`571-272-7822
`
`
`
`
`Paper 12
`Entered: October 1, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ILLUMINA, INC.,
`Petitioner,
`
`v.
`
`TRUSTEES OF COLUMBIA UNIVERSITY
`IN THE CITY OF NEW YORK,
`Patent Owner.
`____________
`
`IPR2020-00988 (Patent 10,407,458 B2)
`IPR2020-01065 (Patent 10,407,459 B2)
`IPR2020-01125 (Patent 10,457,984 B2)
`IPR2020-01177 (Patent 10,435,742 B2)
`IPR2020-01323 (Patent 10,428,380 B2)1
`____________
`
`Before ZHENYU YANG, JAMES A. WORTH, ROBERT A. POLLOCK,
`MICHELLE N. ANKENBRAND, and DEVON ZASTROW NEWMAN
`Administrative Patent Judges.2
`
`PER CURIAM
`
`DECISION
`Granting Petitioner’s Motion for Pro Hac Vice
`Admission of William R. Zimmerman
`37 C.F.R. § 42.10
`
`
`
`
`1 This Order applies to each of the above-listed proceedings. We exercise
`our discretion to issue one Order to be filed in each proceeding. Unless
`otherwise authorized, the parties shall not use this heading style in any
`subsequent papers.
`2 This is not a decision by an expanded panel.
`
`
`
`IPR2020-00988 (Patent 10,407,458 B2)
`IPR2020-01065 (Patent 10,407,459 B2)
`IPR2020-01125 (Patent 10,457,984 B2)
`IPR2020-01177 (Patent 10,435,742 B2)
`IPR2020-01323 (Patent 10,428,380 B2)
`
`
`Petitioner filed a Motion for Pro Hac Vice admission of
`William R. Zimmerman (Paper 8 (“Motion”))3 as well as a supporting
`declaration from Mr. Zimmerman (Exhibit 1124 (“Declaration”)) in each of
`the above-listed proceedings. Petitioner represents that Patent Owner does
`not oppose the Motion. Motion 1. For the following reasons, the Motion is
`granted.
`In accordance with 37 C.F.R. § 42.10(c), we may recognize counsel
`pro hac vice during a proceeding upon a showing of good cause. In
`authorizing a motion for pro hac vice admission, the Board requires the
`moving party to provide 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 the proceeding. See Unified Patents,
`Inc. v. Parallel Iron, LLC, IPR2013-00639, Paper 7 (PTAB Oct. 15, 2013).
`Having reviewed the Motion and supporting Declaration in each of
`the above-listed proceedings, good cause exists for granting admission pro
`hac vice to Mr. Zimmerman.
`Accordingly, it is:
`ORDERED that the Motion for Pro Hac Vice Admission of William
`R. Zimmerman is granted in each of the above-listed proceedings;
`FURTHER ORDERED that a registered practitioner will continue to
`represent Petitioner as lead counsel in each of the above-listed proceedings;
`FURTHER ORDERED that Mr. Zimmerman is authorized to
`
`3 Our citations to Papers and Exhibits are to those filed in IPR2020-00988.
`Similar Papers and Exhibits were filed in each of the other proceedings.
`
`2
`
`
`
`IPR2020-00988 (Patent 10,407,458 B2)
`IPR2020-01065 (Patent 10,407,459 B2)
`IPR2020-01125 (Patent 10,457,984 B2)
`IPR2020-01177 (Patent 10,435,742 B2)
`IPR2020-01323 (Patent 10,428,380 B2)
`
`represent Petitioner only as back-up counsel in each of the above-listed
`proceedings;
`FURTHER ORDERED that Mr. Zimmerman shall comply with the
`Office’s America Invents Act (AIA) Trial Practice Guide, as updated by the
`Consolidated Trial Practice Guide (“Consolidated Practice Guide”),
`available at https://www.uspto.gov/TrialPracticeGuideConsolidated; see
`also 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 that Mr. Zimmerman is subject to the
`USPTO’s Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et
`seq. and to the USPTO’s disciplinary jurisdiction under 37 C.F.R.
`§ 11.19(a); and
` FURTHER ORDERED that Petitioner shall promptly submit an
`updated mandatory notice identifying Mr. Zimmerman as back-up counsel in
`each of the above-listed proceedings, in accordance with 37 C.F.R.
`§ 42.8(b)(3).
`
`
`3
`
`
`
`IPR2020-00988 (Patent 10,407,458 B2)
`IPR2020-01065 (Patent 10,407,459 B2)
`IPR2020-01125 (Patent 10,457,984 B2)
`IPR2020-01177 (Patent 10,435,742 B2)
`IPR2020-01323 (Patent 10,428,380 B2)
`
`PETITIONER:
`
`Kerry Taylor
`2kst@knobbe.com
`
`Nathanael Luman
`2nrl@knobbe.com
`
`Michael L. Fuller
`2mlf@knobbe.com
`
`PATENT OWNER:
`
`John White
`jwhite@cooperdunham.com
`
`John Murane
`jdmurnane@venable.com
`
`Justin Oliver
`joliver@venable.com
`
`Gary Gershik
`ggershik@cooperdunham.com
`
`
`
`4
`
`
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