Trials@uspto.gov
`571-272-7822
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`Paper 10
`Entered: February 5, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZIMMER HOLDINGS, INC.
`ZIMMER, INC.
`Petitioners
`
`v.
`
`BONUTTI SKELETAL INNOVATION, LLC
`Patent Owner
`____________
`
`Case IPR2014-00321
`Patent 7,806,896 B1
`____________
`
`Before WILLIAM V. SAINDON, MICHAEL R. ZECHER, and
`RICHARD E. RICE, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
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`
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`
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`DECISION
`Petitioner’s Motion for Pro Hac Vice Admission of Kenneth Liebman
`37 C.F.R. § 42.10
`
`
`
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`571-272-7822
`
`
`
`
`Paper 10
`Entered: February 5, 2014
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZIMMER HOLDINGS, INC.
`ZIMMER, INC.
`Petitioners
`
`v.
`
`BONUTTI SKELETAL INNOVATION, LLC
`Patent Owner
`____________
`
`Case IPR2014-00321
`Patent 7,806,896 B1
`____________
`
`Before WILLIAM V. SAINDON, MICHAEL R. ZECHER, and
`RICHARD E. RICE, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Petitioner’s Motion for Pro Hac Vice Admission of Kenneth Liebman
`37 C.F.R. § 42.10
`
`
`
`
`
`Case IPR2014-00321
`Patent 7,806,896 B1
`
`
`Petitioner filed a motion requesting pro hac vice admission of
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`Kenneth Liebman. Paper 8. Petitioner provided a declaration of Mr.
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`Liebman, filed separately as Exhibit 1009, in support of its motion. Id. at 3-
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`5. Patent Owner did not oppose Petitioner’s motion for pro hac vice
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`admission of Mr. Liebman. For the reasons stated below, Petitioner’s
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`motion is granted.
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`The Board may recognize counsel pro hac vice during a proceeding
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`“upon a showing of good cause, subject to the condition that lead counsel be
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`a registered practitioner and to any other conditions as the Board may
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`impose.” 37 C.F.R. § 42.10(c). For example, where the lead counsel is a
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`registered practitioner, a non-registered practitioner may be permitted to
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`appear pro hac vice “upon showing that counsel is an experienced litigating
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`attorney and has an established familiarity with the subject matter at issue in
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`the proceeding.” Id. In authorizing a motion for pro hac vice admission, the
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`Board requires the moving party to provide a statement of facts showing
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`there is good cause for the Board to recognize counsel pro hac vice and an
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`affidavit or declaration of the individual seeking to appear. See, e.g., “Order
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`– Authorizing Motion for Pro Hac Vice Admission,” IPR2013-00639,
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`Paper 7.
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`In its motion, Petitioner argues that there is good cause for
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`Mr. Liebman’s pro hac vice admission because he is an experienced
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`litigation attorney and has an established familiarity with the subject matter
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`at issue in this proceeding. Paper 8 at 3-4. In particular, Petitioner asserts
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`that Mr. Liebman is counsel of record in co-pending litigation styled Bonutti
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`Skeletal Innovation LLC v. Zimmer Holdings, Inc. et al., No. 1:12-cv-1107-
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`GMS (D. Del.), which involves the same patent at issue in this proceeding.
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`2
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`Case IPR2014-00321
`Patent 7,806,896 B1
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`Id. In his affidavit, Mr. Liebman attests that:
`
`(1)
`
`(2)
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`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)
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`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.”
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`Ex. 1009 ¶¶ 1-11.
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`Based on the facts set forth in support of the motion, we conclude that
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`Mr. Liebman has sufficient legal and technical qualifications to represent
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`Petitioner in this proceeding, and that there is a need for Petitioner to have
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`its counsel in the related litigations involved in this proceeding.
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`Accordingly, Petitioner has established good cause for Mr. Liebman’s pro
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`hac vice admission. Mr. Liebman will be permitted to appear pro hac vice
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`in this proceeding as back-up counsel only. See 37 C.F.R. § 42.10(c).
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`
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`In consideration of the foregoing, it is
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`3
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`Case IPR2014-00321
`Patent 7,806,896 B1
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`ORDERED that Petitioner’s motion for pro hac vice admission of
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`Kenneth Liebman is granted, and Mr. Liebman is authorized to represent
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`Petitioner only as back-up counsel in this proceeding;
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`FURTHER ORDERED that Petitioner should continue to have a
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`registered practitioner as lead counsel in this proceeding;
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`FURTHER ORDERED that Mr. Liebman is to comply with the
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`Office Patent Trial Practice Guide and the Board’s Rules of Practice for
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`Trials, as set forth in Title 37, Part 42 of the Code of Federal Regulations;
`
`and
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`FURTHER ORDERED that Mr. Liebman is subject to the USPTO’s
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`disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and the USPTO’s Rules
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`of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq.
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`4
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`
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`Case IPR2014-00321
`Patent 7,806,896 B1
`
`Petitioner:
`
`Walter Linder
`Daniel Lechleiter
`patentdocketing@faegrebd.com
`
`Patent Owner:
`
`Cary Kappel
`ckappel@ddkpatent.com
`
`William Gehris
`wgehris@ddkpatent.com
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`5
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