Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
`
`
`
`Paper No. 11
`March 10, 2014
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZIMMER HOLDINGS, INC. and
`ZIMMER, INC.
`Petitioners
`
`v.
`
`BONUTTI SKELETAL INNOVATION, LLC
`Patent Owner
`____________
`
`Case IPR2014-00191
`Patent 7,837,736
`____________
`
`Before WILLIAM V. SAINDON, MICHAEL R. ZECHER, and
`RICHARD E. RICE, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Petitioners’ Motion for Pro Hac Vice Admission of Kenneth Liebman
`37 C.F.R. § 42.10
`
`
`
`
`571.272.7822
`
`
`
`
`
`
`
`
`
`Paper No. 11
`March 10, 2014
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZIMMER HOLDINGS, INC. and
`ZIMMER, INC.
`Petitioners
`
`v.
`
`BONUTTI SKELETAL INNOVATION, LLC
`Patent Owner
`____________
`
`Case IPR2014-00191
`Patent 7,837,736
`____________
`
`Before WILLIAM V. SAINDON, MICHAEL R. ZECHER, and
`RICHARD E. RICE, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Petitioners’ Motion for Pro Hac Vice Admission of Kenneth Liebman
`37 C.F.R. § 42.10
`
`
`
`
`
`Case IPR2014-00191
`Patent 7,837,736
`
`
`Petitioners filed a motion requesting pro hac vice admission of
`
`Kenneth Liebman. Paper 10. Petitioners provided a declaration of Mr.
`
`Liebman, filed separately as Exhibit 1011, in support of their motion. Patent
`
`Owner did not oppose Petitioners’ motion for pro hac vice admission of Mr.
`
`Liebman. For the reasons stated below, Petitioners’ 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. In authorizing a motion for pro hac vice admission, 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, e.g., “Order
`
`– Authorizing Motion for Pro Hac Vice Admission,” IPR2013-00639,
`
`Paper 7.
`
`In their motion, Petitioners argue that there is good cause for
`
`Mr. Liebman’s pro hac vice admission because he is an experienced
`
`litigation attorney and has an established familiarity with the subject matter
`
`at issue in this proceeding. Paper 10 at 3-4. In particular, Petitioners assert
`
`that Mr. Liebman is counsel of record in co-pending litigation styled Bonutti
`
`Skeletal Innovation LLC v. Zimmer Holdings, Inc. et al., No. 1:12-cv-1107-
`
`GMS (D. Del.), which involves the same patent at issue in this proceeding.
`
`Id. In his affidavit, Mr. Liebman attests that:
`
`
`
`2
`
`
`
`Case IPR2014-00191
`Patent 7,837,736
`
`
`(1)
`
`(2)
`
`he is “a member in good standing of the Bar of [the State
`of] Minnesota,” California, as well as a number of
`Federal Courts;
`
`he has “never been suspended or disbarred from practice
`before any court or administrative body,” “never had a
`court or administrative body deny [his] application for
`admission to practice,” and “never had any court impose
`sanctions or contempt citations against [him]”;
`
`(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 the C.F.R.,” and agrees to
`be “subject to the [USPTO’s] Code of Professional
`Responsibility set forth in 37 C.F.R. §§ 10.20 et.seq. and
`disciplinary jurisdiction under 37 C.F.R. § 11.19(a)”;
`
`(4)
`
`he has “been in private practice for 33 years, and
`litigating patent cases for over 20 years,” with “[s]everal
`of these patent litigations involv[ing] USPTO post-grant
`procedures”; and
`
`
`(5) he is “familiar with the subject matter at issue in this
`proceeding” and is “lead counsel for Petitioner” in the
`related litigation that “involves the same patent at issue in
`this proceeding.”
`
`Ex. 1011 ¶¶ 2-8, 10, and 11. Mr. Liebman was granted the right to appear
`
`pro hac vice in IPR2014-00321. Id. ¶ 9. Mr. Liebman also applied to
`
`appear pro hac vice in IPR2014-00311. Id.
`
`Based on the facts set forth in support of the motion, we conclude that
`
`Mr. Liebman has sufficient legal and technical qualifications to represent
`
`Petitioners in this proceeding, and that there is a need for Petitioners to have
`
`its counsel in the related litigations involved in this proceeding.
`
`Accordingly, Petitioners have established good cause for Mr. Liebman’s pro
`
`hac vice admission. Mr. Liebman will be permitted to appear pro hac vice
`
`in this proceeding as back-up counsel only. See 37 C.F.R. § 42.10(c).
`
`
`
`3
`
`
`
`Case IPR2014-00191
`Patent 7,837,736
`
`
`
`In consideration of the foregoing, it is
`
`ORDERED that Petitioners’ motion for pro hac vice admission of
`
`Kenneth Liebman is granted, and Mr. Liebman is authorized to represent
`
`Petitioners only as back-up counsel in this proceeding;
`
`FURTHER ORDERED that Petitioners should continue to have a
`
`registered practitioner as lead counsel in this proceeding;
`
`FURTHER ORDERED that Mr. Liebman 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. Liebman is subject to the USPTO’s
`
`disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and the USPTO’s Rules
`
`of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq.
`
`
`
`
`
`
`
`
`
`4
`
`
`
`Case IPR2014-00191
`Patent 7,837,736
`
`PETITIONER:
`
`Walter Linder
`patentdocket@faegrebd.com
`
`PATENT OWNER:
`
`Cary Kappel
`ckappel@ddkpatent.com
`
`William Gehris
`wgehris@ddkpatent.com
`
`
`
`5
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
