`Date: February 25, 2014
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`Trials@uspto.gov
`571-272-7822
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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 IPR2013-00395
`Case IPR2013-003961
`Patent 8,444,696
`____________
`
`Before SALLY C. MEDLEY, LORA M. GREEN, and STEPHEN C. SIU,
`Administrative Patent Judges.
`
`SIU, Administrative Patent Judge.
`
`
`DECISION
`Motion for Pro Hac Vice Admission
`37 C.F.R. § 42.10
`
`
`1 This decision addresses an issue that is identical in each case. We, therefore,
`exercise our discretion to issue one Order to be filed in each case. Unless
`otherwise authorized, the parties, however, are not authorized to use this style
`heading for any subsequent papers. Citations and page references in the Order
`correspond to IPR2013-00395.
`
`
`
`
`
`IPR2013-00395; IPR2013-00396
`Patent 8,444,696
`
`
`
`
`I.
`
`
`BACKGROUND
`Warsaw Orthopedic, Inc. (“Warsaw”) filed a motion for pro hac vice
`admission of Mr. Luke L. Dauchot, and a motion for pro hac vice admission of
`Mrs. Nimalka R. Wickramasekera. Paper 15, 16. The motions are unopposed.
`The motions are granted.
`Pursuant to 37 C.F.R. § 42.10(c), the Board may recognize counsel pro hac
`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 6.
`In its motions, Warsaw states that there is good cause for the Board to
`recognize Mr. Dauchot and Mrs. Wickramasekera pro hac vice during this
`proceeding, because Mr. Dauchot and Mrs. Wickramasekera are experienced
`litigating attorneys with an established familiarity with the subject matter at issue
`in the proceeding. In addition, the motions state that Mr. Dauchot and Mrs.
`Wickramasekera are counsel for Warsaw in related litigation between Warsaw and
`NuVasive. Mr. Dauchot and Mrs. Wickramasekera each made an affidavit
`attesting to, and explaining, these facts. Exhibits 2001, 2002. The affidavits
`comply with the requirements set forth in the Notice.
`Upon consideration, Warsaw has demonstrated that Mr. Dauchot and Mrs.
`Wickramasekera have sufficient legal and technical qualifications to represent
`Warsaw in this proceeding. Moreover, the Board recognizes that there is a need
`for Warsaw to have related litigation counsel involved in this proceeding.
`
`2
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`
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`IPR2013-00395; IPR2013-00396
`Patent 8,444,696
`
`
`Accordingly, Warsaw has also established that there is good cause for admitting
`Mr. Dauchot and Mrs. Wickramasekera.
`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.
`Dauchot and Mrs. Wickramasekera are subject to the USPTO’s rules of
`Professional Conduct that took effect May 3, 2013.
`It is
`ORDERED that the Warsaw motions for pro hac vice admission of Mr.
`Dauchot and Mrs. Nimalka R. Wickramasekera for this proceeding are granted;
`FURTHER ORDERED that Warsaw is to continue to have a registered
`practitioner represent it as lead counsel for this proceeding; and
`FURTHER ORDERED that Mr. Dauchot and Mrs. Wickramasekera are to
`comply with the Office Patent Trial Practice Guide and the Board’s Rules of
`Practice for Trials, as set forth is Part 42 of Title 37, Code of Federal Regulations,
`and
`
`FURTHER ORDERED that Mr. Dauchot and Mrs. Wickramasekera 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.
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`3
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`IPR2013-00395; IPR2013-00396
`Patent 8,444,696
`
`For PETITIONER
`
`Stephen Schaefer
`Michael Hawkins
`Fish and Richardson PC
`schaefer@fr.com
`hawkins@fr.com
`
`
`For PATENT OWNER
`
`Thomas Martin
`Wesley Meinerding
`Martin and Ferraro LLP
`tmartin@martinferraro.com
`wmeinerding@martinferraro.com
`
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`4
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