Attorney Docket: 13958‐0112IP2
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`NUVASIVE, INC.
`Petitioner
`
`v.
`
`WARSAW ORTHOPEDICS, INC.
`Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2013-00206
`Patent No. 8,251,997
`
`
`
`
`
`
`
`
`
`
`
`
`PETITIONER NUVASIVE, INC.’S
`MOTION FOR PRO HAC VICE ADMISSION
`UNDER 37 C.F.R. § 42.10(c)
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`NUVASIVE, INC.
`Petitioner
`
`v.
`
`WARSAW ORTHOPEDICS, INC.
`Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2013-00206
`Patent No. 8,251,997
`
`
`
`
`
`
`
`
`
`
`
`
`PETITIONER NUVASIVE, INC.’S
`MOTION FOR PRO HAC VICE ADMISSION
`UNDER 37 C.F.R. § 42.10(c)
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.10(c), the Petitioner (“NuVasive”) respectfully requests that
`
`the Board recognize Mr. Frank E. Scherkenbach as counsel pro hac vice in this proceeding.
`
`NuVasive is also (under a separate motion) requesting the same in a related proceeding
`
`(IPR2013-00208) on the same U.S. Patent No. 8,251,997. NuVasive seeks the counsel of Mr.
`
`Scherkenbach due to his experience in representing NuVasive in other patent-related matters and
`
`particularly due to his familiarity with the substantive and technical issues involved in this
`
`proceeding. This motion is authorized by the Notice of Filing Date Accorded to Petition and
`
`Time for Filing Patent Owner Preliminary Response that was mailed on March 25, 2013. See
`
`Notice, Paper 3 at 2-3.
`
`1. Statement of Facts
`
`Mr. Scherkenbach is a patent litigation attorney with more than 20 years of experience
`
`representing clients in cases involving medical devices, computer software, and semiconductors.
`
`Mr. Scherkenbach regularly litigates patent cases before the United States Court of Appeals for
`
`the Federal Circuit, various federal district courts, and the International Trade Commission.
`
`Through his practice in such cases, Mr. Scherkenbach has gained substantial experience in jury
`
`trials, bench trials, discovery, Markman hearings, and appeals. Mr. Scherkenbach began his
`
`legal career considering patent cases as a clerk for the Honorable Judge H. Robert Mayer on the
`
`United States Court of Appeals for the Federal Circuit from 1989-1991. Previously, Mr.
`
`Scherkenbach was co-founder and Editor-in-Chief of the Harvard Journal of Law & Technology.
`
`Today, Mr. Scherkenbach is active in various bar organizations, including the Federal Circuit
`
`Bar Association, the American Bar Association, the American Intellectual Property Law
`
`Association, and he sits on the Federal Circuit Advisory Committee. NuVasive provides Exhibit
`
`A, as evidence of Mr. Scherkenbach’s biography.
`
`2
`
`
`
`Mr. Scherkenbach also has particular experience and familiarity with the substantive and
`
`technical issues involved in this inter partes review proceeding. In two related matters, Mr.
`
`Scherkenbach has served as lead counsel for NuVasive. The first of these related matters,
`
`Warsaw Orthopedic, Inc., et al. v. Nuvasive, Inc., Case No. 3:12-cv-02738-CAB (MDD) (S.D.
`
`Cal.) is currently pending in district court, and involved assertion of U.S. Patent 8,251,997 by the
`
`Patent Owner. In addition, there is another earlier-filed related case, which is also currently
`
`pending in the district court and is soon to be appealed to the Federal Circuit Court of Appeal,
`
`involving related U.S. Patent Nos. 5,772,661 and 5,860,973, Medtronic v. NuVasive, Case No.
`
`3:08-cv-01512-MMA-AJB (S.D. Cal.). In this case also, Mr. Scherkenbach oversaw
`
`representation of many phases of the litigation from discovery through trial, and he will be
`
`involved in the Federal Circuit appeal on the matter. NuVasive has invested significant financial
`
`resources in each of these related matters in which Mr. Scherkenbach served as lead counsel.
`
`Moreover, through his representation in the related matters, NuVasive has developed a particular
`
`relationship with Mr. Scherkenbach such that NuVasive desires to continue the relationship with
`
`Mr. Scherkenbach for the purpose of this proceeding.
`
`2. Affidavit of Individual Seeking to Appear
`
`This Motion for Pro Hac Vice Admission is accompanied by an Affidavit of Mr. Frank E.
`
`Scherkenbach as required by the Order Authorizing Motion for Pro Hac Vice mailed March 25,
`
`2013.
`
`3
`
`
`
`Accordingly, NuVasive submits that there is good cause under 37 C.F.R. § 42.10(c) for
`
`the Board to recognize Mr. Scherkenbach as counsel pro hac vice during this proceeding.
`
`
`
`
`Date: July 23, 2013
`
`
`Customer Number 26171
`Fish & Richardson P.C.
`Telephone: (612) 337-2508
`Facsimile: (612) 288-9696
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
` /Stephen R. Schaefer, Reg. No. 37,927/
`Stephen R. Schaefer
`Reg. No. 37,927
`Counsel for Petitioner
`
`
`
`4
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify pursuant to 37 C.F.R. § 42.10(c) that a complete copy of Petitioner’s Motion
`
`for Pro Hac Vice Admission and a copy of the Affidavit of Mr. Frank E. Scherkenbach in
`
`Support of Petitioner’s Motion for Pro Hac Vice Admission are being served via electronic mail
`
`(as consented by the Patent Owner) to tmartin@martinferraro.com and
`
`docketing@martinferraro.com, on the 23rd Day of July, 2013, the same day as the filing of the
`
`above-identified documents in the United States Patent and Trademark Office, upon:
`
`
`
`
`Thomas H. Martin, Esq.
`
`(Reg. No. 34,383)
`
`Martin & Ferraro, LLP
`1557 Lake O’Pines Street, NE
`Hartville, Ohio 44632
`
`
`
`
`
`
`
`
`Wesley C. Meinerding, Esq.
`(Reg. No. 57,925)
`Martin & Ferraro, LLP
`1557 Lake O’Pines Street, NE
`Hartville, Ohio 44632
`
`
`
`Date: July 23, 2013
`
`
`
`
`
` /Stephen R. Schaefer, Reg. No. 37,927/
`Stephen R. Schaefer
`Reg. No. 37,927
`Counsel for Patent Owner
`
`
`
`
`
`5
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
