Paper 56
`Trials@uspto.gov
`571-272-7822 Entered: September 9, 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)
`IPR2020-01343 (Patent RE46,116 E)
`__________
`
`
`Before SHERIDAN K. SNEDDEN, JAMES A. TARTAL, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
`
`
`ORDER1
`Granting Petitioner’s Unopposed Motions for Pro Hac Vice Admission of
`Emily J. Tremblay
`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: September 9, 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)
`IPR2020-01343 (Patent RE46,116 E)
`__________
`
`
`Before SHERIDAN K. SNEDDEN, JAMES A. TARTAL, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
`
`
`ORDER1
`Granting Petitioner’s Unopposed Motions for Pro Hac Vice Admission of
`Emily J. Tremblay
`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)
`IPR2020-01343 (Patent RE46,116 E)
`
`
`Medtronic, Inc. and Medtronic Vascular, Inc., (collectively
`“Petitioner”) filed Motions for pro hac vice admission of Emily J. Tremblay
`in each of the above-captioned proceedings. Paper 47 (“Mot.”, “Motion”).2
`Petitioner states in each Motion that “[t]he parties have conferred, and Patent
`Owner 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”).
`Petitioner states that there is good cause for the Board to recognize
`Emily J. Tremblay pro hac vice during these proceedings because
`“Ms. Tremblay has been a practicing patent litigation attorney for about four
`years,” “spent four years clerking for federal judges, experiencing fact and
`expert discovery, dispositive motions, oral arguments, and trial in patent
`infringement matters,” “has established familiarity with the subject matter at
`issue in this proceeding as well as other related proceedings,” and “is
`supporting Petitioner’s ongoing work in opposition to the conception and
`reduction to practice briefing that Patent Owner filed on May 14, 2021, and
`
`
`2 We cite to Papers in IPR2020-01341. Similar items were filed in
`IPR2020-01343.
`
`2
`
`
`
`
`
`IPR2020-01341 (Patent 8,142,413 B2)
`IPR2020-01343 (Patent RE46,116 E)
`
`Petitioner’s reply in support of its Petition.” Mot. 1. Petitioner states further
`that “[i]f this motion were denied, Petitioner 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 Ms. Tremblay
`(Paper 48, “Decl.”)3 that attests to the statements above and comply with the
`requirements set forth in the Notice. See Decl. ¶¶ 1–11.
`Upon consideration, Petitioner has demonstrated that Ms. Tremblay
`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 her experience. See, e.g., Decl. ¶¶ 2, 3, 11; Mot. 1–2. Petitioner
`therefore has established good cause for admitting Ms. Tremblay pro hac
`vice in each of the above-captioned proceedings.
`Accordingly, it is
`ORDERED that Petitioner’s Motions for pro hac vice admission of
`Emily J. Tremblay in the above-captioned proceedings are granted;
`Ms. Tremblay is authorized to act as back-up counsel in these proceedings
`only;
`
`
`3 Petitioner filed the Declarations as Papers rather than as separate Exhibits.
`See Decl.; IPR2020-01343, Paper 43. We deem this to be harmless error;
`however, Petitioner is reminded that affidavits and declarations must be filed
`as exhibits. See 37 C.F.R. § 42.63(a) (“Evidence consists of affidavits,
`transcripts of depositions, documents, and things. All evidence must be filed
`in the form of an exhibit.”).
`
`3
`
`
`
`
`
`IPR2020-01341 (Patent 8,142,413 B2)
`IPR2020-01343 (Patent RE46,116 E)
`
`
`FURTHER ORDERED that Petitioner must file an updated
`mandatory notice identifying Ms. Tremblay 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 Petitioner must file a power of attorney
`for Ms. Tremblay 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 Ms. Tremblay 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;4 and
`FURTHER ORDERED that Ms. Tremblay 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 In each Declaration, Ms. Trembley states that she has “read and will
`comply with the Office’s Patent Trial Practice Guide and the Board’s Rules
`of Practice for Trials set forth in part 42 of 37 C.F.R.” Decl. ¶ 7. Petitioner,
`however, states that “Ms. Tremblay attests that she 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. 2 (emphasis added). 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. We deem this
`misstatement by Petitioner to be harmless error.
`
`
`4
`
`
`
`
`
`IPR2020-01341 (Patent 8,142,413 B2)
`IPR2020-01343 (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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