`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`MEDTRONIC, INC., AND MEDTRONIC VASCULAR, INC.
`Petitioners,
`
`v.
`
`TELEFLEX INNOVATIONS S.A.R.L.
`Patent Owner.
`
`
`
`
`Case IPR2020-00136
`Patent RE 45,776
`
`
`
`
`PATENT OWNER’S UNOPPOSED MOTION FOR
`PRO HAC VICE ADMISSION OF PETER M. KOHLHEPP
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Pursuant to the Notice in this case authorizing the parties to file motions for
`
`pro hac vice admission under 37 C.F.R. § 42.10(c), Patent Owner Teleflex hereby
`
`respectfully moves for the pro hac vice admission of Peter M. Kohlhepp due to his
`
`experience representing Patent Owner in other patent-related matters concerning
`
`the GuideLiner technology and his familiarity with the technical and substantive
`
`issues involved in this proceeding. The parties have conferred, and the Petitioner
`
`does not oppose this Motion.
`
`
`
`In support of this motion, Patent Owner states as follows:
`
`
`
`The Board may recognize counsel pro hac vice upon a showing of good
`
`cause, subject to the condition that lead counsel be a registered practitioner and to
`
`any other conditions the Board may impose. 37 C.F.R. § 42.10(c). A motion for
`
`pro hac vice admission may be granted where a party shows that “counsel is an
`
`experienced litigating attorney and has an established familiarity with the subject
`
`matter at issue in the proceeding.” Id.
`
`Good cause exists under 37 C.F.R. § 42.10(c) for the pro hac vice admission
`
`of Peter M. Kohlhepp as backup co-counsel in this matter. Mr. Kohlhepp has
`
`assisted in the representation of Teleflex in a related patent infringement action in
`
`the District of Minnesota (Civil Action. No. 19-cv-1760 (PJS/TNL), filed July 2,
`
`2019) involving the same parties and the same patent at issue in this proceeding.
`
`Mr. Kohlhepp has also assisted the lead counsel representing the Patent Owner in
`
`this IPR, Mr. Vandenburgh. As a result of these experiences, Mr. Kohlhepp has
`
`developed an intimate familiarity with the patents at issue and the Petitioner’s
`
`validity challenges, and the Patent Owner wishes to have Mr. Kohlhepp continue
`
`representing it in this matter before the Board.
`
`In addition, Mr. Kohlhepp has previously been admitted pro hac vice and
`
`participated in other IPR proceedings, developing a familiarity with IPR statutes,
`
`regulations, and practice in the process.
`
`
`
`
`
`The Patent Owner has invested significant financial resources in the related
`
`proceedings described above. If this motion was denied, the Patent Owner would
`
`be prejudiced because it would have to undertake the burdensome and costly task
`
`of educating another attorney regarding the patent at issue in this proceeding, and
`
`the related evidence. The Patent Owner respectfully requests that the Board avoid
`
`this prejudice and grant this Motion.
`
`
`
`Pursuant to the requirements of 37 C.F.R. § 42.10(c), Derek Vandenburgh, a
`
`registered practitioner, will remain as lead counsel in this matter. Mr. Vandenburgh
`
`is a partner at Carlson Caspers, the same law firm that is representing the Patent
`
`Owner in the related federal court action involving the patent at issue here, as well
`
`as the patents at issue in the related instituted inter partes review proceedings. Mr.
`
`Kohlhepp has worked with Mr. Vandenburgh on other similar matters.
`
`
`
`Pursuant to the order in this IPR authorizing motion for pro hac vice and the
`
`requirements of the “Order -- Authorizing Motion for Pro Hac Vice Admission”
`
`Case IPR2013-00639, Paper 7, this Motion is also supported by the Declaration of
`
`Peter M. Kohlhepp (Exhibit 2088), filed herewith.
`
`In the Declaration of Peter M. Kohlhepp (Ex. 2088), Mr. Kohlhepp attests
`
`that he has read and will comply with the Patent Office Trial Practice Guide and
`
`the Board’s Rules of Practice set forth in 35 C.F.R. § 42. Mr. Kohlhepp further
`
`attests that he agrees to be subject to the USPTO’s Rules of Professional Conduct
`
`
`
`as set forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction under 37
`
`C.F.R. § 11.19(a).
`
`
`
`For the foregoing reasons, and in view of the Declaration submitted
`
`herewith, Patent Owner submits that good cause exists for the pro hac vice
`
`admission of Peter M. Kohlhepp and respectfully requests that the Board grant this
`
`motion.
`
`Dated: August 19, 2020.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`/J. Derek Vandenburgh/
`J. Derek Vandenburgh (Lead Counsel)
`Registration No. 32,179
`Carlson, Caspers, Vandenburgh
` & Lindquist, P.A.
`225 South Sixth Street, Suite 4200
`Minneapolis, MN 55402
`Telephone: (612) 436-9600
`Facsimile: (612) 436-9650
`Email: DVandenburgh@carlsoncaspers.com
`
`Lead Counsel for Patent Owner
`
`
`
`
`
`
`CERTIFICATION OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e) and the agreement of the parties, the
`
`
`
`undersigned certifies that on August 19, 2020, a true and correct copy of the
`
`foregoing Patent Owner’s Unopposed Motion for Pro Hac Vice Admission of Peter
`
`M. Kohlhepp, along with the accompanying Exhibit 2088, was served via
`
`electronic mail upon the following:
`
`Cyrus A. Morton (Reg. No. 44,954)
`Sharon Roberg-Perez (Reg. No. 69,600)
`Christopher A. Pinahs (Reg. No. 76,375)
`Robins Kaplan LLP
`800 LaSalle Avenue, Suite 2800
`Minneapolis, MN 55401
`Phone: 349-8500
`Fax: 612-339-4181
`Email: Cmorton@robinskaplan.com
`Email: Sroberg-perez@robinskaplan.com
`Email: Cpinahs@robinskaplan.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/J. Derek Vandenburgh/
`J. Derek Vandenburgh (Lead Counsel)
`
`