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`Attorney Docket: 13958-0112lP1
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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 ORTHOPEDICS, INC.
`Patent Owner
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`Case IPR2013-00208
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`Patent No. 8,251,997
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`AFFIDAVIT OF MR. FRANK E. SCHERKENBACH IN SUPPORT OF PETITIONER’S
`MOTION FOR PRO HAC VICE ADMISSION
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`US. Patent & Trademark Office
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`PO. Box 1450
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`Alexandria, VA 22313-1450
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`1
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`NUVASIVE1017
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`1
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`Attorney Docket: 13958—0112IP1
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`AFFIDAVIT OF MR. FRANK E. SCHERKENBACH IN SUPPORT
`OF PETITIONER’S MOTION FOR PRO HAC VICE ADMISSION
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`1, Frank E. Scherkenbach, being duly sworn and upon oath, hereby attest to the following:
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`1.
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`I am a member in good standing of the state Bars of California and Massachusetts, as
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`well as the United States Court of Appeals for the Federal Circuit.
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`2.
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`I have not been suspended or disbarred from practice before any court or administrative
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`body.
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`3.
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`I have never had an application for admission to practice before any court or
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`administrative body denied.
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`4.
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`No sanction or contempt citation has been imposed against me by any court or
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`administrative body.
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`5.
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`I have read and will comply with the Office Patent Trial Practice Guide and the Board’s
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`Rules of Practice for Trials set forth in part 42 of the Code of Federal Regulations.
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`6.
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`I will be subject to the USPTO Code of Professional Responsibility set forth in 37 C.F.R.
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`§§ 10.20 et seq. and disciplinary jurisdiction under 37 C.F.R. § ll.l9(a).
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`7.
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`I have not applied to appear pro hac vice before the Office in any other proceeding in the
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`last three (3) years.
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`I am concurrently applying to appear pro hac vice before the Office in an
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`inter partes review proceeding on the same patent that is at issue in the present inter partes
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`review proceeding, IPR2013—00206.
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`8.
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`I am an experienced litigation attorney with more than 20 years of experience
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`representing clients in patent cases involving medical devices, computer software, and
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`semiconductors.
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`I regularly litigate patent cases in various forums including the United States
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`Court of Appeals for the Federal Circuit, federal district courts, and the International Trade
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`Commission. Through my experience in patent litigation matters, I have represented clients in
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`2
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`Attorney Docket: 13958-0112IP1
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`many phases of litigation including discovery, Markman hearings, jury trials, bench trials, and
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`appeals. My biography is attached hereto as Exhibit A.
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`I am lead counsel for Petitioner
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`NuVasive, Inc. in Warsaw Orthopedic, Inc., et al. v. Nuvasive, Inc, Case No. 3:12—cv-02738-
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`CAB (MDD) (S.D. Cal.), a co-pending district court case in which Patent Owner Warsaw
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`Orthopedics, Inc. has asserted U.S. Patent 8,251,997 against the Petitioner.
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`I am also lead
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`counsel for the Petitioner in a separate pending patent infringement matter, Medtronic v.
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`NuVasz've, Case No. 3:08-cv—01512—MMA—AJB (S.D. Cal.), which involves similar subject
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`matter (including U.S. Patent Nos. 5,772,661 and 5,860,973) to this proceeding (including U.S.
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`Patent Nos. 5,772,661 and 5,860,973) and in which I oversaw many phases of the litigation from
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`discovery through trial, and will continue to be involved in an appeal to the Federal Circuit.
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`VM r
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`Frank E. Scherkenbach
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`Respectfully submitted,
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`Fish & Richardson P.C.
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`One Marina Park Drive
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`Boston, MA 02210—1878
`Telephone: (617) 521-7883
`E-mail:
`scherkenbach@fr.com
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`Sworn to and subscribed before me,
`mist/232
`day of July, 2013.
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`My Commission Expires:
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