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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MEDTRONIC, INC., AND MEDTRONIC VASCULAR, INC.
`Petitioners,
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`v.
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`TELEFLEX INNOVATIONS S.A.R.L.
`Patent Owner.
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`Case IPR2020-01344
`Patent RE46,116
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`PATENT OWNER’S UNOPPOSED MOTION FOR
`PRO HAC VICE ADMISSION OF PETER M. KOHLHEPP
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`Pursuant to the Notice in this case authorizing the parties to file motions for
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`pro hac vice admission under 37 C.F.R. § 42.10(c), Patent Owner Teleflex hereby
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`respectfully moves for the pro hac vice admission of Peter M. Kohlhepp due to his
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`experience representing Patent Owner in other patent-related matters concerning
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`the GuideLiner technology and his familiarity with the technical and substantive
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`issues involved in this proceeding. The parties have conferred, and the Petitioner
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`does not oppose this Motion.
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`1
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`In support of this motion, Patent Owner states as follows:
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`The Board may recognize counsel pro hac vice upon a showing of good
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`cause, subject to the condition that lead counsel be a registered practitioner and to
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`any other conditions the Board may impose. 37 C.F.R. § 42.10(c). A motion for
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`pro hac vice admission may be granted where a party shows that “counsel is an
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`experienced litigating attorney and has an established familiarity with the subject
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`matter at issue in the proceeding.” Id.
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`Good cause exists under 37 C.F.R. § 42.10(c) for the pro hac vice admission
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`of Peter M. Kohlhepp as backup co-counsel in this matter. Mr. Kohlhepp has
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`assisted in the representation of Teleflex in a related patent infringement action in
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`the District of Minnesota (Civil Action. No. 19-cv-1760 (PJS/TNL), filed July 2,
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`2019) involving the same parties and the same patent at issue in this proceeding.
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`Mr. Kohlhepp has assisted the lead counsel, Mr. Vandenburgh, representing the
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`Patent Owner in other IPRs involving similar technology and was admitted as
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`backup co-counsel in IPR2020-00126, IPR2020-00127, IPR2020-00128, IPR2020-
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`00129, IPR2020-00130, IPR2020-00132, IPR2020-00134, IPR2020-00135,
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`IPR2020-00136, IPR2020-00137, and IPR2020-00138. As a result of these
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`experiences, Mr. Kohlhepp has developed an intimate familiarity with the patents
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`at issue and the Petitioner’s validity challenges, and the Patent Owner wishes to
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`have Mr. Kohlhepp continue representing it in this matter before the Board.
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`2
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`In addition, Mr. Kohlhepp has previously been admitted pro hac vice and
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`participated in other IPR proceedings, developing a familiarity with IPR statutes,
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`regulations, and practice in the process.
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`The Patent Owner has invested significant financial resources in the related
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`proceedings described above. If this motion was denied, the Patent Owner would
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`be prejudiced because it would have to undertake the burdensome and costly task
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`of educating another attorney regarding the patent at issue in this proceeding, and
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`the related evidence. The Patent Owner respectfully requests that the Board avoid
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`this prejudice and grant this Motion.
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`Pursuant to the requirements of 37 C.F.R. § 42.10(c), Derek Vandenburgh, a
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`registered practitioner, will remain as lead counsel in this matter. Mr.
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`Vandenburgh is a partner at Carlson Caspers, the same law firm that is
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`representing the Patent Owner in the related federal court action involving the
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`patent at issue here, as well as the patents at issue in the related instituted inter
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`partes review proceedings. Mr. Kohlhepp has worked with Mr. Vandenburgh on
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`other similar matters.
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`Pursuant to the order in this IPR authorizing motion for pro hac vice and the
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`requirements of the “Order -- Authorizing Motion for Pro Hac Vice Admission” in
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`Case IPR2013-00639, Paper 7, this Motion is also supported by the Declaration of
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`Peter M. Kohlhepp (Exhibit 2088), filed herewith.
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`3
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`In the Declaration of Peter M. Kohlhepp (Ex. 2088), Mr. Kohlhepp attests
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`that he has read and will comply with the Patent Office Trial Practice Guide and
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`the Board’s Rules of Practice set forth in 35 C.F.R. § 42. Mr. Kohlhepp further
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`attests that he agrees to be subject to the USPTO’s Rules of Professional Conduct
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`as set forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction under 37
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`C.F.R. § 11.19(a).
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`For the foregoing reasons, and in view of the Declaration submitted
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`herewith, Patent Owner submits that good cause exists for the pro hac vice
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`admission of Peter M. Kohlhepp and respectfully requests that the Board grant this
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`motion.
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`Dated: May 5, 2021.
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`Respectfully submitted,
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`/J. Derek Vandenburgh/
`J. Derek Vandenburgh (Lead Counsel)
`Registration No. 32,179
`Carlson, Caspers, Vandenburgh
` & Lindquist, P.A.
`225 South Sixth Street, Suite 4200
`Minneapolis, MN 55402
`Telephone: (612) 436-9600
`Facsimile: (612) 436-9650
`Email: DVandenburgh@carlsoncaspers.com
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`Lead Counsel for Patent Owner
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`4
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`CERTIFICATION OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e) and the agreement of the parties, the
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`undersigned certifies that on May 5, 2021, a true and correct copy of the foregoing
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`Patent Owner’s Unopposed Motion for Pro Hac Vice Admission of Peter M.
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`Kohlhepp, along with the accompanying Exhibit 2088, was served via electronic
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`mail upon the following:
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`Cyrus A. Morton (Reg. No. 44,954)
`Sharon Roberg-Perez (Reg. No. 69,600)
`Christopher A. Pinahs (Reg. No. 76,375)
`Robins Kaplan LLP
`800 LaSalle Avenue, Suite 2800
`Minneapolis, MN 55401
`Phone: 612-349-8500
`Fax: 612-339-4181
`Email: Cmorton@robinskaplan.com
`Email: Sroberg-perez@robinskaplan.com
`Email: Cpinahs@robinskaplan.com
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`/J. Derek Vandenburgh/
`J. Derek Vandenburgh (Lead Counsel)
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`5
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