true and
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`that all statements made on information and belief are believed to be true, and
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`further that these statements were made with the knowledge that willful, false
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`statements and the like so made are punishable by fine or imprisonment, or both,
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`under Section 1001 of Title 18 of the United States Code.
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`Executed on August 23, 2020, at McLean, VA.
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`William R. Zimmerman
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`33222805
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`5
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