Paper 78
`Trials@uspto.gov
`571-272-7822 Entered: November 8, 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 Peter M. Kohlhepp
`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: November 8, 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 Peter M. Kohlhepp
`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 Peter M. Kohlhepp in each of the above-captioned
`proceedings. Paper 19 (“Mot.”, “Motion”).2 Patent Owner states in each
`Motion that “[t]he parties have conferred, and the Petitioner does not oppose
`this Motion.” Mot. 1. 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 Peter M. Kohlhepp pro hac vice during these proceedings because
`he “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.”
`Mot. 2. Patent Owner explains that “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,
`
`
`2 We cite to Papers and Exhibits in IPR2020-01341. Similar items were
`filed in IPR2020-01342, IPR2020-01343, and IPR2020-01344.
`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)
`
`2019) involving the same parties and the same patent at issue in this
`proceeding,” has “also assisted the lead counsel, Mr. Vandenburgh,
`representing the Patent Owner in other IPRs involving similar technology,”
`and “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.” Id. at 2–3. Patent Owner states further that it “has
`invested significant financial resources in the related proceedings described
`above,” 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.” Id. at 3. The Motions are supported
`by Declarations of Mr. Kohlhepp (Ex. 2088, “Decl.”) that attest to the
`statements above and comply with the requirements set forth in the Notice.
`See Decl. ¶¶ 1–12.
`Upon consideration, Patent Owner has demonstrated that Mr.
`Kohlhepp has 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., Decl. ¶¶ 2, 9–12; Mot. 2–3.
`Patent Owner therefore has established good cause for admitting
`Mr. Kohlhepp pro hac vice in each of the above-captioned proceedings.
`Accordingly, it is
`ORDERED that Patent Owner’s Motions for pro hac vice admission
`of Peter M. Kohlhepp in the above-captioned proceedings are granted;
`
`
`
`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)
`
`Mr. Kohlhepp is authorized to act as back-up counsel in these proceedings
`only;
`
`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. Kohlhepp 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, 3
`Code of Federal Regulations; and
`FURTHER ORDERED that Mr. Kohlhepp is 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.
`
`
`3 Patent Owner states that “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.” Mot. 4. The Office Patent Trial
`Practice Guide and the Board’s Rules of Practice for Trials, however, are set
`forth in Part 42 of Title 37, Code of Federal Regulations. We deem this to
`be harmless error.
`
`
`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 Morton
`Sharon Roberg-Perez
`Christopher Pinhas
`ROBINS KAPLAN LLP
`cmorton@robinskaplan.com
`sroberg-perez@robinskaplan.com
`cpinhas@robinskaplan.com
`
`
`FOR PATENT OWNER:
`
`Derek Vandenburgh
`Dennis Bremer
`Meghan Christner
`Shelleaha Jonas
`CARLSON, CASPERS, VANDENBURGH & LINDQUIST, P.C.
`dvandenburgh@carlsoncaspers.com
`dbremer@carlsoncaspers.com
`mchristner@carlsoncaspers.com
`sjonas@carlsoncaspers.com
`
`
`
`
`
`
`5
`
`
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