Attorney Docket: 13958‐0113IP2
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`NUVASIVE, INC.
`Petitioner
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`v.
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`WARSAW ORTHOPEDICS, INC.
`Patent Owner
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`Case IPR2013-00396
`Patent No. 8,444,696
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`PETITIONER NUVASIVE, INC.’S
`MOTION FOR PRO HAC VICE ADMISSION
`UNDER 37 C.F.R. § 42.10(c)
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`NUVASIVE, INC.
`Petitioner
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`v.
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`WARSAW ORTHOPEDICS, INC.
`Patent Owner
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`Case IPR2013-00396
`Patent No. 8,444,696
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`PETITIONER NUVASIVE, INC.’S
`MOTION FOR PRO HAC VICE ADMISSION
`UNDER 37 C.F.R. § 42.10(c)
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Pursuant to 37 C.F.R. § 42.10(c), the Petitioner (“NuVasive”) respectfully
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`requests that the Board recognize Mr. Frank E. Scherkenbach as counsel pro hac
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`vice in this proceeding, and is also (under a separate motion) requesting the same
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`in a related proceeding (IPR2013-00395) on the same U.S. Patent No. 8,444,696.
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`NuVasive seeks the counsel of Mr. Scherkenbach due to his experience in
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`representing NuVasive in other patent-related matters and particularly due to his
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`familiarity with the substantive and technical issues involved in this proceeding.
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`This motion is authorized by the Notice of Filing Date Accorded to Petition and
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`Time for Filing Patent Owner Preliminary Response that was mailed on March 25,
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`2013. See Notice, Paper 3 at 2-3.
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`1. Statement of Facts
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`Mr. Scherkenbach is a patent litigation attorney with more than 20 years of
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`experience representing clients in cases involving medical devices, computer
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`software, and semiconductors. Mr. Scherkenbach regularly litigates patent cases
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`before the United States Court of Appeals for the Federal Circuit, various federal
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`district courts, and the International Trade Commission. Through his practice in
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`such cases, Mr. Scherkenbach has gained substantial experience in jury trials,
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`bench trials, discovery, Markman hearings, and appeals. Mr. Scherkenbach began
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`his legal career considering patent cases as a clerk for the Honorable Judge H.
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`Robert Mayer on the United States Court of Appeals for the Federal Circuit from
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`1989-1991. Previously, Mr. Scherkenbach was co-founder and Editor-in-Chief of
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`the Harvard Journal of Law & Technology. Today, Mr. Scherkenbach is active in
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`various bar organizations, including the Federal Circuit Bar Association, the
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`American Bar Association, the American Intellectual Property Law Association,
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`and he sits on the Federal Circuit Advisory Committee. NuVasive provides
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`Exhibit A, as evidence of Mr. Scherkenbach’s biography.
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`Mr. Scherkenbach also has particular experience and familiarity with the
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`substantive and technical issues involved in this inter partes review proceeding. In
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`two related matters, Mr. Scherkenbach is serving as lead counsel for NuVasive.
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`The first of these related matters, Warsaw Orthopedic, Inc., et al. v. Nuvasive, Inc.,
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`Case No. 3:12-cv-02738-CAB (MDD) (S.D. Cal.) is currently pending in district
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`court, which recently granted Patent Owner’s motion for leave to amend the
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`complaint to add U.S. Patent No. 8,444,696 to the case. In addition, there is
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`another earlier-filed related case, which is also currently pending in the district
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`court and is soon to be appealed to the Federal Circuit Court of Appeals, involving
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`related U.S. Patent Nos. 5,772,661 and 5,860,973, Warsaw Orthopedic, Inc., et al.
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`v. Nuvasive, Inc., Case No. 3:08-cv-01512-MMA-AJB (S.D. Cal.). In this case,
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`Mr. Scherkenbach oversaw representation of many phases of the litigation from
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`discovery through trial, and he will be involved in the Federal Circuit appeal on the
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`matter. NuVasive has invested significant financial resources in each of these
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`related matters in which Mr. Scherkenbach served as lead counsel. Moreover,
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`through his representation in the related matters, NuVasive has developed a
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`particular relationship with Mr. Scherkenbach such that NuVasive desires to
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`continue the relationship with Mr. Scherkenbach for the purpose of this
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`proceeding.
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`2. Affidavit 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. Frank E. Scherkenbach as required by the Order Authorizing Motion for Pro
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`Hac Vice mailed March 25, 2013.
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`Accordingly, NuVasive submits that there is good cause under 37 C.F.R. §
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`42.10(c) for the Board to recognize Mr. Scherkenbach as counsel pro hac vice
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`during this proceeding.
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`Date: October 31, 2013
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`Customer Number 26171
`Fish & Richardson P.C.
`Telephone: (612) 337-2508
`Facsimile: (612) 288-9696
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`Respectfully submitted,
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` /Michael T. Hawkins/
`Michael T. Hawkins
`Reg. No. 57,867
`Counsel for Petitioner
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq. and 42.105(b), the undersigned
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`certifies that on October 31, 2013, a complete and entire copy of this Motion for
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`Pro Hac Vice Admission and the supporting exhibits were provided via email to
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`the Patent Owner by serving the email correspondence addresses of record as
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`follows:
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`Thomas H.Martin
`Wesley C. Meinerding
`Martin & Ferraro, LLP
`1557 Lake O’Pines Street, NE
`Hartville, OH 44632
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`Email: tmartin@martinferraro.com
`Email: docketing@martinferraro.com
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`/Edward G. Faeth/
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`Edward G. Faeth
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 626-6420
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