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` Entered: March 17, 2014
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`Trials@uspto.gov
`Tel: 571-272-7822
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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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`NUVASIVE, INC.
`Petitioner
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`v.
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`WARSAW ORTHOPEDIC, INC.
`Patent Owner
`_______________
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`Case IPR2013-00208
`Patent 8,251,997 B2
`_______________
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`Before SALLY C. MEDLEY, LORA M. GREEN, and STEPHEN C. SIU,
`Administrative Patent Judges.
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`MEDLEY, Administrative Patent Judge.
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`DECISION
`Motion for Pro Hac Vice Admission
` 37 C.F.R. § 42.10
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`Warsaw Orthopedic, Inc. (“Warsaw”) filed a motion for pro hac vice
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`admission of Mrs. Nimalka R. Wickramasekera. Paper 38. The motion is
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`unopposed. The motion is granted.
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`IPR2013-00208
`Patent 8,251,997 B2
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`Pursuant to 37 C.F.R. § 42.10(c), the Board may recognize counsel pro hac
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`vice during a proceeding upon a showing of good cause. In authorizing motions
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`for pro hac vice, the Board requires the moving party to provide a statement of
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`facts showing there is good cause for the Board to recognize counsel pro hac vice
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`and an affidavit or declaration of the individual seeking to appear in this
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`proceeding. “Notice”; Paper 3.
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`In its motion, Warsaw states that there is good cause for the Board to
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`recognize Mrs. Wickramasekera pro hac vice during this proceeding, because
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`Mrs. Wickramasekera is an experienced litigating attorney with an established
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`familiarity with the subject matter at issue in the proceeding. In addition, the
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`motion states that Mrs. Wickramasekera is counsel for Warsaw in related litigation
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`between Warsaw and NuVasive. Mrs. Wickramasekera made an affidavit attesting
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`to, and explaining, these facts. Exhibit 2063. The affidavit complies with the
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`requirements set forth in the Notice.
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`Upon consideration, Warsaw has demonstrated that Mrs. Wickramasekera
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`has sufficient legal and technical qualifications to represent Warsaw in this
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`proceeding. Moreover, the Board recognizes that there is a need for Warsaw
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`to have its related litigation counsel involved in this proceeding. Accordingly,
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`Warsaw has also established that there is good cause for admitting
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`Mrs. Wickramasekera.
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`Attention is directed to the Office’s Final Rule adopting new Rules of
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`Professional Conduct. See Changes to Representation of Others Before the
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`United States Patent and Trademark Office; Final Rule, 78 Fed. Reg. 20180
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`IPR2013-00208
`Patent 8,251,997 B2
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`(Apr. 3, 2013). The Final Rule also removes Part 10 of Title 37, Code of Federal
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`Regulations. The changes set forth in that Final Rule including the USPTO’s
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`Rules of Professional Conduct took effect on May 3, 2013. Therefore,
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`Mrs. Wickramasekera is subject to the USPTO’s Rules of Professional Conduct
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`that took effect May 3, 2013.
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`It is
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`ORDERED that the Warsaw motion for pro hac vice admission of Nimalka
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`R. Wickramasekera for this proceeding is granted;
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`FURTHER ORDERED that Warsaw is to continue to have a registered
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`practitioner represent it as lead counsel for this proceeding; and
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`FURTHER ORDERED that Mrs. Wickramasekera is to comply with the
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`Office Patent Trial Practice Guide and the Board’s Rules of Practice for Trials, as
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`set forth in Part 42 of Title 37, Code of Federal Regulations; and
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`FURTHER ORDERED that Mrs. Wickramasekera is subject to the Office’s
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`disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and the USPTO Rules of
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`Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq.
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`IPR2013-00208
`Patent 8,251,997 B2
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`PETITIONER:
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`Stephen Schaefer
`Michael Hawkins
`Fish and Richardson PC
`schaefer@fr.com
`hawkins@fr.com
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`PATENT OWNER:
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`Thomas Martin
`Wesley Meinerding
`Martin and Ferraro LLP
`tmartin@martinferraro.com
`wmeinerding@martinferraro.com
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