IPR2020-01649
`Paper No. 12
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`EDWARDS LIFESCIENCES CORPORATION and EDWARDS LIFESCIENCES
`LLC,
`Petitioners,
`
`v.
`COLIBRI HEART VALVE LLC,
`Patent Owner.
`
`
`Case IPR2020-01649
`Patent No. 9,125,739 B2
`
`
`PETITIONERS’ MOTION FOR ADMISSION
`PRO HAC VICE OF MEGAN E. DELLINGER
`PURSUANT TO 37 C.F.R. § 42.10
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`Paper No. 12
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`EDWARDS LIFESCIENCES CORPORATION and EDWARDS LIFESCIENCES
`LLC,
`Petitioners,
`
`v.
`COLIBRI HEART VALVE LLC,
`Patent Owner.
`
`
`Case IPR2020-01649
`Patent No. 9,125,739 B2
`
`
`PETITIONERS’ MOTION FOR ADMISSION
`PRO HAC VICE OF MEGAN E. DELLINGER
`PURSUANT TO 37 C.F.R. § 42.10
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`Exhibit
`
`LIST OF EXHIBITS
`
`
`Description
`
`IPR2020-01649
`Paper No. 12
`
`EX1001
`
`EX1002
`
`EX1003
`
`EX1004
`
`EX1005
`
`EX1006
`
`EX1007
`
`EX1008
`
`EX1009
`
`EX1010
`
`EX1011
`
`EX1012
`
`EX1013
`
`U.S. Patent No. 9,125,739 (Paniagua et al.)
`
`File History for U.S. Patent No. 9,125,739 (Paniagua
`et al.)
`Andersen et al., Transluminal Implantation of Artificial
`Heart Valves. Description of a New Expandable Aortic
`Valve and Initial Results with Implantation by Catheter
`Technique in Closed Chest Pigs, European Heart Journal
`13:704-708 (1992)
`U.S. Patent No. 5,411,552 (Andersen et al.)
`
`Bailey, Percutaneous Expandable Prosthetic Valves,
`Textbook of Interventional Cardiology, Chapter 75
`(1994)
`U.S. Patent No. 5,855,601 (Bessler et al.)
`
`U.S. Patent No. 5,332,402 (Teitelbaum)
`
`Moazami et al., Transluminal Aortic Valve
`Placement A Feasibility Study with a Newly
`Designed Collapsible Aortic Valve, ASAIO J.,
`M381-385 (Sept.-Oct. 1996)
`U.S. Patent Application Publication No.
`2002/0032481 (Gabbay)
`U.S. Patent No. 6,425,916 (Garrison et al.)
`
`U.S. Patent No. 6,652,578 (Bailey et al.)
`
`U.S. Patent No. 5,957,949 (Leonhardt et al.)
`
`Ebeid et al., Use of Balloon-Expandable Stents for
`Coarctation of the Aorta: Initial Results and
`Intermediate-Term Follow-Up, 30 J. Am. C.
`
`i
`
`
`
`
`
`
`
`Exhibit
`
`Description
`
`IPR2020-01649
`Paper No. 12
`
`EX1014
`
`EX1015
`
`EX1016
`
`EX1017
`
`EX1018
`
`EX1019
`
`EX1020
`
`EX1021
`
`EX1022
`
`EX1023
`
`EX1024
`
`EX1025
`
`EX1026
`
`Cardiology 7, 1847-52 (Dec. 1997)
`Edwards Receives European Approval for Advanced
`SAPIEN 3 Valve (Jan. 27, 2014)
`U.S. Patent Application Publication No.
`2005/0113910 (Paniagua et al.)
`Rösch et al., The Birth, Early Years, and Future of
`Interventional Radiology, J. Vasc. Interv. Radiol.,
`14:841-853 (2003)
`U.S. Patent No. 6,908,481 (Cribier)
`
`File History for U.S. Patent No. 8,308,797 (Paniagua
`et al.)
`U.S. Patent Application Publication No.
`2001/0044633 (Klint)
`Declaration of Steven L. Goldberg, M.D.
`
`U.S. Patent No. 8,308,797 (Paniagua et al.)
`
`Infringement Chart from Colibri Heart Valve LLC v.
`Medtronic CoreValve LLC, No. 8:20-cv-847-DOC-
`JDE, D.I. 30-3 (C.D. Cal. June 12, 2020) (Exhibit A
`to First Amended Complaint).
`U.S. Patent No. 6,730,118 (Spenser et al.)
`
`Press Release, Edwards Lifesciences Receives CE
`Mark for Edwards SAPIEN Transcatheter Heart
`Valve Edwards Lifesciences (Sept. 5, 2007)
`Colibri’s Opposition to Medtronic’s Motion to
`Dismiss First Amended Complaint [DKT. 38],
`Colibri Heart Valve LLC v. Medtronic CoreValve
`LLC, No. 8:20-cv-847-DOC-JDE, D.I. 46 (C.D. Cal.
`Aug. 14, 2020)
`U.S. Patent No. 8,900,294 (Paniagua et al.)
`
`
`
`ii
`
`
`
`Exhibit
`
`EX1027
`
`EX1028
`
`EX1029
`
`EX1030
`
`EX1031
`
`EX1032
`
`EX1033
`
`IPR2020-01649
`Paper No. 12
`
`Description
`
`CoreValve Receives CE Mark Approval for its
`ReValving™ System and Announces Plans to Initiate
`Expanded Clinical Evaluation, Business Wire (May
`16, 2007)
`Edwards SAPIEN XT Transcatheter Valve and
`Delivery Systems Receive CE Mark (Mar. 2, 2010)
`Edwards Lifesciences Receives FDA Approval for
`First Catheter-Based Aortic Heart Valve in the U.S.
`(Nov. 2, 2011)
`Medtronic CoreValve® System Obtains Early FDA
`Approval on Exceptional Clinical Performance (Jan.
`17, 2014)
`Bonhoeffer et al., Percutaneous Replacement of
`Pulmonary Valve in a Right-Ventricle to Pulmonary-
`Artery Prosthetic Conduit with Valve Dysfunction,
`Lancet 356:1403-05 (2000)
`Pavcnik et al., Aortic and Venous Valve for
`Percutaneous Insertion, Min Invas Ther & Allied
`Technol 9(3/4) 287-92 (2000)
`Declaration of Megan E. Dellinger in Support of
`Petitioners’ Motion for Admission Pro Hac Vice of
`Megan E. Dellinger Pursuant to 37 C.F.R. § 42.10
`
`
`
`iii
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`
`
`IPR2020-01649
`Paper No. 12
`
`I.
`
`RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. §42.10(c), and as authorized in the Patent Trial and
`
`Appeal Board’s (“Board”) Notice of Filing Date Accorded to Petition (Paper 3),
`
`Petitioners Edwards Lifesciences Corporation, Edwards Lifesciences LLC, and
`
`Edwards Lifesciences AG (collectively, “Petitioners”) respectfully request pro
`
`hac vice admission of Megan E. Dellinger as counsel in this proceeding.
`
`II. STATEMENT OF FACTS
`
`37 C.F.R. §42.10(c) states:
`
`The 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.
`
`The facts, supported by the accompanying Declaration of Megan E. Dellinger in
`
`Support of Motion for Admission Pro Hac Vice (“Dellinger Decl.”, Ex. 1033),
`
`establish good cause to admit Ms. Dellinger pro hac vice in this proceeding.
`
`
`
`1
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`
`
`IPR2020-01649
`Paper No. 12
`1. Lead counsel Brian P. Egan is a registered practitioner and is
`
`experienced in inter partes proceedings in the USPTO.
`
`2. Backup counsel Gregory S. Cordrey is a registered practitioner and
`
`is experienced in inter partes proceedings in the USPTO.
`
`3. Megan E. Dellinger is an experienced litigation attorney. Ms.
`
`Dellinger has been a litigating attorney for more than 8 years. (Dellinger Decl. ¶ 1.)
`
`Ms. Dellinger has been litigating patent cases for all of that time. (Id. ¶ 2.) Ms.
`
`Dellinger is a member in good standing of the Delaware State Bar since 2012 with
`
`no suspensions or disbarments from practice, nor any application for admission to
`
`practice denied, nor any sanctions or contempt citations, and is admitted to practice
`
`in the United States District Court for the District of Delaware and the United States
`
`Court of Appeals for the Federal Circuit. (Id. ¶¶ 3-6.)
`
`4. Ms. Dellinger has an established familiarity with the subject matter
`
`at issue in this proceeding, including U.S. Patent No. 9,125,739, its prior art, and the
`
`field of transcatheter aortic heart valves, including by assisting in preparation of the
`
`Petition, and by assisting in other cases for Petitioners related to transcatheter aortic
`
`heart valve technology, in particular Boston Scientific Corporation v. Edwards
`
`Lifesciences Corporation, C.A. No. 16-275-JFB-SRF (D. Del. 2016), and the related
`
`inter partes review proceeding Edwards Lifesciences Corporation v. Boston
`
`Scientific Scimed, Inc., IPR2017-00060, and the appeal therefrom, Boston Scientific
`
`
`
`2
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`IPR2020-01649
`Paper No. 12
`Scimed, Inc. v. Edwards Lifesciences Corporation, No. 2018-2004 (Fed. Cir.). (Id.
`
`at ¶ 10.)
`
`5. Ms. Dellinger 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 37
`
`C.F.R, and she agrees to be subject to the USPTO Code of Professional
`
`Responsibility set forth in 37 C.F.R. §§10.20 et seq., and to disciplinary jurisdiction
`
`under 37 C.F.R. §11.19(a). (Id. ¶¶ 7-8.) Ms. Dellinger has not applied to appear pro
`
`hac vice in other proceedings before the Office in the last three (3) years. (Id. ¶9.)
`
`6. Patent Owner Colibri Heart Valve LLC has indicated that this
`
`Motion will not be opposed.
`
`III. ANALYSIS
`
`The facts contained in the Statement of Facts above, and contained in the
`
`Dellinger Declaration, establish that there is good cause to admit Ms. Dellinger pro
`
`hac vice in this proceeding under 37 C.F.R. §42.10. Lead and backup counsel are
`
`registered practitioners, Ms. Dellinger is an experienced patent litigation attorney,
`
`and Ms. Dellinger has an established familiarity with the subject matter at issue in
`
`the proceeding.
`
`IV. CONCLUSION
`
`For the foregoing reasons, Petitioner respectfully requests that the Board
`
`admit Megan E. Dellinger pro hac vice in this proceeding.
`
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`3
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`IPR2020-01649
`Paper No. 12
`
`Respectfully submitted,
`/s/ Brian P. Egan____________
`Brian P. Egan (Reg. No. 54,866)
`Counsel for Petitioners
`
`
`
`
`
`
`
`Morris, Nichols, Arsht & Tunnell LLP
`1201 North Market Street
`P.O. Box 1347
`Wilmington, DE 19899-1347
`Email: began@morrisnichols.com
`Telephone: 302-351-9454
`Facsimile: 302-498-6216
`
`Gregory S. Cordrey (Reg. No. 44,089)
`Jeffer Mangels Butler & Mitchell, LLP
`3 Park Plaza, Suite 1100
`Irvine, CA 92614
`Email: gcordrey@jmbm.com
`Telephone: 949-623-7200
`Facsimile: 949-623-7201
`
`for Petitioners Edwards
`Attorneys
`Lifesciences Corporation and
`Edwards Lifesciences LLC
`
`
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`4
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`CERTIFICATE OF SERVICE
`
`IPR2020-01649
`Paper No. 12
`
`I hereby certify that on May 26, 2021, I caused a true and correct copy of the
`
`foregoing Petitioners’ Motion for Admission Pro Hac Vice of Megan E. Dellinger
`
`Pursuant to 37 C.F.R. § 42.10 to be served via electronic mail on the Patent Owner
`
`at the following correspondence addresses of record for the ’739 Patent:
`
`Sarah E. Spires
`Paul J. Skiermont
`Skiermont Derby LLP
`1601 Elm St., Ste. 4400
`Dallas, TX 75201
`sspires@skiermontderby.com
`pskiermont@skiermontderby.com
`
`Dated: May 26, 2021
`
`Respectfully submitted,
`
`By: /s/ Brian P. Egan____________
`Brian P. Egan (Reg. No. 54,866)
`Counsel for Petitioners
`
`
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`5
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