Filed on behalf of Illumina, Inc.
`By: Kerry S. Taylor
`Nathanael R. Luman
`Michael L. Fuller
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Fax: (858) 707-4001
`Tel.: (858) 707-4000
`E-mail: BoxIllumina@knobbe.com
`
`
`
`
`Filed August 28, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`ILLUMINA, INC.,
`Petitioner,
`
`v.
`
`TRUSTEES OF COLUMBIA UNIVERSITY
`IN THE CITY OF NEW YORK,
`Patent Owner.
`__________________________________
`
`IPR2020-01177
`Patent 10,435,742
`__________________________________
`
`UNOPPOSED MOTION FOR WILLIAM R. ZIMMERMAN TO APPEAR
`PRO HAC VICE ON BEHALF OF PETITIONER ILLUMINA, INC.
`
`
`
`
`
`By: Kerry S. Taylor
`Nathanael R. Luman
`Michael L. Fuller
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Fax: (858) 707-4001
`Tel.: (858) 707-4000
`E-mail: BoxIllumina@knobbe.com
`
`
`
`
`Filed August 28, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`ILLUMINA, INC.,
`Petitioner,
`
`v.
`
`TRUSTEES OF COLUMBIA UNIVERSITY
`IN THE CITY OF NEW YORK,
`Patent Owner.
`__________________________________
`
`IPR2020-01177
`Patent 10,435,742
`__________________________________
`
`UNOPPOSED MOTION FOR WILLIAM R. ZIMMERMAN TO APPEAR
`PRO HAC VICE ON BEHALF OF PETITIONER ILLUMINA, INC.
`
`
`
`
`
`
`Illumina v. Columbia
`IPR2020-01177, Patent 10,435,742
`
`I. STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`Pursuant to the Board’s July 16, 2020 Notice of Filing Date Accorded (Paper
`
`3) and 37 C.F.R. §§ 42.10(c) and 42.22, Petitioner Illumina, Inc. (“Illumina”) hereby
`
`moves for an Order allowing William R. Zimmerman of Knobbe, Martens, Olson &
`
`Bear, LLP to appear pro hac vice on behalf of Illumina in the above-captioned case.
`
`Petitioner Illumina has conferred with counsel for Patent Owner The Trustees of
`
`Columbia University in the City of New York (“Columbia”), and Columbia does not
`
`oppose Illumina’s motion to allow Mr. Zimmerman to appear pro hac vice in this
`
`matter.
`
`II. LIST OF EXHIBITS RELIED UPON FOR THIS MOTION
`
`Illumina Exhibit 1137 - Declaration of William R. Zimmerman in Support of
`
`Motion to Appear Pro Hac Vice on Behalf of Petitioner Illumina, Inc.
`
`III. REASONS THE REQUESTED RELIEF SHOULD BE GRANTED
`
`As set forth below in the Statement of Material Facts, Illumina has made all
`
`of the showings required under 37 C.F.R. § 42.10(c) for recognizing Mr.
`
`Zimmerman pro hac vice. In particular, Mr. Zimmerman is an experienced litigation
`
`attorney who has represented clients in numerous patent litigation cases in various
`
`United States District Courts and the Court of Appeals for the Federal Circuit,
`
`including technically and legally complex matters such as will be present in this
`
`-1-
`
`
`
`Illumina v. Columbia
`IPR2020-01177, Patent 10,435,742
`
`proceeding. Accordingly, allowing Mr. Zimmerman to appear pro hac vice on
`
`behalf of Illumina is appropriate in this proceeding.
`
`IV. STATEMENT OF MATERIAL FACTS
`
`1.
`
`37 C.F.R. § 42.10(c) provides that “[t]he 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.”
`
`2.
`
`Lead counsel for Illumina in this inter partes review proceeding is
`
`Kerry S. Taylor. Mr. Taylor is registered to practice before the United States Patent
`
`and Trademark Office and holds Registration No. 43,947.
`
`3.
`
`As set forth in Illumina Exhibit 1137 (the “Zimmerman Declaration”),
`
`Mr. Zimmerman is an experienced litigating attorney and has an established
`
`familiarity with the subject matter at issue in this proceeding. Zimmerman Decl. ¶ 4.
`
`In particular, Mr. Zimmerman has approximately 23 years of experience as a patent
`
`litigator and has represented clients in numerous patent litigation cases in various
`
`United States District Courts and the Court of Appeals for the Federal Circuit. Id.
`
`-2-
`
`
`
`Illumina v. Columbia
`IPR2020-01177, Patent 10,435,742
`
`¶ 2. In addition, Mr. Zimmerman has experience in inter partes review proceedings,
`
`for example, IPR2013-00024, IPR2013-00128, IPR2013-00266, IPR2013-00517,
`
`IPR2013-00518, IPR2014-00549, IPR2014-00550, IPR2014-01093, IPR2015-
`
`00265,
`
`IPR2015-00268,
`
`IPR2016-00397,
`
`IPR2016-00399,
`
`IPR2016-00549,
`
`IPR2016-00553, IPR2016-00557, IPR2016-00559, IPR2016-01198, IPR2016-
`
`01201,
`
`IPR2017-02172,
`
`IPR2017-02174,
`
`IPR2018-00291,
`
`IPR2018-00318,
`
`IPR2018-00322, IPR2018-00385, IPR2018-00795, IPR2018-00797, IPR2018-
`
`01317, and IPR2019-01201. Id. ¶ 2.
`
`4.
`
`Further, Mr. Zimmerman holds a Bachelor of Science degree in
`
`Chemical Engineering from the University of Notre Dame and served as a law clerk
`
`to the Honorable Alvin A. Schall, Circuit Judge of the United States Court of
`
`Appeals for the Federal Circuit. Id. ¶ 3. Moreover, Mr. Zimmerman is experienced
`
`with technically and legally complex matters in the field of chemistry and
`
`biotechnology. Id.
`
`5. With regard to U.S. Patent No. 10,435,742 (“the ’742 patent”), the
`
`patent at issue in this proceeding, Mr. Zimmerman is familiar with the ’742 patent,
`
`and with the legal subject matter, technical subject matter, and prior art discussed in
`
`Illumina’s request for inter partes review of the ’742 patent. Id. ¶ 4. Mr.
`
`Zimmerman also is familiar with the U.S. Patents, legal subject matter, technical
`
`subject matter, and prior art discussed in the related matters of IPR2020-00988
`
`-3-
`
`
`
`Illumina v. Columbia
`IPR2020-01177, Patent 10,435,742
`
`(challenging U.S. Patent 10,407,458), IPR2020-01065 (challenging U.S. Patent
`
`10,407,459), IPR2020-01125 (challenging U.S. Patent 10,457,984), and IPR2020-
`
`01323 (challenging U.S. Patent 10,428,380). Id. In view of his legal experience,
`
`technical background, and familiarity with the issues in the present matter and the
`
`related matters, Petitioner Illumina, Inc. has requested his services in the present
`
`matter and related matters of IPR2020-01065, IPR2020-01125, IPR2020-01177, and
`
`IPR2020-01323. Denial of his appearance in this case would create an undue burden
`
`on Patent Owner. Id.
`
`6. Mr. Zimmerman has read and will comply with the Office Patent Trial
`
`Practice Guide and the Board’s Rules of Practice for Trials set forth in Part 42 of
`
`Title 37 of the Code of Federal Regulations. Id. ¶ 9. Mr. Zimmerman also agrees
`
`to be subject to the United States Patent and Trademark Office Rules of Professional
`
`Conduct set forth in 37 C.F.R. §§ 11.101 et seq., and disciplinary jurisdiction under
`
`37 C.F.R. § 11.19(a). Id. ¶ 10.
`
`7.
`
`Finally, Mr. Zimmerman has attested to the remaining elements of
`
`Paragraph 2(b) of the representative “Order – Authorizing Motion for Pro Hac Vice
`
`Admission” in Case IPR2013-00639, Paper 7. Id. ¶¶ 4–11; see Notice of Filing Date
`
`Accorded to Petition and Time for Filing Patent Owner Preliminary Response
`
`(Paper 3) at 2.
`
`-4-
`
`
`
`Illumina v. Columbia
`IPR2020-01177, Patent 10,435,742
`
`V. CONCLUSION
`
`In view of the foregoing, and having satisfied the requirements of 37 C.F.R.
`
`§ 42.10(c), Illumina hereby moves for an Order allowing William R. Zimmerman of
`
`Knobbe, Martens, Olson & Bear, LLP, to appear pro hac vice on behalf of Illumina
`
`in the above-captioned case.
`
`
`
`Respectfully submitted,
`
`Dated: August 28, 2020
`
`
`
`
`
`
`
`
`
`By: /Kerry Taylor/
`Kerry Taylor (Reg. No. 43,947)
`Nathanael R. Luman (Reg. No. 63,160)
`Michael L. Fuller (Reg. No. 36,516)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`Attorneys for Petitioner
`ILLUMINA, INC.
`
`-5-
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing UNOPPOSED
`
`MOTION FOR WILLIAM R. ZIMMERMAN TO APPEAR PRO HAC VICE
`
`ON BEHALF OF PETITIONER ILLUMINA, INC. is being served on counsel
`
`of record for Patent Owner via email to the addresses below.
`
`John P. White
`jwhite@cooperdunham.com
`Gary J. Gershik
`ggershik@cooperdunham.com
`ColumbiaIPR@cooperdunham.com
`COOPER & DUNHAM, LLP
`30 Rockefeller Plaza, 20th Floor
`New York, NY 10112
`
`John D. Murnane
`jdmurnane@venable.com
`VENABLE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`
`Justin J. Oliver
`joliver@venable.com
`VENABLE LLP
`600 Massachusetts Ave.
`Washington, D.C. 20001
`
`
`
`
`By: /Kerry Taylor/
`Kerry S. Taylor (Reg. No. 43,947)
`Nathanael R. Luman (Reg. No. 63,160)
`Michael L. Fuller (Reg. No. 36,516)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`Email: BoxIllumina@knobbe.com
`
`Attorneys for Petitioner
`
`
`
`Dated: August 28, 2020
`
`33222936
`
`
`
`
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