`Trials@uspto.gov
`571-272-7822 Entered: July 12, 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 and JAMES A. TARTAL,
`Administrative Patent Judges.1
`
`SNEDDEN, Administrative Patent Judge.
`
`
`ORDER
`Granting Patent Owner’s Unopposed Motions for Pro Hac Vice Admission
`of Shelleaha L. Jonas
`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 Shelleaha L. Jonas in each of the above-captioned
`proceedings. Paper 35 (“Mot.”, “Motion”).2 Patent Owner states in each
`Motion that “[t]he parties have conferred, and the Petitioner does not oppose
`this Motion.” Mot. 2. 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 Shelleaha L. Jonas pro hac vice during these proceedings because
`she “has developed an intimate familiarity with the patents at issue and the
`Petitioner’s validity challenges, and the Patent Owner wishes to have
`Ms. Jonas continue representing it in this matter before the Board.” Mot. 3.
`Patent Owner explains that “Ms. Jonas has 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
`
`
`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)
`
`the same patent at issue in this proceeding” and has “also assisted the lead
`counsel, Mr. Vandenburgh, with various tasks in” these IPRs and other
`related IPRs. 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 Ms. Jonas (Ex. 2258, “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 Ms. Jonas
`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 her experience. See, e.g., Decl. ¶¶ 2, 9–12; Mot. 2–4. Patent
`Owner therefore has established good cause for admitting Ms. Jonas 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 Shelleaha L. Jonas in the above-captioned proceedings are granted;
`Ms. Jonas is authorized to act as back-up counsel in these proceedings only;
`FURTHER ORDERED that Patent Owner must file an updated
`mandatory notice identifying Ms. Jonas 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 Patent Owner is to continue to have a
`registered practitioner represent it as lead counsel for these proceedings;
`FURTHER ORDERED that Ms. Jonas 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 Ms. Jonas 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 “Ms. Jonas 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. 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 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
`Megan E. Christner
`Carlson, Caspers, Vandenburgh & Lindquist, P.A.
`dvandenburgh@carlsoncaspers.com
`dbremer@carlsoncaspers.com
`mchristner@carlsoncaspers.com
`
`
`
`
`
`5
`
`