`Entered: 15 July 2013
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`PHARMATECH SOLUTIONS, INC.
`Petitioner,
`
`v.
`
`LIFESCAN SCOTLAND LTD.
`Patent Owner.
`_______________
`
`Case IPR2013-00247 (SCM)
`Patent 7,250,105 B1
`_______________
`
`
`
`Before SALLY C. MEDLEY, SCOTT R. BOALICK, and SCOTT E. KAMHOLZ,
`Administrative Patent Judges.
`
`KAMHOLZ, Administrative Patent Judge.
`
`DECISION
`Motions for Pro Hac Vice Admission
` 37 C.F.R. § 42.10
`
`
`
`
`
`LifeScan Scotland Ltd. (“LifeScan”) filed motions for pro hac vice
`
`admission of Gregory L. Diskant (Paper 7) and Kathleen M. Crotty (Paper 8). The
`
`motions are unopposed. The motions are granted.
`
`Pursuant to 37 C.F.R. § 42.10(c), the Board may recognize counsel pro hac
`
`
`
`IPR2013-00247
`Patent 7,250,105 B1
`
`vice during a proceeding upon a showing of good cause. In authorizing motions
`
`for pro hac vice, the Board requires the moving party to provide a statement of
`
`facts showing there is good cause for the Board to recognize counsel pro hac vice
`
`and an affidavit or declaration of the individual seeking to appear in this
`
`proceeding. “Notice”; Paper 4.
`
`In its motions, LifeScan states that there is good cause for the Board to
`
`recognize Mr. Diskant and Ms. Crotty pro hac vice during this proceeding, because
`
`they are experienced litigating attorneys with an established familiarity with the
`
`subject matter at issue in the proceeding. Paper 7, 2-3; Paper 8, 2-3. In addition,
`
`the motions state that Mr. Diskant and Ms. Crotty are counsel in co-pending
`
`litigation involving the same patent. Paper 7, 3; Paper 8, 3. Mr. Diskant and Ms.
`
`Crotty each made a declaration attesting to, and explaining, these facts. Paper 7,
`
`Exhibit A; Paper 8, Exhibit A.* Each declaration complies with the requirements
`
`set forth in the Notice.
`
`Upon consideration, LifeScan has demonstrated that Mr. Diskant and Ms.
`
`Crotty have sufficient legal and technical qualifications to represent LifeScan in
`
`this proceeding. Moreover, the Board recognizes that there is a need for LifeScan
`
`to have related litigation counsel involved in this proceeding. Accordingly,
`
`LifeScan has also established that there is good cause for admitting Mr. Diskant
`
`and Ms. Crotty.
`
`
`
`
`* Patent Owner is reminded that each of its exhibits must be uniquely numbered
`sequentially in the range 2001-2999 and must be appropriately labeled. See 37
`C.F.R. § 42.63.
`
` 2
`
`
`
`
`
`IPR2013-00247
`Patent 7,250,105 B1
`
`
`Attention is directed to the Office’s Final Rule adopting new Rules of
`
`Professional Conduct. See Changes to Representation of Others Before the United
`
`States Patent and Trademark Office; Final Rule, 78 Fed. Reg. 20180 (Apr. 3,
`
`2013). The Final Rule also removes Part 10 of Title 37, Code of Federal
`
`Regulations. The changes set forth in that Final Rule including the USPTO’s
`
`Rules of Professional Conduct took effect on May 3, 2013. Therefore, Mr. Diskant
`
`and Ms. Crotty are subject to the USPTO’s Rules of Professional Conduct that
`
`took effect May 3, 2013.
`
`It is
`
`ORDERED that the LifeScan motion for pro hac vice admission of
`
`Gregory L. Diskant and Kathleen M. Crotty for this proceeding is granted;
`
`FURTHER ORDERED that LifeScan is to continue to have a registered
`
`practitioner represent it as lead counsel for this proceeding;
`
`FURTHER ORDERED that Mr. Diskant and Ms. Crotty are to comply
`
`with the Office Patent Trial Practice Guide and the Board’s Rules of Practice for
`
`Trials, as set forth in Part 42 of Title 37, Code of Federal Regulations;
`
`FURTHER ORDERED that Mr. Diskant and Ms. Crotty are subject to the
`
`Office’s disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and the USPTO
`
`Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq.
`
`
`
`
`
` 3
`
`
`
`
`
` 4
`
`
`
`IPR2013-00247
`Patent 7,250,105 B1
`
`FOR PETITIONER:
`
`William A. Rudy
`A. Justin Poplin
`Patent Docketing
`LATHROP & GAGE LLP
`patent@lathropgage.com
`
`FOR PATENT OWNER:
`
`Dianne B. Elderkin
`Steven Maslowski
`AKIN GUMP STRAUSS HAUER
`& FELD LLP
`delderkin@akingump.com
`smaslowski@akingump.com
`
`Gregory L. Diskant
`Kathleen M. Crotty
`PATTERSON BELKNAP WEBB &
`TYLER, LLP
`1133 Avenue of the Americas
`New York, NY 10036