UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`INTUITIVE SURGICAL, INC.,
`Petitioner,
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`v.
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`ETHICON LLC,
`Patent Owner.
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`Case IPR2018-01247
`Patent 8,479,969
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`PETITIONER’S UNOPPOSED MOTION FOR PRO HAC VICE
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`ADMISSION OF ROGER A. DENNING
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`UNDER 37 C.F.R. § 42.10(c)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`INTUITIVE SURGICAL, INC.,
`Petitioner,
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`v.
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`ETHICON LLC,
`Patent Owner.
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`Case IPR2018-01247
`Patent 8,479,969
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`PETITIONER’S UNOPPOSED MOTION FOR PRO HAC VICE
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`ADMISSION OF ROGER A. DENNING
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`UNDER 37 C.F.R. § 42.10(c)
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`Proceeding No.: IPR2018-01247
`Attorney Docket: 11030-0049IP5
`PETITIONER’S UPDATED EXHIBIT LIST
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`IS1001
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`U.S. Pat. No. 8,479,969 to Shelton, IV (“the ’969 Patent”)
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`IS1002
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`Prosecution History of the ’969 Patent (Serial No. 13/369,609)
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`IS1003
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`Reserved
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`IS1004
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`Declaration of Dr. Bryan Knodel (Anderson as Primary
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`Reference)
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`IS1005
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`Reserved
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`IS1006
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`Reserved
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`IS1007
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`U.S. Patent No. 6,817,974 to Cooper et al. (“Cooper”)
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`IS1008
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`U.S. Patent No. 6,699,235 to Wallace et al. (“Wallace”)
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`IS1009
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`U.S. Patent No. 6,331,181 to Tierney et al. (“Tierney”)
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`IS1010
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`U.S. Patent No. 6,783,524 to Anderson et al. (“Anderson”)
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`IS1011
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`U.S. Patent No. 7,510,107 to Timm et al. (“Timm”)
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`IS1012
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`U.S. Patent No. 5,465,895 to Knodel et al. (“Knodel”)
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`IS1013
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`U.S. Patent No. 5,954,259 to Viola et al. (“Viola”)
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`IS1014
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`U.S. Patent App. No. 2008/0167672 to Giordano et al.
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`(“Giordano”)
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`IS1015
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`Reserved
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`IS1016
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`Reserved
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`i
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`Proceeding No.: IPR2018-01247
`Attorney Docket: 11030-0049IP5
`Supplemental Declaration of Dr. Bryan Knodel
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`IS1017
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`(“Knodel Supp. Decl.”)
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`IS1018
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`Reserved
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`IS1019
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`June 17, 2019 Deposition of Shorya Awtar for IPR2018-01247
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`(“Awtar Dep. I”)
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`IS1020
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`U.S. Pat. No. 9,820,768 to Gee et al. (“Gee”)
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`IS1021
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`Reserved
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`IS1022
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`Reserved
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`IS1023
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`June 6, 2019 Deposition of Frank Fronczak for IPR2018-00936
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`(“Fronczak Dep.”)
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`IS1024
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`Reserved
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`IS1025
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`Reserved
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`IS1026
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`District Court Complaint in Ethicon LLC et al. v. Intuitive Surgical,
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`Inc. et al., 1:17-cv-00871-LPS filed June 30, 2017
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`IS1027
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`U.S. Pat. No. 7,524,320 to Tierney et al. (“Tierney 320”)
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`IS1028
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`Declaration of Roger A. Denning
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`ii
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`Proceeding No.: IPR2018-01247
`Attorney Docket: 11030-0049IP5
`Pursuant to 37 C.F.R. § 42.10(c), Petitioner, Intuitive Surgical, Inc.
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`(“Petitioner”) respectfully requests that the Board recognize Roger A. Denning as
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`counsel pro hac vice in this proceeding. Petitioner seeks the counsel of Mr.
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`Denning due to his experience in representing Intuitive Surgical, Inc. in other
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`patent-related matters and particularly due to his familiarity with the substantive
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`and technical issues involved in this proceeding. This motion is authorized by the
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`Notice of Filing Date Accorded to Petition and Time for Filing Patent Owner
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`Preliminary Response that was mailed on July 17, 2018.
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`Patent Owner does not oppose this motion.
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`Statement of Facts
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`Mr. Denning is a patent litigation attorney with more than 20 years of
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`experience representing clients in patent cases involving medical devices, software,
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`micro-electronics, and life sciences. Mr. Denning litigates patent cases before
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`various federal courts. Through his years of practice, Mr. Denning has gained
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`substantial experience in jury trials, discovery, Markman hearings, and appeals.
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`His declaration provides Appendix A, as evidence, with additional details of Mr.
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`Denning’s biography.
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`Mr. Denning also has particular experience and familiarity with the
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`substantive and technical issues involved in this inter partes review proceeding.
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`Mr. Denning is counsel for Petitioner in International Trade Commission
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`1
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`Proceeding No.: IPR2018-01247
`Attorney Docket: 11030-0049IP5
`Investigation No. 337-TA-1167, which includes U.S. Patent No. 8,479,969, the
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`patent at issue in this inter partes review proceeding.
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`Declaration of Individual Seeking to Appear
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`This Motion for Pro Hac Vice Admission is accompanied by a Declaration
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`of Roger A. Denning.
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`Accordingly, Intuitive Surgical, Inc. submits that there is good cause under
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`37 C.F.R. § 42.10(c) for the Board to recognize Roger A. Denning as counsel pro
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`hac vice during this proceeding.
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`Dated: September 12, 2019
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`Respectfully submitted,
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` /Steven R. Katz/
`Steven Katz, Reg. No. 43,706
`John C. Phillips, Reg. No. 35,322
`Ryan O'Connor, Reg. No. 60,254
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 858-678-5070
`F: 877-769-7945
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`Attorneys for Petitioner
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`Proceeding No.: IPR2018-01247
`Attorney Docket: 11030-0049IP5
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e)(4), the undersigned certifies that on September
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`12, 2019, a complete and entire copy of this Petitioner’s Motion for Pro Hac Vice
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`and Exhibit 1028 were provided via email, to the Patent Owner by serving the
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`email correspondence addresses of record as follows:
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`Anish R. Desai
`Elizabeth Stotland Weiswasser
`Adrian Percer
`Christopher T. Marando
`Christopher M. Pepe
`Weil, Gotshal & Manges LLP
`767 Fifth Avenue
`New York, NY 10153
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`Email:
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`Ethicon.IPR.Service@weil.com
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`/Christine Rogers/
`Christine Rogers
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`(650) 839-5092
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