`571-272-7822
`
`Paper 35
`Date: March 17, 2016
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MAKO SURGICAL CORP.,
`Petitioner,
`v.
`BLUE BELT TECHNOLOGIES, INC. and
`CARNEGIE MELLON UNIVERSITY
`Exclusive Licensee and Patent Owner.
`____________
`
`Case IPR2015-00630
`Patent 6,205,411 B1
`____________
`
`
`
`Before SALLY C. MEDLEY, KEVIN F. TURNER, and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`
`
`
`Decision
`Motion for Pro Hac Vice Admission of Wesley E. Overson
`37 C.F.R. § 42.10
`
`
`
`
`
`
`
`IPR2015-00630
`Patent 6,205,411 B1
`
`
`Petitioner Mako Surgical Corp. filed a motion for pro hac vice admission of
`Mr. Wesley E. Overson. (“Mot.,” Paper 18). The motion is indicated as being
`unopposed by Patent Owner/Exclusive Licensee. For the reasons provided below,
`Petitioner’s motion is granted.
`As set forth in 37 C.F.R. § 42.10(c), 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. 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.” 37 C.F.R. § 42.10(c). In authorizing motions for pro hac vice
`admission, the Board also required 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 in this proceeding.
`In its motion, Petitioner asserts that there is good cause for Mr. Overson’s
`pro hac vice admission because: (1) Mr. Overson is an experienced litigator and is
`the lead counsel in the related Mako Surgical Corp. et al. v. Blue Belt
`Technologies Inc., No. 0:14-cv-61263-MGC (S.D. Fla.) litigation; and (2) Mr.
`Overson has an established familiarity with the subject matter at issue in the
`proceedings. Mot. 1–2. In support of the motion, Mr. Overson attests to these
`facts in his declaration with sufficient explanations. Paper 19.
`Based on the record, we find that Mr. Overson has sufficient legal and
`technical qualifications to represent Petitioner in the instant proceeding.
`Accordingly, Petitioner has established that there is good cause for Mr. Overson’s
`admission. Mr. Overson 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
`
`
`
`
`IPR2015-00630
`Patent 6,205,411 B1
`
`
`For the foregoing reasons, it is
`ORDERED that Petitioner’s motion for pro hac vice admission of Mr.
`Overson for the instant proceedings is granted; Mr. Overson is authorized to
`represent Petitioner as back-up counsel in the instant proceeding;
`FURTHER ORDERED that Petitioner is to continue to have a registered
`practitioner as lead counsel in the instant proceeding; and
`FURTHER ORDERED that Mr. Overson is to 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 to be subject to the Office’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).
`
`
`
`
`3
`
`
`
`
`IPR2015-00630
`Patent 6,205,411 B1
`
`PETITIONER:
`Matthew I. Kreeger
`Walter Wu
`MORRISON & FOESTER LLP
`mkreeger@mofo.com
`wwu@mofo.com
`
`
`
`PATENT OWNER / EXCLUSIVE LICENSEE:
`Brian Buroker
`Stuart Rosenberg
`GIBSON, DUNN & CRUTCHER LLP
`bburoker@gibsondunn.com
`srosenberg@gibsondunn.com
`
`Gregory Stark
`SCHWEGMAN LUNDBERG WOESSNER P.A.
`gstark@slwip.com
`
`Patrick McElhinny
`Mark Knedeisen
`K&L GATES LLP
`patrick.mcelhinny@klgates.com
`mark.knedeisen@klgates.com
`
`
`4