IPR2017-01588
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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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`BECTON, DICKINSON AND COMPANY,
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`Petitioner,
`
`v.
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`B. BRAUN MELSUNGEN AG,
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`Patent Owner.
`
`__________________
`
`Case IPR2017-01588
`Patent No. 8,460,247
`
`__________________
`
`DECLARATION OF WILLIAM G. MCELWAIN IN SUPPORT OF
`MOTION FOR ADMISSION PRO HAC VICE
`
`BD 1041
`BD v. B. BRAUN
`IPR2017-01588
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`BECTON, DICKINSON AND COMPANY,
`
`Petitioner,
`
`v.
`
`B. BRAUN MELSUNGEN AG,
`
`Patent Owner.
`
`__________________
`
`Case IPR2017-01588
`Patent No. 8,460,247
`
`__________________
`
`DECLARATION OF WILLIAM G. MCELWAIN IN SUPPORT OF
`MOTION FOR ADMISSION PRO HAC VICE
`
`BD 1041
`BD v. B. BRAUN
`IPR2017-01588
`
`
`
`
`
`I, William G. McElwain, declare as follows:
`
`Case No. IPR2017-01588
`McElwain Declaration
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`
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`1.
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`I was admitted to the Massachusetts Bar in December of 1982, the
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`District of Columbia Bar in March of 1986, and the Virginia Bar in
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`October of 1989. I have been practicing law for 36 years. For more
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`than 25 years, my practice has focused primarily on patent litigation.
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`2. Over the course of my career, I have been counsel in dozens of patent
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`litigations.
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`3.
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`I am a member in good standing in the Bars of Massachusetts, the
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`District of Columbia, and Virginia and am admitted to practice before
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`the U.S. District Courts for the District of Columbia, District of
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`Maryland, and District of Massachusetts. I am also admitted to
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`practice before the U.S. Court of Appeals for the Federal Circuit and
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`the United States Supreme Court.
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`4. My Massachusetts Bar membership number is 332510. My District of
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`Columbia Bar membership number is 397553. My Virginia Bar
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`membership number is 30732.
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`5.
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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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`1
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`I have never had a court or administrative body deny my application
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`Case No. IPR2017-01588
`McElwain Declaration
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`
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`6.
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`for admission to practice.
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`7.
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`I have read and will comply with the Patent Office Trial Practice
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`Guide and the Board’s Rules for Practice for Trials, as set forth in 37
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`C.F.R. Part 42.
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`8.
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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.
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`and disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
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`9.
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`I have applied to appear pro hac vice in the following proceedings
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`before the United States Patent and Trademark Office in the last three
`
`years: Coherus Biosciences Inc. v. AbbVie Biotechnology Ltd., Case
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`IPR2016-00172; Coherus Biosciences Inc. v. AbbVie Biotechnology
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`Ltd., Case IPR2016-00188; Coherus Biosciences Inc. v. AbbVie
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`Biotechnology Ltd., Case IPR2016-00189; Boerhringer Ingelheim
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`Int’l. GmbH v. AbbVie Biotechnology Ltd., Case IPR2016-00408; and
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`Boerhringer Ingelheim Int’l. GmbH v. AbbVie Biotechnology Ltd.,
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`Case IPR2016-00409.
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`10. I am intimately familiar with the subject matter of U.S. Patent No.
`
`
`
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`2
`
`
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`8,460,247, as I am counsel in the related district court litigation and
`
`Case No. IPR2017-01588
`McElwain Declaration
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`
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`appeal, B. Braun Melsungen AG v. Becton, Dickinson and Co., Civ.
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`No. 1:16-cv-00411-RGA (D. Del.), and its appeal, B Braun Melsungen
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`AG v. Becton, Dickinson and Company, Appeal No. 2018-1497 (Fed.
`
`Cir.).
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`11. In addition to this matter, I have represented Becton, Dickinson and
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`Company or its affiliates in multiple patent and patent-related cases,
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`including: B. Braun Melsungen AG v. Becton, Dickinson and Co., Civ.
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`No. 1:16-cv-00411-RGA (D. Del.), and its appeal, B Braun Melsungen
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`AG v. Becton, Dickinson and Company, Appeal No. 2018-1497 (Fed.
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`Cir.); Safety Syringes Inc v. Becton Dickinson, Civ. No. 3:01-cv-2031-
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`J NLS (S.D. Cal.); MBO Laboratories. v. Becton, Dickinson & Co.,
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`Appeal Nos. 2011-1446 and 2008-1446 (Fed. Cir.); Becton Dickinson
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`and Co. v. Tyco Healthcare Group LP, Civ. No. 1:02-cv-1694 (D.
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`Del.), and its appeal Becton, Dickinson & Co. v. Tyco Healthcare
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`Group, Appeal No. 2009-1053 (Fed. Cir.); Retractable Technologies,
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`Inc. v. Becton Dickinson and Co., Civ. No. 2:07-cv-00250 (E.D. Tex.),
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`and its appeals, Retractable Techs., Inc. v. Becton, Dickinson & Co.,
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`
`
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`3
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`
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`Appeal Nos. 2010-1402 and 2013-1567 (Fed. Cir.); Becton Dickinson
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`Case No. IPR2017-01588
`McElwain Declaration
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`
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`and Co. v. Retractable Technologies, Inc., Civ. No. 5:07-cv-00137-
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`ALM-CMC (E.D. Tex.); Vaillancourt v. Becton Dickinson & Co.,
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`Appeal No. 2013-1408 (Fed. Cir.); Enzo Life Sciences Inc., v. Becton
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`Dickinson and Co., Civ. No. 1:12-cv-00275 (D. Del.); Becton
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`Dickinson Diagnostics Inc.; and Geneohm Sciences, Inc., Civ. No.
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`1:12-cv-00275-LPS (D. Del.); One Stockduq Holdings, LLC v. Becton,
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`Dickinson and Company, Civ No. 2:12-cv-03037 (W.D. Tenn.), and
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`its appeal, One Stockduq Holdings, LLC v. Becton, Dickinson and
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`Company, Appeal No. 15-1255 (Fed. Cir.); Antares Pharma, Inc., v.
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`Medac Pharma, Inc. and Medac GMBH, Civ. No. 1:14-cv-00270-SLR
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`(D. Del.).
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`12. I am familiar with IV catheter technology as a result of my
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`participation as counsel in prior cases related to that technology,
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`including One Stockduq Holdings, LLC v. Becton, Dickinson and
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`Company, Civ No. 2:12-cv-03037 (W.D. Tenn.), and its appeals, One
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`Stockduq Holdings, LLC v. Becton, Dickinson and Company, Appeal
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`No. 15-1255 (Fed. Cir.); and Vaillancourt v. Becton Dickinson & Co.,
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`
`
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`4
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`
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`Appeal No. 2013-1408 (Fed. Cir.). I am also familiar with related
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`Case No. IPR2017-01588
`McElwain Declaration
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`
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`medical device technology, such as syringes, as a result of my
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`participation as counsel in prior cases related to that technology,
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`including Retractable Technologies, Inc., et al. v. Becton Dickinson
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`and Co., Civ. No. 2:07-cv-250 (E.D. Tex.), and its appeals,
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`Retractable Tech., Inc. v. Becton, Dickinson & Co., Appeal Nos.
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`2010-1402 and 2013-1567 (Fed. Cir.). In addition, I have represented
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`a number of life sciences and medical devices companies—Becton,
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`Dickinson and Company, AbbVie Biotechnology Ltd., F. Hoffman-
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`LaRoche Ltd., GlaxoSmithKline LLC and others—in many patent
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`litigation matters before federal district courts, appellate courts, and
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`arbitration tribunals. The technology involved in these disputes
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`includes, e.g., IV catheters, syringes, pharmaceuticals compounds, and
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`nucleic acid detection and hybridization.
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`13. I hereby declare that all statements made herein of my own knowledge
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`are true and that all statements made on information and belief are
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`believed to be true; and further that these statements are made with the
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`knowledge that willful false statements and the like are punishable by
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`
`
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`5
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`
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`fine, imprisonment, or both under Section 1001 of Title 18 of the
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`Case No. IPR2017-01588
`McElwain Declaration
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`
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`United States Code.
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`Dated: May 2, 2018
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`Respectfully submitted
`
`/William G. McElwain/
`William G. McElwain
`WILMER CUTLER PICKERING HALE AND
`DORR LLP
`1875 Pennsylvania Avenue, NW
`Washington, DC 20006
`(202) 663-6388
`
`6
`
`
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