Trials@uspto.gov
`571-272-7822
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`Paper: 19
`Entered: March 4, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`ALIVECOR, INC.,
`Patent Owner.
`____________
`
`IPR2021-00970 (Patent 9,572,499 B2)
` IPR2021-00971 (Patent 10,595,731 B2)
` IPR2021-00972 (Patent 10,638,941 B2)
`___________
`
`
`
`Before ROBERT A. POLLOCK, ERIC C. JESCHKE, and
`DAVID COTTA, Administrative Patent Judges.
`
`POLLOCK, Administrative Patent Judge.
`
`
`
`DECISION1
`Conditionally Granting Petitioner’s Motions for
`Admission Pro Hac Vice of Michael Amon
`37 C.F.R. § 42.10
`
`
`1 This Decision addresses overlapping issues in the cases listed above.
`Therefore, we issue one Decision to be filed in each case. The parties,
`however, are not authorized to use this style of filing.
`
`
`

`

`IPR2021-00970 (Patent 9,572,499 B2)
`IPR2021-00971 (Patent 10,595,731 B2)
`IPR2021-00972 (Patent 10,638,941 B2)
`
`
`On February 22, 2022, Apple Inc. (“Petitioner”) filed an Unopposed
`Motion for Pro Hac Vice Admission of Michael Amon in each of the above-
`identified proceedings. Paper 16 (“Motion”). 2 Petitioner also filed a
`Declaration of Michael Amon in support of the Motion in each case. Ex.
`1058 (“Declaration”). 3 Petitioner indicates that the motion is unopposed.
`Motion 1.
`Upon a review of the record before us, we note that Powers of
`Attorney in accordance with 37 C.F.R. § 42.10(b) have not been submitted
`for Mr. Amon in these proceedings. For the reasons provided below,
`Petitioner’s Motions are conditionally granted, subject to the filing of
`Powers of Attorney for Mr. Amon.
`Pursuant to 37 C.F.R. § 42.10(c), 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. In its notice
`authorizing motions for pro hac vice admission, the Board requires a
`statement of facts showing there is good cause for the Board to recognize
`
`2 For purposes of expediency, we cite to Papers and Exhibits filed in
`IPR2021-00970. Petitioner filed similar Motions and Declarations in
`IPR2021-00971 and IPR2021-00972.
`3 In the Declaration, Mr. Amon states that “willful false statements may
`jeopardize the validity of the application or any patents issued thereon.” Ex.
`1058 ¶ 10. Although this language is not applicable to AIA proceedings, we
`deem the inclusion of this extraneous text to be harmless error. Mr. Amon
`also declares that “I have 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 the Code of Federal Regulations.” Id. ¶ 5. The Office Patent Trial
`Practice Guide and the Board’s Rules of Practice for Trials are set forth in
`Part 42 of Title 37, Code of Federal Regulations. We deem the omission of
`“Title 37” to be harmless error.
`
`2
`
`

`

`IPR2021-00970 (Patent 9,572,499 B2)
`IPR2021-00971 (Patent 10,595,731 B2)
`IPR2021-00972 (Patent 10,638,941 B2)
`
`counsel pro hac vice and an affidavit or declaration of the individual seeking
`to appear in this proceeding. See Paper 3, 2 (citing Unified Patents, Inc. v.
`Parallel Iron, LLC, IPR2013-00639, Paper 7 (PTAB Oct. 15, 2013) (“Order
`Authorizing Motion for Pro Hac Vice Admission”)).
`Based on the facts set forth in the Motions and the accompanying
`Declarations, we conclude that Mr. Amon has sufficient legal and technical
`qualifications to represent Petitioner in the above-identified proceedings,
`that Mr. Amon has demonstrated sufficient familiarity with the subject
`matter of these proceedings, that Mr. Amon meets all other requirements for
`admission pro hac vice, and that Petitioner’s intent to be represented by
`counsel with litigation experience is warranted. Accordingly, Petitioner has
`established good cause for pro hac vice admission of Mr. Amon. Mr. Amon
`will be permitted to serve as back-up counsel only. See 37 C.F.R.
`§ 42.10(c).
`We note that Powers of Attorney in accordance with 37 C.F.R.
`§ 42.10(b) have not been submitted for Mr. Amon. Mr. Amon will not be
`admitted until Petitioner files Powers of Attorney identifying Mr. Amon.
`
`
`ORDER
`
`It is:
`ORDERED that Petitioner’s Motions for Admission Pro Hac Vice of
`Michael Amon are conditionally granted provided that within ten (10) days
`of the date of this Order, Petitioner submits Powers of Attorney for Mr.
`Amon in each proceeding, in accordance with 37 C.F.R. § 42.10(b);
`
`3
`
`

`

`IPR2021-00970 (Patent 9,572,499 B2)
`IPR2021-00971 (Patent 10,595,731 B2)
`IPR2021-00972 (Patent 10,638,941 B2)
`
`
`FURTHER ORDERED that Petitioner must file updated mandatory
`notices identifying Mr. Amon as back-up counsel in accordance with 37
`C.F.R. § 42.8(b)(3);
`FURTHER ORDERED that Petitioner is to continue to have a
`registered practitioner represent it as lead counsel for the above-identified
`proceedings;
`FURTHER ORDERED that Mr. Amon will be authorized to represent
`Petitioner only as back-up counsel in the above-identified proceedings;
`FURTHER ORDERED that Mr. Amon shall be familiar with the
`Consolidated Trial Practice Guide4 (84 Fed. Reg. 64,280 (Nov. 21, 2019)),
`and comply with the Board’s Rules of Practice for Trials as set forth in Part
`42 of Title 37, Code of Federal Regulations; and
`FURTHER ORDERED that Mr. Amon shall be 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.
`
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`4 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`4
`
`

`

`IPR2021-00970 (Patent 9,572,499 B2)
`IPR2021-00971 (Patent 10,595,731 B2)
`IPR2021-00972 (Patent 10,638,941 B2)
`
`
`FOR PETITIONER:
`
`Walter Renner
`Jeremy Monaldo
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`jjm@fr.com
`
`FOR PATENT OWNER:
`
`James M. Glass
`Andrew M. Holmes
`John W. McCauley
`Quinn Emanuel Urquhart & Sullivan LLP
`jimglass@quinnemanuel.com
`drewholmes@quinnemanuel.com
`johnmccauley@quinnemanuel.com
`
`5
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`