Trials@uspto.gov
`571-272-7822
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` Paper 20
`Entered: 7 May 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MEDTRONIC, INC.
`Petitioner
`
`v.
`
`NUVASIVE, INC.
`Patent Owner
`____________
`
`Cases IPR2013-00506 (Patent 8,361,156)
`IPR2013-00507 (Patent 8,187,334)
`IPR2013-00508 (Patent 8,187,334)1
`
`____________
`
`Before SALLY C. MEDLEY, LORA M. GREEN, and STEPHEN C. SIU,
`Administrative Patent Judges.
`
`GREEN, Administrative Patent Judge.
`
`
`
`ORDER
`Patent Owner’s Motion for Pro Hac Vice Admission of
`Michael A. Amon
`37 C.F.R. § 42.10
`
`
`
`
`
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`1 This order addresses issues that are the same in the identified cases. We exercise
`our discretion to issue one order to be filed in each case. The parties, however, are
`not authorized to use this style heading in subsequent papers.
`
`

`

`IPR2013-00506 (Patent 8,361,156)
`IPR2013-00507 (Patent 8,187,334)
`IPR2013-00508 (Patent 8,187,334)
`
`
`Patent Owner, NuVasive Inc., (“Patent Owner”), timely filed Motions for
`
`Pro Hac Vice Admission of Michael A. Amon under 37 C.F.R. § 42.10(c),
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`(Papers 19, 15, and 17), 2 accompanied by the Declarations of Mr. Amon in support
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`of the Motions (Exhibits 2102, 2002, and 2102). Petitioner has not opposed. For
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`the reasons provided below, Patent Owner’s Motions are granted.
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`
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`As set forth in § 42.10(c), we may recognize counsel pro hac vice during a
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`proceeding upon a showing of good cause, subject to the conditions that lead
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`counsel be a registered practitioner. For example, where the lead counsel is a
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`registered practitioner, a non-registered practitioner may be permitted to appear
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`pro hac vice “upon showing that counsel is an experienced litigating attorney and
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`has an established familiarity with the subject matter at issue in the proceeding.”
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`37 C.F.R. § 42.10(c). In authorizing motions for pro hac vice admission, we also
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`require a statement of facts showing there is good cause for us to recognize counsel
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`pro hac vice and an affidavit or declaration of the individual seeking to appear in
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`this proceeding. See Papers 4, 3, and 3 (referencing the “Order – Authorizing
`
`Motion for Pro Hac Vice Admission,” in Motorola Mobility LLC v. Arnouse, Case
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`IPR2013-00010 (PTAB October 15, 2012) (Paper 6 at 3-4) (expanded panel)).
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`In its Motions, Patent Owner asserts that there is good cause for Mr. Amon’s
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`pro hac vice admission because: (1) Mr. Amon is an experienced litigation
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`attorney; and (2) Mr. Amon has an established familiarity with the subject matter
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`at issue in the instant proceeding, having served as counsel for NuVasive in related
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`litigation. Moreover, according to the Motions, “NuVasive has developed a
`
`
`2 All references to the papers and exhibits refer to the proceedings in numerical
`order; i.e., the first paper number refers to the paper number in IPR2013-00506, the
`second paper number refers to the paper number in IPR2013-00507, and the third
`paper number refers to the paper number in IPR2013-00508.
`
`
`
`2
`
`

`

`IPR2013-00506 (Patent 8,361,156)
`IPR2013-00507 (Patent 8,187,334)
`IPR2013-00508 (Patent 8,187,334)
`
`particular relationship with Mr. Amon such that NuVasive desires to continue the
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`relationship with Mr. Amon for the purpose of [these] proceeding[s].” Papers 19,
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`15, and 17 at 2-3. In support of the Motions, Mr. Amon attests to these facts in the
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`Declarations with sufficient explanations. Exhibits 2102, 2002, and 2102. In
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`addition to the foregoing, Patent Owner’s lead counsel, Stephen R. Schaefer, is a
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`registered practitioner. Papers 7, 5, and 5 at 3.
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`Based on the facts set forth above, we conclude that Mr. Amon has sufficient
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`legal and technical qualifications to represent Patent Owner in these proceedings.
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`See Unified Patents, Inc. v. Parallel Iron, LLC, Case IPR2013-00639 (PTAB
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`Oct. 15, 2013) (Paper 7) (expanded panel), (superseding IPR2013-00010, Paper 6,
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`dated October 15, 2012, and setting forth the requirements for pro hac vice
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`admission) (copy available on the Board Web site under “Representative Orders,
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`Decisions, and Notices”). Accordingly, Patent Owner has established good cause
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`for Mr. Amon’s pro hac vice admission. Mr. Amon will be permitted to appear
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`pro hac vice in the instant proceedings as back-up counsel only. See 37 C.F.R.
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`§ 42.10(c).
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`
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`
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`For the foregoing reasons, it is
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`ORDERED that Patent Owner’s Motion for Pro Hac Vice Admission of
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`Mr. Amon for the involved proceedings is granted; Mr. Amon is authorized to
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`represent Patent Owner as back-up counsel in the instant proceedings;
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`
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`FURTHER ORDERED that Patent Owner is to continue to have a registered
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`practitioner as lead counsel in the instant proceedings;
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`
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`FURTHER ORDRED that Mr. Amon 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
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`Title 37, Part 42 of the Code of Federal Regulations; and
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`
`
`3
`
`

`

`IPR2013-00506 (Patent 8,361,156)
`IPR2013-00507 (Patent 8,187,334)
`IPR2013-00508 (Patent 8,187,334)
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`
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`FURTHER ORDERED that Mr. Amon is to be subject to the Office’s
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`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 – 11.901.
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`
`For PETITIONER:
`
`Jeff Schwartz
`jeschwartz@foxrothschild.com
`
`Seth Kramer
`skramer@foxrothschild.com
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`For PATENT OWNER:
`
`Stephen Schaefer
`Schaefer@fr.com
`
`Michael Hawkins
`Hawkins@fr.com
`
`Stuart Nelson
`IPR13958-0116IP2@fr.com
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`4
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`