Trials@uspto.gov
`571-272-7822
`
`Paper 45
`Entered: October 28, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MEDTRONIC, INC. and MEDTRONIC VASCULAR, INC.,
`Petitioner,
`
`v.
`
`TELEFLEX INNOVATIONS S.À.R.L.,
`Patent Owner.
`____________
`
`IPR2020-00127 (Patent 8,048,032 B2)
`IPR2020-00130 (Patent RE45,380 E)
`IPR2020-00136 (Patent RE45,776 E)
`IPR2020-00138 (Patent RE47,379 E)1
`____________
`
`Before SHERIDAN K. SNEDDEN, JON B. TORNQUIST, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`
`ORDER
`Granting Petitioner’s Motions for Admission
`Pro Hac Vice of William E. Manske
`37 C.F.R. § 42.10
`
`
`
`
`1 This Order applies to all of the above-identified proceedings. We exercise
`our discretion to issue one Order to be filed in each case. The parties are not
`authorized to use this style heading for any subsequent papers.
`
`
`571-272-7822
`
`Paper 45
`Entered: October 28, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MEDTRONIC, INC. and MEDTRONIC VASCULAR, INC.,
`Petitioner,
`
`v.
`
`TELEFLEX INNOVATIONS S.À.R.L.,
`Patent Owner.
`____________
`
`IPR2020-00127 (Patent 8,048,032 B2)
`IPR2020-00130 (Patent RE45,380 E)
`IPR2020-00136 (Patent RE45,776 E)
`IPR2020-00138 (Patent RE47,379 E)1
`____________
`
`Before SHERIDAN K. SNEDDEN, JON B. TORNQUIST, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`
`ORDER
`Granting Petitioner’s Motions for Admission
`Pro Hac Vice of William E. Manske
`37 C.F.R. § 42.10
`
`
`
`
`1 This Order applies to all of the above-identified proceedings. We exercise
`our discretion to issue one Order to be filed in each case. The parties are not
`authorized to use this style heading for any subsequent papers.
`
`
`
`IPR2020-00127 (Patent 8,048,032 B2)
`IPR2020-00130 (Patent RE45,380 E)
`IPR2020-00136 (Patent RE45,776 E)
`IPR2020-00138 (Patent RE47,379 E)
`
`
`On October 13, 2020, Petitioner filed motions for admission pro hac
`vice of William E. Manske in each of the above-identified proceedings
`(collectively “Motions”). Paper 43.2 Petitioner also filed declarations of
`Mr. Manske in support of the Motions (collectively “Declarations”). Ex.
`1497.3 Petitioner states that Patent Owner does not oppose the Motions.
`Paper 43, 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 6, 2 (citing Unified Patents, Inc. v.
`Parallel Iron, LLC, IPR2013-00639, Paper 7 (PTAB Oct. 15, 2013)
`(representative “Order – Authorizing Motion for Pro Hac Vice
`Admission”)).
`Based on the facts set forth in the Motions4 and the accompanying
`Declarations, we conclude that Mr. Manske has sufficient legal and technical
`
`2 For purposes of expediency, we cite to Papers filed in IPR2020-00127.
`Petitioner filed similar Motions in IPR2020-00130 (Paper 42), IPR2020-
`00136 (Paper 42), and IPR2020-00138 (Paper 42).
`3 For purposes of expediency, we cite to Exhibits filed in IPR2020-00127.
`Petitioner filed similar Declarations in IPR 2020-00130 (Ex. 1497),
`IPR2020-00136 (Ex. 1497), and IPR2020-00138 (Ex. 1297).
`4 The Motions state that “Mr. Manske attests that he has read and will
`comply with the Patent Office Trial Practice Guide and the Board’s Rules of
`2
`
`
`
`
`
`IPR2020-00127 (Patent 8,048,032 B2)
`IPR2020-00130 (Patent RE45,380 E)
`IPR2020-00136 (Patent RE45,776 E)
`IPR2020-00138 (Patent RE47,379 E)
`
`qualifications to represent Petitioner in these proceedings, that Mr. Manske
`has demonstrated sufficient familiarity with the subject matter of these
`proceedings, and that Petitioner’s intent to be represented by counsel with
`litigation experience is warranted. Accordingly, Petitioner has established
`good cause for pro hac vice admission of Mr. Manske. Mr. Manske will be
`permitted to serve as back-up counsel only. See 37 C.F.R. § 42.10(c).
`On October 13, 2020, Petitioner filed an Updated Mandatory Notice
`in the above-identified proceedings identifying Emily J. Tremblay as back-
`up counsel and indicating that a motion for pro hac vice admission of
`Ms. Tremblay is “pending.” Paper 44, 1. On October 15, 2020, Petitioner
`indicated by e-mail correspondence that it does not intend to seek pro hac
`vice admission of Ms. Trembaly in the above-identified proceedings.
`Accordingly, Petitioner is directed to file an Updated Mandatory Notice
`correctly identifying back-up counsel in these proceedings.
`Accordingly, it is
`ORDERED that Petitioner’s Motions for pro hac vice admission of
`Mr. William E. Manske are granted;
`FURTHER ORDERED that Petitioner is to continue to have a
`registered practitioner represent it as lead counsel for the above-identified
`proceedings;
`
`
`Practice set forth in 35 C.F.R. § 42.” Paper 43, 2. The Office Patent Trial
`Practice Guide and the Board’s Rules of Practice for Trials are set forth in
`Part 42 of Title 37, Code of Federal Regulations. Because the Declarations
`properly cite to 37 C.F.R., we deem this harmless error.
`3
`
`
`
`
`
`IPR2020-00127 (Patent 8,048,032 B2)
`IPR2020-00130 (Patent RE45,380 E)
`IPR2020-00136 (Patent RE45,776 E)
`IPR2020-00138 (Patent RE47,379 E)
`
`
`FURTHER ORDERED that Mr. Manske is authorized to represent
`Petitioner only as back-up counsel in the above-identified proceedings;
`FURTHER ORDERED that Mr. Manske is to comply with the Office
`Patent Trial Practice Guide5 (84 Fed. Reg. 64,280 (Nov. 21, 2019)), and the
`Board’s Rules of Practice for Trials, as set forth in Part 42 of Title 37, Code
`of Federal Regulations;
`FURTHER ORDERED that Mr. Manske 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.; and
`FURTHER ORDERED that Petitioner shall file Updated Mandatory
`Notices removing Emily J. Tremblay as back-up counsel in the above-
`identified proceedings.
`
`
`
`
`
`
`
`5 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`4
`
`
`
`
`
`IPR2020-00127 (Patent 8,048,032 B2)
`IPR2020-00130 (Patent RE45,380 E)
`IPR2020-00136 (Patent RE45,776 E)
`IPR2020-00138 (Patent RE47,379 E)
`
`FOR PETITIONER:
`Cyrus Morton
`cmorton@robinskaplan.com
`Sharon Roberg-Perez
`sroberg-perez@robinskaplan.com
`Christopher Pinahs
`cpinahs@robinskaplan.com
`
`FOR PATENT OWNER:
`Derek Vandenburgh
`dvandenburgh@carlsoncaspers.com
`Dennis Bremer
`dbremer@carlsoncaspers.com
`
`
`
`5
`
`
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