Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 8
`Entered: December 9, 2013
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MEDTRONIC, INC., MEDTRONIC VASCULAR, INC., and
`MEDTRONIC COREVALVE, LLC
`Petitioner
`
`v.
`
`TROY R. NORRED, M.D.
`Patent Owner
`____________
`
`Case IPR2014-00111
`Patent 6,482,228
`____________
`
`Before JOSIAH C. COCKS, SHERIDAN K. SNEDDEN, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`
`ORDER
`Authorizing Motion for Pro Hac Vice Admission
`37 C.F.R. § 42.10
`
`
`
`
`
`
`
`
`1
`
`
`571-272-7822
`
`
`
`
`
`Paper 8
`Entered: December 9, 2013
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MEDTRONIC, INC., MEDTRONIC VASCULAR, INC., and
`MEDTRONIC COREVALVE, LLC
`Petitioner
`
`v.
`
`TROY R. NORRED, M.D.
`Patent Owner
`____________
`
`Case IPR2014-00111
`Patent 6,482,228
`____________
`
`Before JOSIAH C. COCKS, SHERIDAN K. SNEDDEN, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`
`ORDER
`Authorizing Motion for Pro Hac Vice Admission
`37 C.F.R. § 42.10
`
`
`
`
`
`
`
`
`1
`
`
`
`IPR2014-00111
`Patent 6,482,228
`
`
`Patent Owner Troy R. Norred (“Patent Owner”) requests, via motion,
`pro hac vice admission of Mr. David L. Marcus.1 Paper 7. Patent Owner
`provides a declaration from Mr. Marcus in support of its motion.2 The
`motion is unopposed. For the reasons stated below, the motion is granted.
`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 and to any other conditions as the Board may
`impose.” 37 C.F.R. § 42.10(c). 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.” Id. 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. See IPR 2013-00639 (Paper 7).
`
`In its motion, Patent Owner argues that there is good cause for Mr.
`Marcus’s pro hac vice admission because he is an experienced litigation
`attorney and has an established familiarity with the subject matter at issue in
`these inter partes reviews. Paper 7 at 2. Specifically, Mr. Marcus is counsel
`for Patent Owner in Troy R. Norred, M.D. v. Medtronic, Inc., et al., Case
`
`
`1 Authorization for such motion was given in the Notice mailed November 6,
`2013 (Paper 3).
`
` 2
`
` The Board has assigned this declaration Exhibit number 2001. Patent
`Owner is reminded that a patent owner’s exhibits must be uniquely
`numbered sequentially in a range from 2001-2999. See 37 C.F.R.
`§ 42.63 (c).
`
`
`
`2
`
`
`
`(2)
`
`IPR2014-00111
`Patent 6,482,228
`
`No. 13-CV-2061 EFM/DJW filed in the United States District Court for the
`District of Kansas. Id. at 2-3. In his declaration, Mr. Marcus attests that:
`(1)
`he is “authorized to practice law in the States of
`Missouri, Kansas and Arizona”;
`he has “never been suspended or disbarred in any court,”
`and has “never had sanctions or contempt citations
`imposed on me by any court of administrative body.”
`(3) he has “read and will comply with the Office Patent Trial
`Practice Guide and the Board’s Rules of Practice for
`Trials, as set forth in part 42 of 37 C.F.R.,” and agrees to
`be “subject to the USPTO Rules of Practice for Trials set
`forth in part 42 of 37 C.FR.” and “the USPTO
`Professional Rules of Professional Conduct set forth in
`37 C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction
`under 37 C.F.R. § 11.19(a)”; and
`(4) he is “familiar with the subject matter at issue in this
`proceeding and have knowledge of the facts set forth in
`the Motion for Pro Hac Vice Admission.”
`Ex. 2001, ¶¶ 1-8. We observe also that Patent Owner’s lead counsel in this
`proceeding, Jack Barufka, is a registered practitioner. Paper 4, 2.
`Based on the facts set forth above, we conclude that Mr. Marcus has
`sufficient legal and technical qualifications to represent Patent Owner in this
`inter partes review proceeding and that there is a need for Patent Owner to
`have its counsel in the related litigation involved in such proceedings.
`Accordingly, Patent Owner has established good cause for Mr. Marcus’s pro
`hac vice admission. Mr. Marcus will be permitted to appear pro hac vice in
`IPR2014-00111 as back-up counsel only. See 37 C.F.R. § 42.10(c).
`Accordingly, it is:
`ORDERED that Patent Owner’s motion for pro hac vice admission is
`granted and Mr. David L. Marcus is authorized to represent Patent Owner as
`
`
`
`3
`
`
`
`IPR2014-00111
`Patent 6,482,228
`
`back-up counsel in IPR2014-00111;
`FURTHER ORDERED that Patent Owner is to continue to have a
`registered practitioner as lead counsel in this inter parte review proceeding;
`FURTHER ORDERED that Mr. Marcus is to comply with the Office
`Patent 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. Marcus is 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.
`
`
`
`4
`
`
`
`IPR2014-00111
`Patent 6,482,228
`
`PETITIONER:
`Jack Barufka
`jack.barufka@pillsburylaw.com
`
`Evan Finkel
`evan.finkel@pillsburylaw.com
`
`
`PATENT OWNER:
`
`James J. Kernell
`Erickson, Kernell, Derusseau & Kleypas, LLC
`jjk@kcpatentlaw.com
`
`
`
`
`5
`
`
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