Trials@uspto.gov
`571-272-7822
`
`
` Paper No. 10
`Entered: March 04, 2014
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MEDTRONIC, INC., MEDTRONIC VASCULAR, INC., and
`MEDTRONIC COREVALVE, LLC
`Petitioners
`
`v.
`
`TROY R. NORRED, M.D.
`Patent Owner
`____________
`
`Case IPR2014-00395
`Patent 6,482,228 B1
`____________
`
`Before WILLIAM V. SAINDON, MICHAEL R. ZECHER, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Patent Owner’s Motion for Pro Hac Vice Admission of David L. Marcus
`37 C.F.R. § 42.10
`
`
`
`
`
`571-272-7822
`
`
` Paper No. 10
`Entered: March 04, 2014
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MEDTRONIC, INC., MEDTRONIC VASCULAR, INC., and
`MEDTRONIC COREVALVE, LLC
`Petitioners
`
`v.
`
`TROY R. NORRED, M.D.
`Patent Owner
`____________
`
`Case IPR2014-00395
`Patent 6,482,228 B1
`____________
`
`Before WILLIAM V. SAINDON, MICHAEL R. ZECHER, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Patent Owner’s Motion for Pro Hac Vice Admission of David L. Marcus
`37 C.F.R. § 42.10
`
`
`
`
`
`
`Case IPR2014-00395
`Patent 6,482,228 B1
`
`
`Patent Owner filed a motion requesting pro hac vice admission of
`Mr. David L. Marcus. Paper 8. Patent Owner provided a declaration from
`Mr. Marcus in support of its motion, which was filed separately as Exhibit
`2100. For the reasons stated below, Patent Owner’s motion is GRANTED.
`DISCUSSION
`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, when 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 motions 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. Paper 5 at 3
`(referencing the “Order – Authorizing Motion for Pro Hac Vice Admission,”
`in IPR2013-00639, Paper 7 at 2-4).
`In its motion, Patent Owner argues that there is good cause for Mr.
`Marcus’s pro hac vice admission because he is an experienced litigating
`attorney and has established familiarity with the subject matter at issue in
`this proceeding. Paper 8 at 1-2. In particular, Patent Owner represents that
`this proceeding arises from and relates to Troy R. Norred, M.D. v.
`Medtronic, Inc. et al., No. 13-CV-2061 EFM/DJW filed in the United States
`District Court for District of Kansas, where Mr. Marcus is counsel for Patent
`Owner. Id. In his declaration, Mr. Marcus attests that:
`
`
`
`2
`
`
`
`Case IPR2014-00395
`Patent 6,482,228 B1
`
`
`(1)
`
`he is “duly authorized to practice law in the States of
`Missouri, Kansas, and Arizona” and “presently [is] in
`good standing and eligible to practice before [ten]
`courts”;
`he has “never been suspended or disbarred in any court,”
`“never been denied admission pro hac vice before any
`court or administrative body,” and “never had sanctions
`or contempt citations imposed on [him] by any court or
`administrative body”;
`he is “currently admitted pro hac vice to appear before
`the Patent Trial and Appeal Board in Case Nos.
`IPR2014-00110 and IPR2014-00111”;
`(4) he has “read and will comply with the Office Patent Trial
`Practice Guide and the Board’s Rules of Practice for
`Trials set forth in part 42 of the 37 C.F.R.,” and agrees to
`be “subject to the USPTO 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
`(5) he is “familiar with the subject matter at issue in this
`proceeding.”
`Ex. 2100 ¶¶ 1, 3-5, 7, and 8.
`Based on the facts set forth in support of the motion, we conclude that
`Mr. Marcus has sufficient legal and technical qualifications to represent
`Patent Owner in this proceeding, and that there is a need for Patent Owner to
`have its counsel in the related litigation involved in this proceeding.
`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
`this proceeding as back-up counsel only. See 37 C.F.R. § 42.10(c).
`
`(2)
`
`(3)
`
`
`
`3
`
`
`
`Case IPR2014-00395
`Patent 6,482,228 B1
`
`
`
`
`ORDER
`For the foregoing reasons, it is:
`ORDERED that Patent Owner’s motion for pro hac vice admission of
`Mr. David L. Marcus is GRANTED, and Mr. Marcus is authorized to
`represent Patent Owner only as back-up counsel in this proceeding;
`FURTHER ORDERED that Patent Owner must continue to have a
`registered practitioner as lead counsel in this 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 USPTO’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
`
`
`
`Case IPR2014-00395
`Patent 6,482,228 B1
`
`PETITIONERS:
`
`Jack Barufka
`Evan Finkel
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`jack.barufka@pillsburylaw.com
`evan.finkel@pillsburylaw.com
`
`
`
`PATENT OWNER:
`
`James J. Kernell
`ERICKSON, KERNELL, DERUSSEAU & KLEYPAS, LLC
`jjk@kcpatentlaw.com
`
`David L. Marcus
`BARTLE & MARCUS LLC
`dmarcus@bmlawkc.com
`
`
`
`
`
`5
`
`
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