Paper 21
`Trials@uspto.gov
`571-272-7822 Entered: May 14, 2021
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`MEDTRONIC, INC. AND MEDTRONIC VASCULAR, INC.,
`Petitioner,
`
`v.
`
`TELEFLEX LIFE SCIENCES LIMITED,
`Patent Owner.
`____________
`
`IPR2020-01341 (Patent 8,142,413 B2)
`IPR2020-01342 (Patent 8,142,413 B2)
`IPR2020-01343 (Patent RE46,116 E)
`IPR2020-01344 (Patent RE46,116 E)
`__________
`
`
`Before SHERIDAN K. SNEDDEN, JAMES A. TARTAL, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.1
`
`SNEDDEN, Administrative Patent Judge.
`
`
`ORDER
`Granting Patent Owner’s Unopposed Motions for Pro Hac Vice Admission
`of Joseph W. Winkels and Alexander S. Rinn
`37 C.F.R. § 42.10
`
`
`1 This Order addresses issues that are identical in each of the
`above-captioned proceedings. We therefore exercise our discretion to issue
`one Order to be filed in each proceeding. The proceedings have not been
`consolidated, and the Parties are not authorized to use this style heading in
`any subsequent papers.
`
`
`Trials@uspto.gov
`571-272-7822 Entered: May 14, 2021
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`MEDTRONIC, INC. AND MEDTRONIC VASCULAR, INC.,
`Petitioner,
`
`v.
`
`TELEFLEX LIFE SCIENCES LIMITED,
`Patent Owner.
`____________
`
`IPR2020-01341 (Patent 8,142,413 B2)
`IPR2020-01342 (Patent 8,142,413 B2)
`IPR2020-01343 (Patent RE46,116 E)
`IPR2020-01344 (Patent RE46,116 E)
`__________
`
`
`Before SHERIDAN K. SNEDDEN, JAMES A. TARTAL, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.1
`
`SNEDDEN, Administrative Patent Judge.
`
`
`ORDER
`Granting Patent Owner’s Unopposed Motions for Pro Hac Vice Admission
`of Joseph W. Winkels and Alexander S. Rinn
`37 C.F.R. § 42.10
`
`
`1 This Order addresses issues that are identical in each of the
`above-captioned proceedings. We therefore exercise our discretion to issue
`one Order to be filed in each proceeding. The proceedings have not been
`consolidated, and the Parties are not authorized to use this style heading in
`any subsequent papers.
`
`
`
`IPR2020-01341 (Patent 8,142,413 B2)
`IPR2020-01342 (Patent 8,142,413 B2)
`IPR2020-01343 (Patent RE46,116 E)
`IPR2020-01344 (Patent RE46,116 E)
`
`
`Teleflex Life Sciences Limited (“Patent Owner”) filed Motions for
`pro hac vice admission of Joseph W. Winkels and Alexander S. Rinn in each
`of the above-captioned proceedings. Papers 15, 16.2 Patent Owner states in
`each Motion that “[t]he parties have conferred, and the Petitioner does not
`oppose this Motion.” Paper 15, 2; Paper 16, 2.3 The Motions are 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 Paper 4, 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”)) (“Notice”).
`Patent Owner states that there is good cause for the Board to
`recognize Joseph W. Winkels and Alexander S. Rinn pro hac vice during
`these proceedings because each “has developed an intimate familiarity with
`the patents at issue and the Petitioner’s validity challenges, and the Patent
`Owner wishes to have [them] continue representing it in this matter before
`the Board.” Paper 15, 3; Paper 16, 3. Patent Owner explains that Mr.
`
`
`2 We cite to Papers and Exhibits in IPR2020-01341. Similar items were
`filed in IPR2020-01342, IPR2020-01343, and IPR2020-01344.
`3 Patent Owner’s Motions do not include page numbers. For the sake of
`reference, we designate the cover page of each Motion as page 1 and number
`the pages consecutively therefrom.
`
`2
`
`
`
`
`
`IPR2020-01341 (Patent 8,142,413 B2)
`IPR2020-01342 (Patent 8,142,413 B2)
`IPR2020-01343 (Patent RE46,116 E)
`IPR2020-01344 (Patent RE46,116 E)
`
`Winkels and Mr. Rinn have “represented 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” and have “also assisted the lead counsel,
`Mr. Vandenburgh, representing the Patent Owner in this IPR, and [in a
`number of] related IPRs.” Paper 15, 2–3; Paper 16, 2–3. Patent Owner
`states further that it “has invested significant financial resources in the
`related proceedings described above, in which [Mr. Winkels and Mr. Rinn
`have] served as counsel,” and “[i]f 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.” Paper 15, 3; Paper 16, 3. The
`Motions are supported by Declarations of Mr. Winkels (Ex. 2087) and
`Mr. Rinn (Ex. 2216) that attest to the statements above and comply with the
`requirements set forth in the Notice. See Ex. 2087 ¶¶ 1–12; Ex. 2216 ¶¶ 1–
`12.
`
`Upon consideration, Patent Owner has demonstrated that Mr. Winkels
`and Mr. Rinn each have sufficient legal and technical qualifications and
`familiarity with the subject matter at issue, and that there is a need for Patent
`Owner to have counsel with their experience. See, e.g., Ex. 2087 ¶¶ 2, 9–12;
`Ex. 2216 ¶¶ 2, 9–12; Paper 15, 2–3; Paper 16, 2–3. Patent Owner therefore
`has established good cause for admitting Mr. Winkels and Mr. Rinn pro hac
`vice in each of the above-captioned proceedings.
`
`
`
`3
`
`
`
`IPR2020-01341 (Patent 8,142,413 B2)
`IPR2020-01342 (Patent 8,142,413 B2)
`IPR2020-01343 (Patent RE46,116 E)
`IPR2020-01344 (Patent RE46,116 E)
`
`
`Accordingly, it is
`ORDERED that Patent Owner’s Motions for pro hac vice admission
`of Joseph W. Winkels and Alexander S. Rinn in the above-captioned
`proceedings are granted; Mr. Winkels and Mr. Rinn are authorized to act as
`back-up counsel in these proceedings only;
`FURTHER ORDERED that Patent Owner must file an updated
`mandatory notice identifying Mr. Winkels and Mr. Rinn as back-up counsel
`in each of the above-captioned proceedings in accordance with 37 C.F.R.
`§ 42.8(b)(3);
`FURTHER ORDERED that Patent Owner is to continue to have a
`registered practitioner represent it as lead counsel for these proceedings;
`FURTHER ORDERED that Mr. Winkels and Mr. Rinn shall comply
`with the Consolidated Trial Practice Guide, 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; and
`FURTHER ORDERED that Mr. Winkels and Mr. Rinn are 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.
`
`
`
`4
`
`
`
`IPR2020-01341 (Patent 8,142,413 B2)
`IPR2020-01342 (Patent 8,142,413 B2)
`IPR2020-01343 (Patent RE46,116 E)
`IPR2020-01344 (Patent RE46,116 E)
`
`FOR PETITIONER:
`Cyrus A. Morton
`Sharon Roberg-Perez
`Christopher A. Pinahs
`Robins Kaplan LLP
`cmorton@robinskaplan.com
`sroberg-perez@robinskaplan.com
`cpinahs@robinskaplan.com
`
`
`FOR PATENT OWNER:
`J. Derek Vandenburgh
`Dennis C. Bremer
`Carlson, Caspers, Vandenburgh & Lindquist, P.A.
`dvandenburgh@carlsoncaspers.com
`dbremer@carlsoncaspers.com
`
`
`
`
`
`
`
`5
`
`
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