`571-272-7822
`
`
`
` Paper 16
`
`Entered: January 24, 2014
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SEQUENOM, INC.
`Petitioner,
`
`
`
`
`
`v.
`
`THE BOARD OF TRUSTEES OF
`THE LELAND STANFORD JUNIOR UNIVERSITY
`Patent Owner.
`____________
`
`Case IPR2013-00390
`Patent 8,195,415 B2
`____________
`
`Before LORA M. GREEN, FRANCISCO C. PRATS, and
`SCOTT E. KAMHOLZ, Administrative Patent Judges.
`
`GREEN, Administrative Patent Judge.
`
`
`
`DECISION
`Sequenom’s Motion for Pro Hac Vice Admission of
`MICHAEL J. MALECEK
`37 C.F.R. § 42.10
`
`
`
`
`
`
`
`
`
`Case IPR2013-00390
`Patent 8,195,415 B2
`
`
`
`Petitioner, Sequenom, Inc. (“Sequenom”) filed a motion requesting pro hac
`
`vice admission of Michael J. Malecek (Paper 11), accompanied by a declaration of
`
`Mr. Malecek in support of the motion (Ex. 1012). The motion is unopposed. For
`
`the reasons provided below, Sequenom’s motion is granted.
`
`
`
`As set forth in 37 C.F.R. § 42.10(c), the Board may recognize counsel pro
`
`hac vice during a proceeding upon a showing of good cause, subject to the
`
`condition that lead counsel be a registered practitioner. For example, where the
`
`lead counsel is a registered practitioner, a non-registered practitioner may be
`
`permitted to appear pro hac vice “upon showing that counsel is an experienced
`
`litigating attorney and has an established familiarity with the subject matter at issue
`
`in the proceeding.” 37 C.F.R. § 42.10(c). In authorizing motions for pro hac vice
`
`admission, the Board also requires 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. Paper 4 (referencing the
`
`“Order – Authorizing Motion for Pro Hac Vice Admission,” Paper 6 in IPR2013-
`
`00010 at 3-4).
`
`
`
`In its motion, Sequenom asserts that there is a good cause for Mr. Malacek’s
`
`pro hac vice admission because: (1) Mr. Malecek is an experienced litigating
`
`attorney and has experience litigating patent cases; and (2) as counsel for
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`Sequenom in the co-pending litigation that involves the same patent challenged in
`
`this proceeding, Mr. Malecek has an established familiarity with the subject matter
`
`at issue in the proceeding. Paper 11 at 3-5. In support of the motion, Mr. Malecek
`
`attests to these facts in his declaration with sufficient explanations. Ex. 1012. In
`
`addition, Sequenom’s lead counsel, Steven P. O’Connor, is a registered
`
`practitioner. Paper 11 at 3.
`
`
`
`2
`
`
`
`Case IPR2013-00390
`Patent 8,195,415 B2
`
`
`Based on the facts set forth above, we conclude that Mr. Malecek has
`
`sufficient legal and technical qualifications to represent Sequenom in this
`
`proceeding, and that there is a need for Sequenom to have counsel involved in the
`
`related district court litigation involved in this proceeding. See IPR2013-00639,
`
`Paper 7, dated October 15, 2013 (superseding IPR2013-00010, Paper 6, dated
`
`October 15, 2012, and setting forth the requirements for pro hac vice admission)
`
`(copy available on the Board Web site under “Representative Orders, Decisions,
`
`and Notices”). Accordingly, Sequenom has established good cause for Mr.
`
`Malecek’s pro hac vice admission. Mr. Malecek will be permitted to appear pro
`
`hac vice in the instant proceeding as back-up counsel only. See 37 C.F.R.
`
`§ 42.10(c).
`
`
`
`
`
`
`
`For the foregoing reasons, it is
`
`ORDERED that Sequenom’s motion for pro hac vice admission of
`
`Mr. Malecek for the instant proceeding is granted; Mr. Malecek is authorized to
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`represent Sequenom as back-up counsel in the instant proceeding;
`
`
`
`FURTHER ORDERED that Sequenom is to continue to have a registered
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`practitioner as lead counsel in the instant proceeding;
`
`
`
`FURTHER ORDRED that Mr. Malecek is to comply with the Office Patent
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`Trial Practice Guide and the Board’s Rules of Practice for Trials, as set forth in
`
`Title 37, Part 42 of the Code of Federal Regulations; and
`
`
`
`FURTHER ORDERED that Mr. Malecek is to be subject to the Office’s
`
`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.
`
`
`
`
`
`
`
`3
`
`
`
`Case IPR2013-00390
`Patent 8,195,415 B2
`
`
`
`For PETITIONER:
`
`Steven P. O’Connor
`Michele C. Bosch
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P.
`steven.oconnor@finnegan.com
`michele.bosch@finnegan.com
`
`For PATENT OWNER:
`
`R. Danny Huntington
`Sharon E. Crane, Ph.D.
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`dhuntington@rfem.com
`scrane@rfem.com
`
`
`
`
`
`
`4
`
`
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