`
`Filed on behalf of:
`Patent Owner Masimo Corporation
`Joseph R. Re (Reg. No. 31,291)
`Stephen W. Larson (Reg. No. 69,133)
`Jarom D. Kesler (Reg. No. 57,046)
`Jacob L. Peterson (Reg. No. 65,096)
`
`
`
`Filed: April 16, 2021
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`E-mail: AppleIPR2020-1539-554@knobbe.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE, INC.
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2020-01539
`U.S. Patent 10,588,554
`
`
`
`
`
`
`UNOPPOSED MOTION FOR WILLIAM R. ZIMMERMAN TO APPEAR
`PRO HAC VICE ON BEHALF OF PATENT OWNER MASIMO
`CORPORATION
`
`
`
`
`
`
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`Pursuant to the Board’s September 17, 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 William R. Zimmerman 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. Zimmerman to appear pro hac vice in this
`
`matter.
`
`II. LIST OF EXHIBITS RELIED UPON FOR THIS MOTION
`
`Masimo Exhibit 2002 - Declaration of William R. Zimmerman 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.
`
`Zimmerman pro hac vice. In particular, Mr. Zimmerman 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
`
`-1-
`
`
`
`
`
`in this proceeding. Accordingly, allowing Mr. Zimmerman to appear pro hac vice
`
`on behalf of Masimo is appropriate in this proceeding.
`
`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
`
`Joseph R. Re. Mr. Re is registered to practice before the United States Patent and
`
`Trademark Office and holds Registration No. 31,291.
`
`3.
`
`As set forth in Masimo Exhibit 2002 (the “Zimmerman Declaration”),
`
`Mr. Zimmerman is an experienced litigating attorney and has an established
`
`familiarity with the subject matter at issue in this proceeding. Zimmerman Decl.
`
`¶ 4. In particular, Mr. Zimmerman has approximately 23 years of experience as a
`
`patent litigator and has represented clients in numerous patent litigation cases in
`
`various United States District Courts and the Court of Appeals for the Federal
`
`-2-
`
`
`
`
`
`Circuit. Id. ¶ 2. In addition, Mr. Zimmerman has experience in inter partes review
`
`proceedings, for example, IPR2013-00024, IPR2013-00128, IPR2013-00266,
`
`IPR2013-00517, IPR2013-00518, IPR2014-00549, IPR2014-00550, IPR2014-
`
`01093,
`
`IPR2015-00265,
`
`IPR2015-00268,
`
`IPR2016-00397,
`
`IPR2016-00399,
`
`IPR2016-00549, IPR2016-00553, IPR2016-00557, IPR2016-00559, IPR2016-
`
`01198,
`
`IPR2016-01201,
`
`IPR2017-02172,
`
`IPR2017-02174,
`
`IPR2018-00291,
`
`IPR2018-00318, IPR2018-00322, IPR2018-00385, IPR2018-00795, IPR2018-
`
`00797, IPR2018-01317, IPR2019-01201, IPR2020-000988, IPR2020-01065,
`
`IPR2020-01125, IPR2020-01177, and IPR2020-01323. Id. ¶ 2.
`
`4.
`
`Further, Mr. Zimmerman holds a Bachelor of Science degree in
`
`Chemical Engineering from the University of Notre Dame and served as a law
`
`clerk to the Honorable Alvin A. Schall, Circuit Judge of the United States Court of
`
`Appeals for the Federal Circuit. Id. ¶ 3. Moreover, Mr. Zimmerman is
`
`experienced with technically and legally complex matters in the field of chemistry
`
`and biotechnology. Id.
`
`5. With regard to U.S. Patent 10,588,554 (“the ’554 patent”), the patent
`
`at issue in this proceeding, Mr. Zimmerman is familiar with the ’554 patent, and
`
`with the legal subject matter, technical subject matter, and cited art discussed in the
`
`petition for inter partes review of the ’554 patent and Apple’s petition for inter
`
`partes review. Id. ¶ 4. In view of his legal experience, technical background, and
`
`-3-
`
`
`
`
`
`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. Zimmerman 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. Zimmerman 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. Zimmerman 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 Date Accorded to Petition and Time for Filing Patent Owner Preliminary
`
`Response (Paper 4) at 2.
`
`
`
`
`
`-4-
`
`
`
`
`
`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 William R. Zimmerman
`
`of Knobbe, Martens, Olson & Bear, LLP, to appear pro hac vice on behalf of
`
`Masimo in the above-captioned case.
`
`Dated: April 16, 2021
`
`
`
`Respectfully submitted,
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`/Joseph R. Re/
`Joseph R. Re (Reg. No. 31,291)
`Customer No. 64,735
`
`Attorney for Patent Owner
`Masimo Corporation
`
`-5-
`
`
`
`
`
`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 WILLIAM R. ZIMMERMAN TO APPEAR PRO HAC VICE ON
`
`BEHALF OF PATENT OWNER MASIMO CORPORATION is being served
`
`electronically on April 16, 2021, to the e-mail addresses shown below:
`
`W. Karl Renner, Reg. No. 41,265
`Andrew B. Patrick, Reg. No. 63,471
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 202-783-5070
`Fax: 877-769-7945
`Email: IPR50095-0013IP2@fr.com
`Email: PTABInbound@fr.com; axf-ptab@fr.com; patrick@fr.com
`
`Dated: April 16, 2021
`
`
`
`34775656
`
`
`/Jacob L. Peterson/
`Jacob L. Peterson (Reg. No. 65,096)
`Attorney for Patent Owner
`Masimo Corporation
`
`
`
`
`-1-
`
`