Paper No. 33
`
`Trials@uspto.gov
`571.272.7822
` Entered: September 19, 2019
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01247 (Patent 8,479,969 B2)
`Case IPR2018-01248 (Patent 8,479,969 B2)
` Case IPR2018-01254 (Patent 8,479,969 B2)1
`____________
`
`
`
`Before JOSIAH C. COCKS, BENJAMIN D. M. WOOD, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`MEYERS, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Petitioner’s Motions for Admission
`Pro Hac Vice of Roger A. Denning
`37 C.F.R. § 42.10
`
`
`
`
`1 Because this Order addresses issues that are the same in each of the
`proceedings, we issue one Order to be entered in each proceeding. The
`parties are not authorized to use this caption unless later permitted.
`
`
`
`
`
`Trials@uspto.gov
`571.272.7822
` Entered: September 19, 2019
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01247 (Patent 8,479,969 B2)
`Case IPR2018-01248 (Patent 8,479,969 B2)
` Case IPR2018-01254 (Patent 8,479,969 B2)1
`____________
`
`
`
`Before JOSIAH C. COCKS, BENJAMIN D. M. WOOD, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`MEYERS, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Petitioner’s Motions for Admission
`Pro Hac Vice of Roger A. Denning
`37 C.F.R. § 42.10
`
`
`
`
`1 Because this Order addresses issues that are the same in each of the
`proceedings, we issue one Order to be entered in each proceeding. The
`parties are not authorized to use this caption unless later permitted.
`
`
`
`
`
`IPR2018-01247 (Patent 8,479,969 B2)
`IPR2018-01248 (Patent 8,479,969 B2)
`IPR2018-01254 (Patent 8,479,969 B2)
`
`On September 12, 2019, Petitioner filed Motions for Admission Pro
`Hac Vice of Roger A. Denning in the above-referenced proceedings
`(collectively, “Motions”). Paper 31.2 Petitioner also filed Declarations of
`Mr. Denning in support of the Motions (collectively, “Declarations”).
`Ex. 1028. Petitioner represents that Patent Owner does not oppose the
`Motions. Paper 31, 1. For the reasons provided below, Petitioner’s Motions
`are granted.
`Pursuant to 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. In its notice
`authorizing motions for pro hac vice admission, the Board requires 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. See Paper 5, 2 (citing Unified Patents, Inc. v.
`Parallel Iron, LLC, Case IPR2013-00639 (PTAB Oct. 15, 2013) (Paper 7)
`(representative “Order – Authorizing Motion for Pro Hac Vice
`Admission”)).
`Based on the facts set forth in the Motions and the accompanying
`Declarations, we conclude that Mr. Denning has sufficient legal and
`technical qualifications to represent Petitioner in the above-referenced
`proceedings, that Mr. Denning has demonstrated sufficient familiarity with
`the subject matter of the above-referenced proceedings, and that Petitioner’s
`
`
`2 Paper and exhibit numbers refer to IPR2018-01247. Corresponding
`Motions and Declarations were filed in IPR2018-01248 and IPR2018-01254.
`
`2
`
`
`
`IPR2018-01247 (Patent 8,479,969 B2)
`IPR2018-01248 (Patent 8,479,969 B2)
`IPR2018-01254 (Patent 8,479,969 B2)
`
`intent to be represented by counsel with litigation experience is warranted.3
`Accordingly, Petitioner has established good cause for pro hac vice
`admission of Mr. Denning. Mr. Denning will be permitted to serve as back-
`up counsel only. See 37 C.F.R. § 42.10(c).
`Petitioner’s Power of Attorney does not list Mr. Denning as counsel.
`Paper 1. Accordingly, Petitioner must submit a Power of Attorney for Mr.
`Denning in accordance with 37 C.F.R. § 42.10(b), and must update its
`mandatory notices as required by 37 C.F.R. § 42.8(b)(3).
`Accordingly, it is:
`ORDERED that Petitioner’s Motions for pro hac vice admission of
`Mr. Roger A. Denning are granted;
`FURTHER ORDERED that Petitioner is to continue to have a
`registered practitioner represent it as lead counsel for the above-referenced
`proceedings;
`FURTHER ORDERED that Mr. Denning is authorized to represent
`Petitioner only as back-up counsel in the above-referenced proceedings;
`FURTHER ORDERED that Mr. Denning is to comply with the Office
`Patent Trial Practice Guide, as updated by the July 2019 Update,
`84 Federal Register 33,925 (July 16, 2019), and the August 2018 Update,
`
`
`3 The Declarations fail to attest Mr. Denning has sufficient familiarity with
`the subject matter of these proceedings (Ex. 1028), although this familiarity
`is indicated in the Motions (Paper 31, 1–2). We treat the omission in the
`Declarations as harmless error, as this familiarity is indicated in the Motions.
`However, we remind Petitioner that “a motion for pro hac vice admission
`must: . . . [b]e accompanied by an affidavit or declaration of the individual
`seeking to appear attesting to . . . [inter alia] . . . [f]amiliarity with the
`subject matter at issue in the proceeding.” Order – Authorizing Motion for
`Pro Hac Vice Admission, 3 (emphasis added).
`
`3
`
`
`
`IPR2018-01247 (Patent 8,479,969 B2)
`IPR2018-01248 (Patent 8,479,969 B2)
`IPR2018-01254 (Patent 8,479,969 B2)
`
`83 Federal Register 39,989 (Aug. 13, 2018), and the Board’s Rules of
`Practice for Trials, as set forth in Part 42 of Title 37, Code of Federal
`Regulations;4
`FURTHER ORDERED that Mr. Denning shall be subject to the
`Office’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.;
`
`FURTHER ORDERED that, within ten (10) business days of the date
`of this Order, Petitioner must submit a Power of Attorney for Mr. Denning
`in the above-referenced proceedings in accordance with 37 C.F.R.
`§ 42.10(b); and
`FURTHER ORDERED that Petitioner shall file an updated
`Mandatory Notice in the above-referenced proceedings in accordance with
`37 C.F.R. § 42.8(b)(3), identifying Mr. Denning as back-up counsel.
`
`
`4 In the Declarations, Mr. Denning indicates compliance “with the Office
`Patent Trial Practice Guide and the Board’s Rules of Practice for Trials set
`forth in Part 42 of the Code of Federal Regulations,” as opposed to Part 42
`of Title 37, Code of Federal Regulations. Ex. 1028 ¶ 8. We deem this
`harmless error.
`
`4
`
`
`
`IPR2018-01247 (Patent 8,479,969 B2)
`IPR2018-01248 (Patent 8,479,969 B2)
`IPR2018-01254 (Patent 8,479,969 B2)
`
`
`PETITIONER:
`
`Steven Katz
`John Phillips
`Ryan O'Connor
`FISH & RICHARDSON P.C.
`katz@fr.com
`phillips@fr.com
`oconnor@fr.com
`
`
`
`PATENT OWNER:
`
`Anish Desai
`Elizabeth Weiswasser
`Adrian Percer
`Christopher Marando
`Christopher Pepe
`WEIL, GOTSHAL & MANGES LLP
`anish.desai@weil.com
`elizabeth.weiswasser@weil.com
`adrian.percer@weil.com
`christopher.marando@weil.com
`christopher.pepe@weil.com
`
`
`5
`
`
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