`Trials@uspto.gov
`571-272-7822 Entered: May 14, 2021
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`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 Petitioner’s Unopposed Motion for Pro Hac Vice Admission of
`Ryan E. Dornberger
`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)
`
`
`Medtronic, Inc. and Medtronic Vascular, Inc., (collectively
`“Petitioner”) filed Motions for pro hac vice admission of
`Ryan E. Dornberger in each of the above-captioned proceedings. Paper 14.2
`Petitioner states in each Motion that “[t]he parties have conferred, and Patent
`Owner does not oppose this Motion.” Id. at 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”).
`Petitioner states that there is good cause for the Board to recognize
`Ryan E. Dornberger pro hac vice during these proceedings because “Mr.
`Dornberger is an experienced patent litigation attorney with over six years of
`experience in fact and expert discovery, Markman hearings, and oral
`arguments in patent infringement matters before Federal district courts, the
`United States Court of Appeals for the Federal Circuit, and the PTAB,” “has
`established familiarity with the subject matter at issue in this proceeding,”
`and “is actively involved in all aspects of Petitioners’ submissions in this
`
`
`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)
`
`proceeding.” Paper 14, 1. Petitioner states further that “[i]f this motion was
`denied, Petitioners would be prejudiced because they 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 1–2.
`Each Motion is supported by a Declaration of Mr. Dornberger (Ex.
`1125) that attests to the statements above and comply with the requirements
`set forth in the Notice. See Ex. 1125 ¶¶ 1–11.
`Upon consideration, Petitioner has demonstrated that Mr. Dornberger
`has sufficient legal and technical qualifications and familiarity with the
`subject matter at issue, and that there is a need for Petitioner to have counsel
`with his experience. See, e.g., Ex. 1125 ¶¶ 2, 3, 9; Paper 14, 1–2. Petitioner
`therefore has established good cause for admitting Mr. Dornberger pro hac
`vice in each of the above-captioned proceedings.
`Accordingly, it is
`ORDERED that Petitioner’s Motions for pro hac vice admission of
`Ryan E. Dornberger in the above-captioned proceedings are granted;
`Mr. Dornberger is authorized to act as back-up counsel in these proceedings
`only;
`
`FURTHER ORDERED that Petitioner must file an updated
`mandatory notice identifying Mr. Dornberger as back-up counsel in each of
`the above-captioned proceedings in accordance with 37 C.F.R. § 42.8(b)(3);
`
`
`
`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)
`
`
`FURTHER ORDERED that Petitioner must file a power of attorney
`for Mr. Dornberger in each of the above-captioned proceedings in
`accordance with 37 C.F.R. § 42.10(b);
`FURTHER ORDERED that Petitioner is to continue to have a
`registered practitioner represent it as lead counsel for these proceedings;
`FURTHER ORDERED that Mr. Dornberger 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. Dornberger 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.
`
`
`
`4
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`
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`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
`
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`5
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