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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APOTEX, INC.,
`Petitioner,
`v.
`CELGENE CORPORATION,
`Patent Owner.
`
`
`Case IPR2023-00512
`Patent 8,846,628
`
`
`DECLARATION OF ANDREW J. DANFORD IN SUPPORT OF
`UNOPPOSED MOTION FOR ADMISSION PRO HAC VICE
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`
`CELGENE 2152
`APOTEX v. CELGENE
`IPR2023-00512
`
`
`
`I, Andrew J. Danford, declare as follows:
`1.
`I obtained a S.B. from the Massachusetts Institute of Technology in
`
`IPR2023-00512
`Patent No. 8,846,628
`
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`2005 and a J.D. from the Stanford Law School in 2008.
`
`2.
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`I am currently a partner in the law firm of Wilmer Cutler Pickering
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`Hale and Dorr LLP. I was admitted to the Massachusetts Bar in January of 2009
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`and the New York Bar in August of 2010 and have been practicing law for over 13
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`years. During the entire time that I have been practicing law, my practice has
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`focused on the field of intellectual property, and particularly, patent litigation.
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`3.
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`I am a member in good standing of the Massachusetts and New York
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`Bars and am admitted to practice before the United States District Court for the
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`District of Massachusetts, the United States Court of Appeals for the First Circuit,
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`and the United States Court of Appeals for the Federal Circuit.
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`4. My New York Bar membership numbers is 4855318. My
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`Massachusetts Bar membership number is 672342.
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`5.
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`Over the course of my career, I have been counsel in numerous patent
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`litigations. Several of these cases have concerned Patent Office rules and
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`regulations. For example, I represented Cephalon, Inc. in Apotex Inc. v. Cephalon,
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`Inc., No. 12-1417 (Fed. Cir.).
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`6.
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`I have appeared pro hac vice before the Office in the following
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`proceedings: Hospira Inc. et al. v. Genentech Inc., IPR2017-00737 (pro hac vice
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`- 1 -
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`granted); Hospira Inc. et al. v. Genentech Inc., IPR2017-00739 (pro hac vice
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`IPR2023-00512
`Patent No. 8,846,628
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`granted); Hospira Inc. et al. v. Genentech Inc., IPR2017-00805 (pro hac vice
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`granted); Boehringer Ingelheim Pharmaceuticals Inc. v. Genentech Inc., IPR2017-
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`02031 (pro hac vice granted); Boehringer Ingelheim Pharmaceuticals Inc. v.
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`Genentech Inc., IPR2017-02032 (pro hac vice granted); Pfizer Inc. et al. v.
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`Genentech Inc., IPR2017-01488 (pro hac vice granted); Pfizer Inc. et al. v.
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`Genentech Inc., IPR2017-01489 (pro hac vice granted); Celltrion Inc. v.
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`Genentech Inc., IPR2017-01373 (pro hac vice granted); Celltrion Inc. v.
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`Genentech Inc., IPR2017-01374 (pro hac vice granted); PNC Bank N.A. v. United
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`Services Automobile Association, IPR2021-01077 (pro hac vice granted).
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`7.
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`I have an established familiarity with the subject matter of U.S. Patent
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`No. 8,846,628 (the ’628 patent), the ’628 patent’s file history, and the prior art at
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`issue in this proceeding. I am familiar with pharmaceutical technologies as a
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`result of participation as counsel in related district court litigations on the ’628
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`patent as well as many prior pharmaceutical-related intellectual property cases. I
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`have also recently represented other pharmaceutical companies, including, among
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`others, Genentech, AbbVie, Takeda Pharmaceuticals, AstraZeneca, and Cephalon
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`in patent litigation matters before federal district courts and the Federal Circuit.
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`The technology involved in these disputes includes drug formulation technology.
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`- 2 -
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`I have never been suspended or disbarred from practice before any
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`IPR2023-00512
`Patent No. 8,846,628
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`8.
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`court or administrative body.
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`9.
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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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`10.
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`I have never had any sanctions or contempt citations imposed on me
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`by any court or administrative body.
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`11.
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`I attest to each of the listed items required by the Order – Notice of
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`Filing Date Accorded to Petition And Time For Filing Patent Owner Preliminary
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`Response in IPR2023-00512.
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`12.
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`I have read and will comply with Office Patent Trial Practice Guide
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`and the Board’s Rules of Practice for Trials, as set forth in 37 C.F.R. Part 42.
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`13.
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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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`I hereby declare that all statements made herein of my own knowledge are
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`true and that all statements made on information and belief are believed to be true;
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`and further that these statements are made with the knowledge that willful false
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`statements and the like are punishable by fine, imprisonment, or both, under
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`Section 1001 of Title 18 of the United States Code.
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`- 3 -
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`
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`IPR2023-00512
`Patent No. 8,846,628
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`Respectfully submitted,
`
`/Andrew J. Danford/
`Andrew J. Danford
`WILMER CUTLER PICKERING
` HALE AND DORR LLP
`60 State Street
`Boston, MA 02109
`Andrew.Danford@wilmerhale.com
`Tel.: 617-526-6806
`Fax: 617-526-5000
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`
`Dated: October 18, 2023
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`- 4 -
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