`Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 10
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` Entered: May 15, 2013
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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 (SCM)
`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 Luke L. Dauchot. Paper 8.1 The motion is unopposed. The motion
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`1 The parties are reminded of the general format requirements for papers filed with
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`
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`IPR2013-00208
`Patent 8,251,997 B2
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`is granted.
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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 Mr. Dauchot pro hac vice during this proceeding, because Mr. Dauchot
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`is an experienced litigating attorney with an established familiarity with the subject
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`matter at issue in the proceeding. In addition, the motion states that Mr. Dauchot is
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`counsel for Warsaw in related litigation between Warsaw and Nuvasive. Mr.
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`Dauchot made a declaration attesting to, and explaining, these facts. Exhibit
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`1001.2 The declaration complies with the requirements set forth in the Notice.
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`Upon consideration, Warsaw has demonstrated that Mr. Dauchot has
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`sufficient legal and technical qualifications to represent Warsaw in this proceeding.
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` Moreover, the Board recognizes that there is a need for Warsaw to have its related
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`litigation counsel involved in this proceeding. Accordingly, Warsaw has also
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`established that there is good cause for admitting Mr. Dauchot.
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`the Board. 37 C.F.R. § 42.6. Warsaw’s motion does not appear to comply with
`that rule. Specifically, the proportional font does not appear to be 14 point or
`larger.
`2 Although Warsaw filed the declaration as an exhibit, the exhibit numbering is
`incorrect. The patent owner is assigned the range 2001-2999. In addition, the
`2
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`IPR2013-00208
`Patent 8,251,997 B2
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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 (Apr.
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`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, Mr.
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`Dauchot is subject to the USPTO’s Rules of Professional Conduct that took effect
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`May 3, 2013.
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`It is
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`ORDERED that the Warsaw motion for pro hac vice admission of Luke L.
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`Dauchot 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 Mr. Dauchot is to comply with the Office
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`Patent Trial Practice Guide and the Board’s Rules of Practice for Trials, as set forth
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`in Part 42 of Title 37, Code of Federal Regulations; and
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`FURTHER ORDERED that Mr. Dauchot 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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`exhibit is missing the required label. 37 C.F.R. § 42.63.
`3
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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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`4
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