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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`NUVASIVE, INC.
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`Petitioner
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`V.
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`WARSAW ORTHOPEDIC, INC.
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`Patent Owner
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`Case IPR2013-00395
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`Patent No. 8,444,696
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`MOTION FOR PRO HAC VICE ADMISSION
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`UNDER 37 C.F.R. § 42.10
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`Mail Step “PATENT BOARD”
`Patent Trial and Appeal Board
`US. Patent and Trademark Office
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`PO. Box 1450
`Alexandria, VA 22313-1450
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`
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`The Patent Owner (“Warsaw”) respectfully requests that the Board
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`recognize Mr. Luke L. Dauchot as counsel pro hac vice during this proceeding.
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`Warsaw seeks Mr. Dauchot's assistance because of his experience assisting
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`Warsaw on patent-related matters and his experience on the substantive and
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`technical issues involved in this proceeding. This motion is authorized by the
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`Notice of Filing Date Accorded to Petition and Time for Filing Patent Owner
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`Preliminary Response mailed on July 1, 2013. See Notice, Paper 6 at 3.
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`1.
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`Statement of Facts
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`Mr. Dauchot is an experienced patent litigation attorney, with over 20 years
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`of experience in discovery, jury and bench trials, Markman hearings, and appellate
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`oral arguments in patent infringement matters. Mr. Dauchot is a member of the
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`American Bar Association (Intellectual Property Law and Litigation Sections),
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`American Intellectual Property Law Association, International Bar Association,
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`Los Angeles Intellectual Property Law Association, and Judge Paul R. Michel
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`Intellectual Property American Inn of Court (Executive Committee member). Mr.
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`Dauchot's biography, including a list of representative cases, distinctions,
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`publications, and professional activities, is attached as Exhibit A to Exhibit 2001.
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`Mr. Dauchot was granted pro hac vice admission by the Board in two
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`separate proceedings related to U.S. Patent No. 8,251,997 (IPR2013-00206 and
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`IPR2013-00208). Like the ’997 patent in those proceedings, here U.S. Patent No.
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`8,444,696 (the “’696 patent”) is currently asserted against Petitioner NuVasive,
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`Inc. in a co—pending litigation, Warsaw Orthopedic, Inc., et al. v. NuVasive, Inc.,
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`Case No. 3:12-CV-02738-CAB (MDD) (S.D. Cal.) (the “co—pending litigation”).
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`The ’696 patent was added to this co-pending litigation by an Order dated July 24,
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`2013. Mr. Dauchot is lead counsel for Warsaw in the co—pending litigation and, as
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`such, has an established familiarity with the subject matter at issue in this
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`proceeding. Mr. Dauchot is also lead counsel in the related matter of Medtronic v.
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`NuVasive, Case No. 3:08-cv-01512-MMA-AJB (SD. Cal.) (the “related
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`litigation”).
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`In the related litigation, Mr. Dauchot deposed and examined at trial
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`the declarant relied upon by Petitioner, who is also an author of multiple prior art
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`references in the instituted grounds. Accordingly, Patent Owner has expended
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`significant financial resources in the co-pending and related litigations with Mr.
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`Dauchot as lead counsel, and Patent Owner wishes to continue using Mr. Dauchot
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`as counsel in this proceeding.
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`Therefore, there is good cause for the Board to recognize Mr. Dauchot as
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`counsel pro hac vice during this proceeding.
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`2.
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`Affidavit or Declaration of Individual Seeking to Appear
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`This Motion for Pro Hac Vice Admission is accompanied by an Affidavit of
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`Mr. Luke L. Dauchot as required by the Order Authorizing Motion for Pro Hac
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`Vice entered July 1, 2013. The affidavit is submitted as Exhibit 2001.
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`Dated: February 11, 2014
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`Respectfully Submitted,
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` omas H. Martin
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`Registration No. 34,383
`Attorney for Patent Owner
`MARTIN & FERRARO, LLP
`1557 Lake O’Pines Street, NE
`Hartville, Ohio 44632
`Telephone: (330) 877-0700
`Facsimile:
`(330) 877-2030
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`
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of this Motion for Pro Hac
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`Vice Admission and copy of the Affidavit of Mr. Luke L. Dauchot in Support of
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`Motion for Pro Hac Vice Admission was served in its entirety via electronic mail
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`to APSI@fr.com (referencing Attorney Docket No. 13958-0113IP1; and cc’ing
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`schaefer@fr.com and hawkins@fr.com):
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`Stephen R. Schaefer
`3200 RBC Plaza
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`60 South Sixth Street
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`Michael T. Hawkins
`3200 RBC Plaza
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`60 South Sixth Street
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`Minneapolis, MN 55402
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`Minneapolis, MN 55402
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`Date of Service:
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`February 11, 2014
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`/‘
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`Signature:
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`/’
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`_
`._
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`Thomas H. Martin, Reg. No. 34,383
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`