`Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 14
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` Entered: August 9, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`NUVASIVE, INC.
`Petitioner
`
`v.
`
`WARSAW ORTHOPEDIC, INC.
`Patent Owner
`_______________
`
`Case IPR2013-00208 (SCM)
`Patent 8,251,997 B2
`_______________
`
`
`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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`
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`DECISION
`Motion for Pro Hac Vice Admission
` 37 C.F.R. § 42.10
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`
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`NuVasive, Inc. (“NuVasive”) filed a motion for pro hac vice admission of
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`Frank E. Scherkenbach. Paper 12. The motion is unopposed. The motion is
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`granted.
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`
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`IPR2013-00208
`Patent 8,251,997 B2
`
`
`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, NuVasive states that there is good cause for the Board to
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`recognize Mr. Scherkenbach pro hac vice during this proceeding, because Mr.
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`Scherkenbach is an experienced litigating attorney with an established familiarity
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`with the subject matter at issue in the proceeding. In addition, the motion states
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`that Mr. Scherkenbach is counsel for NuVasive in related litigation between
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`Warsaw and NuVasive. Mr. Scherkenbach made a declaration attesting to, and
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`explaining, these facts. Exhibit 1017. The declaration complies with the
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`requirements set forth in the Notice.
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`Upon consideration, NuVasive has demonstrated that Mr. Scherkenbach has
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`sufficient legal and technical qualifications to represent NuVasive in this
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`proceeding. Moreover, the Board recognizes that there is a need for NuVasive to
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`have its related litigation counsel involved in this proceeding. Accordingly,
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`NuVasive has also established that there is good cause for admitting Mr.
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`Scherkenbach.
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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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`
`
`2
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`
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`IPR2013-00208
`Patent 8,251,997 B2
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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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`Scherkenbach is subject to the USPTO’s Rules of Professional Conduct that took
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`effect May 3, 2013.
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`It is
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`ORDERED that the NuVasive motion for pro hac vice admission of Frank
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`E. Scherkenbach for this proceeding is granted;
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`FURTHER ORDERED that NuVasive 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. Scherkenbach 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 Mr. Scherkenbach 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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`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
`
`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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