UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________________________
`
`KASHIV BIOSCIENCES, LLC
`Petitioner
`
`v.
`
`AMGEN INC.
`Patent Owner
`
`____________________
`
`Case No. IPR2019-00797
`U.S. Patent No. 9,643,997
`____________________
`
`AFFIDAVIT OF SOPHIE F. WANG IN SUPPORT OF PETITIONER’S
`MOTION FOR PRO HAC VICE ADMISSION
`
`KASHIV EX1079
`IPR2019-00797
`
`Page 1
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`

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`IPR2019-00797
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`I, Sophie F. Wang, being duly sworn and upon oath, hereby attest to the
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`following:
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`1.
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`I am a member in good standing of the Bar of the Commonwealth of
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`Massachusetts.
`
`2.
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`I have not been suspended or disbarred from practice before any court
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`or administrative body.
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`3.
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`I have never had an application for admission to practice before any
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`court or administrative body denied.
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`4.
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`No sanction or contempt citation has been imposed against me by any
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`court or administrative body.
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`5.
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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 Title 37, Part 42 of the
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`C.F.R.
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`6.
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`I will be subject to the USPTO Rules of Professional Conduct as set
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`forth in 37 C.F.R. §§ 11.101 et seq. and the USPTO’s disciplinary jurisdiction
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`under 37 C.F.R. § 11.19(a).
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`7.
`
`In 2017, I applied to and was admitted pro hac vice before the PTAB
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`in Inter Partes Reviews IPR2017-01170, IPR2017-01447, and IPR2017-01448
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`involving Guardant Health, Inc. and Foundation Medicine, Inc. I am concurrently
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`Page 2
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`IPR2019-00797
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`applying for pro hac vice admission before the PTAB in Inter Partes Review
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`IPR2019-00791 involving Kashiv BioSciences, LLC and Amgen Inc.
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`8.
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`I am an experienced litigation attorney with over eight years of
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`experience representing clients in patent litigation in various forums including
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`federal district courts across the United States. I am currently Counsel in the
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`intellectual property litigation group of Choate Hall & Stewart and have been
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`involved in many patent litigations and inter partes review proceedings over the
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`course of my career to date. My biography is attached hereto as Appendix A.
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`9.
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`I am familiar with the subject matter at issue in this proceeding. I
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`have been intimately involved in advising Kashiv BioSciences, LLC on its IP
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`strategies, including with respect to the patent at issue in this proceeding. I have
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`also invested a significant amount of time reviewing and analyzing relevant
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`materials in preparation for representing Kashiv BioSciences, LLC in this IPR and
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`the related concurrent litigation.
`
`Date:
`
`July 8, 2019
`
`Respectfully submitted,
`By:
`
`
` Sophie F. Wang
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`Page 3
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`

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`IPR2019-00797
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the foregoing AFFIDAVIT OF
`
`SOPHIE F. WANG IN SUPPORT OF PETITIONER’S MOTION FOR PRO
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`HAC VICE ADMISSION was served electronically in its entirety on July 8, 2019
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`via electronic mail to the following attorneys of record:
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` sbaughman@paulweiss.com
` mraymond@paulweiss.com
` cnyarady@paulweiss.com
` GRP-AmgenIPR@paulweiss.com
`
`
`
`Respectfully submitted,
`
`Date: July 8, 2019
`
`
`
`
`By: / Rolando Medina /
`Rolando Medina, Reg. No. 54,756
`Eric J. Marandett, Pro Hac Vice to be filed
`Margaret E. Ives, Pro Hac Vice to be filed
`Sophie F. Wang, Pro Hac Vice to be filed
`CHOATE HALL & STEWART LLP
`Two International Place
`Boston, MA 02110
`617-248-5000
`
`Attorneys for Petitioner
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`Page 4
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`Sophie F. Wang
`Counsel
`T +1 (617) 248-4052 | swang@choate.com
`
`EDUCATION
`Washington University
`School of Law
`JD, 2010, cum laude
`Primary Editor,
`Journal of Law & Policy
`
`Wellesley College
`BA, 2007
`
`Sophie Wang represents biotech, pharmaceutical, and technology companies
`in complex intellectual property and commercial disputes across the country.
`Her practice focuses on complex patent litigation and trade secrets litigation in
`federal and state trial and appellate courts, post-grant and inter partes review
`proceedings before the United States Patent and Trial Appeal Board (PTAB),
`and contract and licensing disputes within the life sciences and technology
`industries. Ms. Wang also represents leading industry organizations in
`submitting amicus curiae briefs to the U.S. Supreme Court and the U.S. Court
`of Appeals for the Federal Circuit on a variety of key issues concerning
`intellectual property rights.
`
`Ms. Wang has extensive civil and criminal jury trial experience, having also
`served as a Special Assistant District Attorney in Suffolk County.
`
`Ms. Wang has been named a Massachusetts Super Lawyers Rising Star and a
`Massachusetts Top Women Rising Star. She is a native speaker of Mandarin
`Chinese.
`
`PRACTICE FOCUS
`
`
`Complex Intellectual Property Disputes
`Represents clients in complex patent infringement litigation, trade secret litigation, and licensing disputes within the life
`sciences and technology industries.
`
`Post Grant Proceedings
`Represents clients in AIA post-grant review proceedings, including inter partes review and post-grant review
`proceedings.
`
`Complex Commercial Litigation
`Represents clients in securities and antitrust litigation, unfair competition disputes, and complex commercial litigation
`in a variety of industries.
`
`REPRESENTATIVE ENGAGEMENTS
`
`
`Patent Trial and Appeal Board and Appellate Proceedings
`
`• Kashiv BioSciences, LLC v. Amgen Inc., PTAB: Counsel for Kashiv in IPR proceedings challenging patents relating to
`methods of protein refolding and purification.
`
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`Page 5
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`ADMISSIONS
`Massachusetts
`
`U.S. District Court,
`Massachusetts
`
`U.S. Court of Appeals,
`First Circuit
`
`U.S. Court of Appeals,
`Federal Circuit
`
`U.S. Supreme Court
`
`PRACTICE AREAS
`Complex Intellectual
`Property Disputes
`
`Complex Commercial
`Litigation
`
`Life Sciences
`
`CHOATE.COM
`
`• Guardant Health, Inc. v. Foundation Medicine, Inc., PTAB: Counsel for Foundation
`Medicine in IPR proceedings defending patents protecting innovative
`comprehensive genomic cancer assays using next generation sequencing.
`
`• Hybrigenics SA v. FORMA Therapeutics, Inc., PTAB: Counsel for FORMA
`Therapeutics, Inc. in a PGR proceeding defending a patent protecting novel
`inhibitors of ubiquitin-specific protease 7 (USP7).
`
`• Alarm.com, Inc. v. Rothschild Broadcast Distribution Sys., LLC, PTAB: Counsel for
`Alarm.com, Inc. in an IPR proceeding challenging a patent directed to systems and
`methods for media content storage and delivery.
`
`• Saudi Arabian Oil Co. v. SK Innovation Co. Ltd., PTAB: Counsel for Saudi Arabian Oil
`Co. in an IPR proceeding challenging a patent directed to polycarbonates.
`
`• Green Cross Corp. v. Shire Human Genetic Therapies, Inc., Fed Cir: Counsel for
`Shire in defending appeal of IPR decision relating to novel methods for purifying
`recombinantly produced proteins for enzyme replacement therapy.
`
`Trial and Appellate Proceedings
`
`• Acorda Therapeutics, Inc. v. Roxane Labs., et al., Supreme Court: Counsel for the
`Boston Patent Law Association in filing amicus brief in support of neither party at
`the petition stage.
`
`• Amgen Inc. et al. v. Adello Biologics, LLC, D. N.J.: Counsel for Adello in complex
`patent infringement litigation arising under the Biologics Price Competition and
`Innovation Act of 2009 (“BPCIA”) relating to methods of protein refolding and
`purification.
`
`• MicroTechnologies, LLC v. Autonomy, Inc. (a/k/a HP Autonomy), et al., N.D.
`Cal.: Trial counsel for Hewlett-Packard in federal jury trial regarding complex
`contract and fraud dispute arising out of Hewlett-Packard’s acquisition of
`Autonomy Corporation, PLC.
`
`• Momenta Pharm., Inc. v. Amphastar Pharm., Inc. et al., D Mass, Fed Cir: Trial and
`appellate counsel for Momenta in patent infringement litigation relating to
`innovative methods of processing therapeutic polysaccharides.
`
`• Momenta Pharm., Inc. v. Teva Pharm., USA Inc., D Mass., Fed Cir: Counsel for
`Momenta in patent infringement litigation relating to innovative methods of
`processing therapeutic polysaccharides.
`
`• Helsinn Healthcare S.A. v. Teva Pharm. USA Inc., Supreme Court: Counsel for the
`Massachusetts Biotechnology Council in filing amicus brief in support of the
`petition for writ of certiorari.
`
`• Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, et al., Supreme Court:
`Counsel for the Boston Patent Law Association in filing amicus brief in support of
`neither party on the merits.
`
`• Gilead Sciences, Inc. et al., v. Natco Pharma Limited, et al., Fed. Cir.: Counsel for
`Biotechnology Industry Organization & The Pharmaceutical Research and
`Manufacturers of America in filing amicus brief in support of petition for
`rehearing en banc.
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`Page 6
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`CHOATE.COM
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`• Limelight Networks, Inc. v. Akamai Technologies, Inc., ED Va: Counsel for Akamai in
`patent infringement litigation relating to novel content delivery methods.
`
`• Children’s Medical Center Corporation v. Celgene Corporation, D Mass: Counsel for
`Celgene in breach of contract litigation regarding exclusive license agreement
`related to patents concerning Revlimid® and Pomalyst® (treatments for cancer).
`
`• Becton, Dickinson & Co. v. Insulet Corp., D NJ: Counsel for Insulet in patent
`infringement litigation relating to insulin injection and infusion devices.
`
`• Tekmira Pharm. Corp. v. Alnylam Pharm. and AlCana Tech., Inc., MA Sup Ct.:
`Counsel for AlCana in trade secret litigation brought against AlCana and its
`research collaboration partner Alnylam concerning novel lipid nanoparticles used
`as drug delivery vehicle for siRNA therapeutics.
`
`PUBLICATIONS AND PRESENTATIONS
`
`•
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`•
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`•
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`•
`
`•
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`•
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`•
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`•
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`•
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`•
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`•
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`•
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`•
`
`“Don’t Be Barred by the On-Sale Bar: Helsinn and Other Case Updates,”
`moderator, BIO International Convention, June 2019.
`
`“Supreme Court ruling raises concerns about pharmaceutical, tech
`patents,” quoted, Boston Business Journal, January 2019.
`
`“On-Sale Bar Questions Leading Up To Helsinn At High Court,” co-author, Law360,
`August 2018.
`
`“What to Expect From Intellectual Property Cases Before SCOTUS This
`Term,” panelist, Boston Bar Association, June 2018.
`
`“Summary of Oil States Decision,” author, BPLA Newsletter, Spring 2018 Edition.
`
`“Oil States v. Greene’s Energy and SAS Institute v. Iancu: A Round Table
`Discussion,” discussion leader, BPLA Committee Event, May 2018.
`
`“Oil States Energy Services, LLC v. Greene’s Energy Group, LLC,” panelist, The
`Administrative-Private Law Interface Conference, March 2018.
`
`“Trademark Law for Patent Litigators/Patent Law for Trademark Litigators,”
`speaker, Boston Bar Association, February 2018.
`
`“In the Hot Seat—Upcoming Cases in the Supreme Court and Federal Circuit,”
`panelist, BIO IPCC Fall Conference, November 2017.
`
`“When Courts Invoke Equitable Tolling In Noncompete Cases,” co-author,
`Commercial Contracts Law 360, August 2015.
`
`“Secondary Consideration for Pharma Patents get 2nd Look,” co-author, IP
`Law360, November 2014.
`
`“Trade Secrets in Life Sciences: Challenges and Opportunities in a Collaborative
`and Mobile Environment,” co-author, Bloomberg BNA, November 2013.
`
`“Health Law Case Brief: Grocela v. General Hospital Corporation,” author, BBA
`Health Law Reporter, January 2013.
`
`Page 7
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`CHOATE.COM
`
`•
`
`•
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`“Lessons From Post-Uniloc Cases,” co-author, IP Law360, September 2011.
`
`“New Dodd-Frank Whistleblower Rules: Protecting Your Company Now,” co-
`author, Corporate Compliance Insights, August 2011.
`
`PROFESSIONAL AND COMMUNITY INVOLVEMENT
`Ms. Wang is a member of the Board of the Boston Intellectual Property American Inn
`of Court. She is also a member of the Boston Bar Association, the Asian American
`Lawyers Association of Massachusetts, the Boston Patent Law Association, the PTAB
`Bar Association, and the American Intellectual Property Law Association. She also
`participates in the firm’s pro bono program and Women’s Leadership Network, and
`serves on the Firm’s Diversity and Inclusion Committee.
`
`Page 8
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`