`
`By:
`
`
`Filed on behalf of:
`Patent Owner Masimo Corporation
`John M. Grover (Reg. No. 42,610)
`Joseph R. Re (Reg. No. 31,291)
`Stephen W. Larson (Reg. No. 69,133)
`Jarom D. Kesler (Reg. No. 57,046)
`Benjamin A. Katzenellenbogen (Reg. No. 53,102)
`Shannon H. Lam (Reg. No. 65,614)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`E-mail: AppleIPR2020-1526-994@knobbe.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2020-01526
`U.S. Patent 6,771,994
`
`
`
`
`
`
`UNOPPOSED MOTION FOR JEREMIAH S. HELM TO APPEAR PRO
`HAC VICE ON BEHALF OF PATENT OWNER MASIMO CORPORATION
`
`
`
`
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`Pursuant to the Board’s October 19, 2020, Notice of Filing Date Accorded
`
`(Paper 4) and 37 C.F.R. §§ 42.10(c) and 42.22, Patent Owner Masimo Corporation
`
`(“Masimo”) hereby moves for an Order allowing Jeremiah S. Helm of Knobbe,
`
`Martens, Olson & Bear, LLP to appear pro hac vice on behalf of Masimo in the
`
`above-captioned case. Masimo has conferred with counsel for Petitioner Apple,
`
`Inc. (“Apple”), and Apple’s counsel indicated that Apple does not intend to oppose
`
`Masimo’s motion to allow Mr. Helm to appear pro hac vice in this matter.
`
`II. LIST OF EXHIBITS RELIED UPON FOR THIS MOTION
`
`Masimo Exhibit 2016 - Declaration of Jeremiah S. Helm in Support of
`
`Motion to Appear Pro Hac Vice on Behalf of Patent Owner Masimo Corporation.
`
`III. REASONS THE REQUESTED RELIEF SHOULD BE GRANTED
`
`As set forth below in the Statement of Material Facts, Masimo has made all
`
`of the showings required under 37 C.F.R. § 42.10(c) for recognizing Mr. Helm pro
`
`hac vice. In particular, Mr. Helm is an experienced litigation attorney who has
`
`represented clients in numerous patent litigation cases in various United States
`
`District Courts and the Court of Appeals for the Federal Circuit, including
`
`technically and legally complex matters such as will be present in this proceeding.
`
`Accordingly, allowing Mr. Helm to appear pro hac vice on behalf of Masimo is
`
`appropriate in this proceeding.
`
`-1-
`
`
`
`IV. STATEMENT OF MATERIAL FACTS
`
`1.
`
`37 C.F.R. § 42.10(c) provides that “[t]he Board may recognize
`
`counsel pro hac vice during a proceeding upon a showing of good cause, subject
`
`to the condition that lead counsel be a registered practitioner and to any other
`
`conditions as the Board may impose. For example, where the lead counsel is a
`
`registered practitioner, a motion to appear pro hac vice by counsel who is not a
`
`registered practitioner may be granted upon showing that counsel is an
`
`experienced litigating attorney and has an established familiarity with the subject
`
`matter at issue in the proceeding.”
`
`2.
`
`Lead counsel for Masimo in this inter partes review proceeding is
`
`John M. Grover. Mr. Grover is registered to practice before the United States
`
`Patent and Trademark Office and holds Registration No. 42,610.
`
`3.
`
`As set forth in Masimo Exhibit 2016 (the “Helm Declaration”), Mr.
`
`Helm is an experienced litigation attorney and has an established familiarity with
`
`the subject matter at issue in this proceeding. Helm Decl. ¶¶ 2-4. In particular,
`
`Mr. Helm has over 12 years of experience as a patent litigator and has represented
`
`clients in numerous patent litigation cases in various proceedings in United States
`
`District Courts and the Court of Appeals for the Federal Circuit. Id. ¶ 2.
`
`4.
`
`Further, Mr. Helm holds a Ph.D. degree in Chemistry from Princeton
`
`University and served as a law clerk to the Honorable Kimberly A. Moore, Circuit
`
`-2-
`
`
`
`Judge of the United States Court of Appeals for the Federal Circuit. Id. ¶ 3.
`
`Moreover, Mr. Helm is experienced with technically and legally complex matters
`
`in the field of chemistry and biotechnology. Id.
`
`5. With regard to U.S. Patent 6,771,994 (“the ’994 patent”), the patent at
`
`issue in this proceeding, Mr. Helm is familiar with the ’994 patent, and with the
`
`legal subject matter, technical subject matter, and cited art discussed in the petition
`
`for inter partes review of the ’994 patent and Apple’s petition for inter partes
`
`review. Id. ¶ 4. In view of his legal experience, technical background, and
`
`familiarity with the issues in the present matter, Patent Owner Masimo has
`
`requested his services in the present matter. Denial of his appearance in this case
`
`would create an undue burden on Patent Owner. Id.
`
`6. Mr. Helm has read and will comply with the Office Patent Trial
`
`Practice Guide and the Board’s Rules of Practice for Trials set forth in Part 42 of
`
`Title 37 of the Code of Federal Regulations. Id. ¶ 9. Mr. Helm also agrees to be
`
`subject to the United States Patent and Trademark Office Rules of Professional
`
`Conduct set forth in 37 C.F.R. §§ 11.101 et seq., and disciplinary jurisdiction under
`
`37 C.F.R. § 11.19(a). Id. ¶ 10.
`
`7.
`
`Finally, Mr. Helm has attested to the remaining elements of Paragraph
`
`2(b) of the representative “Order – Authorizing Motion for Pro Hac Vice
`
`Admission” in Case IPR2013-00639, Paper 7. Id. ¶¶ 2-11; see Notice of Filing
`
`-3-
`
`
`
`Date Accorded to Petition and Time for Filing Patent Owner Preliminary Response
`
`(Paper 3) at 2.
`
`V. CONCLUSION
`
`In view of the foregoing, and having satisfied the requirements of 37 C.F.R.
`
`§ 42.10(c), Masimo hereby moves for an Order allowing Jeremiah S. Helm of
`
`Knobbe, Martens, Olson & Bear, LLP, to appear pro hac vice on behalf of Masimo
`
`in the above-captioned case.
`
`
`
`Dated: January 10, 2022
`
`
`
`
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`/John M. Grover/
`John M. Grover (Reg. No. 42,610)
`Customer No. 42,610
`
`Attorney for Patent Owner
`Masimo Corporation
`
`
`
`-4-
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that, pursuant to 37 C.F.R. § 42.6(e) and with the agreement
`
`of counsel for Petitioner, a true and correct copy of UNOPPOSED MOTION
`
`FOR JEREMIAH S. HELM TO APPEAR PRO HAC VICE ON BEHALF OF
`
`PATENT OWNER MASIMO CORPORATION is being served electronically
`
`on January 10, 2022, to the e-mail addresses shown below:
`
`W. Karl Renner, Reg. No. 41,265
`Andrew B. Patrick, Reg. No. 63,471
`Daniel D. Smith, Reg. No. 71,278
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 202-783-5070
`Fax: 877-769-7945
`Email: IPR50095-0005IP1@fr.com
`Email: PTABInbound@fr.com; axf-ptab@fr.com; dsmith@fr.com;
`patrick@fr.com
`
`
`/John M. Grover/
`John M. Grover (Reg. No. 42,610)
`Customer No. 64,735
`
`Attorney for Patent Owner
`Masimo Corporation
`
`
`
`54334505
`
`Dated: January 10, 2022
`
`
`
`-5-
`
`