`Tel: 571-272-7822
`
`Paper 10
`Entered: July 9, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MEDTRONIC, INC., MEDTRONIC VASCULAR, INC. AND
`MEDTRONIC COREVALVE, LLC
`Petitioner
`
`v.
`
`TROY NORRED
`Patent Owner
`
`Case IPR2014-00823
`Patent 6,482,228 B1
`
`
`
`
`
`
`
`
`
`Before SHERIDAN K. SNEDDEN, BARRY L. GROSSMAN, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`WEATHERLY, Administrative Patent Judge.
`
`ORDER
`Authorizing Admission Pro Hac Vice
`37 C.F.R § 42.10
`
`Patent Owner Troy R. Norred (“Patent Owner”) moves for admission
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`pro hac vice of Mr. David L. Marcus.1 Paper 6. Patent Owner provides a
`
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`1 Authorization for such motion was given in the Notice mailed June 9,
`2014, (Paper 4).
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`
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`
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`Case IPR2014-00823
`Patent 6,482,228 B1
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`declaration from Mr. Marcus in support of its motion.2 The motion is
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`unopposed. For the reasons stated below, the 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, when 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. The Board requires the moving party to provide a
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`statement of facts showing that good cause exists for the Board to recognize
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`counsel pro hac vice and an affidavit or declaration of the individual seeking
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`to appear. See IPR 2013-00639 (Paper 7).
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`In its motion, Patent Owner argues that good cause exists for Mr.
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`Marcus’s pro hac vice admission because he is an experienced litigation
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`attorney and has an established familiarity with the subject matter at issue in
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`this inter partes review. Paper 6 at 2. Specifically, Mr. Marcus is counsel
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`for Patent Owner in Troy R. Norred, M.D. v. Medtronic, Inc., et al., Case
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`No. 13-CV-2061 EFM/DJW filed in the United States District Court for the
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`District of Kansas. Id. at 1–2. In his declaration, Mr. Marcus attests that:
`
`(1)
`
`(2)
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`he is “authorized to practice law in the States of
`Missouri, Kansas and Arizona;”
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`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;”
`
`
`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 2001–999. See 37 C.F.R. § 42.63 (c).
`
`2
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`Case IPR2014-00823
`Patent 6,482,228 B1
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`(3)
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`(4)
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`he is “currently admitted pro hac vice to appear before
`the Patent Trial and Appeal Board in Case Nos.
`IPR2014-00110, IPR2014-00111 and IPR2014-00395;”
`
`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.F.R.” 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
`
`(5)
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`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.”
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`Ex. 2001, ¶¶ 1–4. We observe also that Patent Owner’s lead counsel in this
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`proceeding, James J. Kernell, is a registered practitioner. Paper 3, 2.
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`Based on the facts set forth above, we conclude that Mr. Marcus has
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`sufficient qualifications to represent Patent Owner in this inter partes review
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`proceeding and that good cause exists for Patent Owner to have its counsel
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`in the related litigation involved in such proceedings. Accordingly, we will
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`permit Mr. Marcus to appear pro hac vice in IPR2014-00823 as back-up
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`counsel only. See 37 C.F.R. § 42.10(c).
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`Accordingly, it is:
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`ORDERED that Patent Owner’s motion for pro hac vice admission is
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`granted and Mr. David L. Marcus is authorized to represent Patent Owner as
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`back-up counsel in IPR2014-00823;
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`FURTHER ORDERED that Patent Owner shall continue to designate
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`a registered practitioner as lead counsel in this inter partes review
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`proceeding;
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`3
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`Case IPR2014-00823
`Patent 6,482,228 B1
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`FURTHER ORDERED that Mr. Marcus shall comply with the Office
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`Patent Trial Practice Guide and the Board’s Rules of Practice for Trials, as
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`set forth in Title 37, Part 42 of the Code of Federal Regulations; and
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`FURTHER ORDERED that Mr. Marcus is subject to the Office’s
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`disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and the USPTO 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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`Case IPR2014-00823
`Patent 6,482,228 B1
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`PETITIONER:
`
`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 (pro hac pending)
`BARTLE & MARCUS LLC
`dmarcus@bmlawkc.com
`
`5
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