`Tel: 571-272-7822
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`
` Paper 13
`Entered: November 15, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`
`IPR2022-01299 (Patent 7,761,127 B2)
` IPR2022-01300 (Patent 7,761,127 B2)1
`
`
`
`
`
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`
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`
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`
`
`Before JOSIAH C. COCKS, JAMES A. TARTAL, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`POLLOCK, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Patent Owner’s Unopposed Motion for Pro Hac Vice Admission of
`Jeremiah S. Helm, Ph.D.
`37 C.F.R. § 42.10
`
`
`1 This Order applies to the above-listed proceedings. We exercise our
`discretion to issue one Order to be filed in each case. The parties are not
`authorized to use this style heading for any subsequent papers.
`
`
`
`IPR2022-01299 (Patent 7,761,127 B2)
`IPR2022-01300 (Patent 7,761,127 B2)
`
`
`
`Masimo Corporation (“Patent Owner”) filed a motion for pro hac vice
`admission of Jeremiah S. Helm, Ph.D. in each of the above-listed proceeding
`(“Motion”). 2 Paper 6. Patent Owner also filed supporting declarations from
`Dr. Helm. Ex. 2001. Patent Owner states that the Motions are unopposed.
`Paper 6, 1.
`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
`counsel pro hac vice, and an affidavit or declaration of the individual
`seeking to appear in this 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”)).
`The Board has reviewed the submissions and determined that the
`requirements of 37 C.F.R. § 42.10 have been met, and that there is good
`cause to admit Dr. Helm pro hac vice.
`It is, therefore,
`ORDERED that the Motions for Pro Hac Vice Admission of Jeremiah
`S. Helm, Ph.D. are granted and Dr. Helm is authorized to represent Patent
`Owner only as back-up counsel in the above-listed proceedings;
`
`
`2 All citations are to IPR2022-01299 with the understanding that the other
`proceeding includes papers having substantially the same substantive
`content.
`
`
`
`IPR2022-01299 (Patent 7,761,127 B2)
`IPR2022-01300 (Patent 7,761,127 B2)
`
`
`
`FURTHER ORDERED that, with one week of this Order, Patent
`Owner must file updated mandatory notices identifying Dr. Helm as back-up
`counsel in accordance with 37 C.F.R. § 42.8(b)(3);
`FURTHER ORDERED that a registered practitioner will continue to
`represent Patent Owner as lead counsel in the above-listed proceedings;
`FURTHER ORDERED that Dr. Helm shall comply with the Office
`Patent Trial Practice Guide, as updated by the Consolidated Office Patent
`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, Code of
`Federal Regulations; and
`FURTHER ORDERED that Dr. Helm is subject to the USPTO’s
`Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and to
`the USPTO’s disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
`
`
`
`
`
`IPR2022-01299 (Patent 7,761,127 B2)
`IPR2022-01300 (Patent 7,761,127 B2)
`
`
`PETITIONER:
`
`Walter Renner
`Nicholas Stephens
`Andrew Patrick
`Dan Smith
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`nstephens@fr.com
`patrick@fr.com
`dsmith@fr.com
`
`PATENT OWNER:
`Irfan A. Lateef
`Ted M. Cannon
`Jarom D. Kesler
`Knobbe, Martens, Olson, & Bear, LLP
`2ial@knobbe.com
`2tmc@knobbe.com
`2jzk@knobbe.com
`2jup@knobbe.com
`
`