`571-272-7822
`
`
` Paper No. 29
`
`Date Entered: December 30, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ELEKTA INC.
`Petitioner,
`
`v.
`
`VARIAN MEDICAL SYSTEMS, INC.
`Patent Owner.
`____________
`
`Case No. IPR2016-00476
`Patent 8,116,430 B1
`____________
`
`
`ORDER GRANTING MOTION FOR ADMISSION PRO HAC VICE OF
`SARAH B. WHITNEY
`37 C.F.R. § 42.10
`
`
`
`
`
`
`Before GARTH D. BAER, Administrative Patent Judge.
`
`
`
`Case IPR2016-00476
`Patent 8,116,430 B1
`
`
`
`
`Patent Owner moves for the pro hac vice admission of Sarah B. Whitney
`(Paper 22) in accordance with 37 C.F.R. § 42.10. Petitioner has not opposed the
`Motion. We grant the Motion.
`
`I. Discussion
`As set forth in 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. For example, where the lead counsel is a
`registered practitioner, a non-registered practitioner may be permitted to appear pro
`hac vice “upon showing that counsel is an experienced litigating attorney and has an
`established familiarity with the subject matter at issue in the proceeding.” 37 C.F.R.
`§ 42.10(c). In authorizing motions for pro hac vice admission, the Board also
`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 7, “Order – Authorizing Motion for Pro Hac
`Vice Admission” in IPR2013-00639, entered October 15, 2013.
`Ms. Whitney provides uncontroverted testimony that she:
`is a member in good standing of the Bar of at least one state or the
`i.
`District of Columbia;
`has not been subject to any suspensions or disbarments from practice
`before any court or administrative body;
`has never been denied any application for admission to practice before
`any court or administrative body;
`has not been subject to sanctions or contempt citations imposed by any
`court or administrative body;
`
`iii.
`
`iv.
`
`ii.
`
`
`
`2
`
`
`
`Case IPR2016-00476
`Patent 8,116,430 B1
`
`
`
`
`vii.
`
`v. 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.;
`vi. will be subject to the USPTO 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);
`has listed all other proceedings before the Office for which Mr. Chen
`has applied to appear pro hac vice in the last three (3) years; and
`has familiarity with the subject matter at issue in the proceeding.
`viii.
`Ex. 2008, 1–2.
`Patent Owner’s lead counsel, Heidi L. Keefe, who is a registered to practice
`before the USPTO, asserts that there is good cause for Ms. Whitney’s pro hac vice
`admission as follows: (1) Ms. Whitney is experienced litigation attorney and has
`been involved in numerous complex litigations; and (2) Ms. Whitney is familiar with
`the pending litigation between the parties and, as such, is familiar with the subject
`matter at issue in this proceeding. Paper 22, 1–2. Thus, Patent Owner has shown
`good cause why Ms. Whitney should be recognized pro hac vice for purposes of this
`proceeding and Ms. Whitney has provided the requisite affidavits or declarations.
`Therefore, Ms. Whitney has complied with the requirements for admission pro hac
`vice in this proceeding.
`
`II. Order
`
`It is
`ORDERED that the motion seeking admission pro hac vice for Sarah B.
`Whitney is GRANTED;
`FURTHER ORDERED that Sarah B. Whitney may not act as lead counsel
`in the proceeding;
`
`
`
`3
`
`
`
`Case IPR2016-00476
`Patent 8,116,430 B1
`
`
`
`
`FURTHER ORDERED that a registered practitioner must remain as lead
`counsel throughout the proceeding; and
`FURTHER ORDERED that Sarah B. Whitney is to comply with the Office
`Patent Trial Practice Guide and the Board’s Rules of Practice for Trials, as set forth
`in Part 42 of the C.F.R.; and
`FURTHER ORDERED that Sarah B. Whitney is to 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., which took
`effect on May 3, 2013.
`
`
`PETITIONER:
`
`Theresa Gillis
`Erick Palmer
`Amanda Streff
`MAYER BROWN LLP
`tgillis@mayerbrown.com
`ejpalmer@mayerbrown.com
`astreff@mayerbrown.com
`
`PATENT OWNER:
`
`Heidi Keefe
`Daniel Knauss
`Scott Cole
`Reuben Chen
`COOLEY LLP
`hkeefe@cooley.com
`dknauss@cooley.com
`Varian_PTAB_IPR@cooley.com
`rchen@cooley.com
`
`
`
`4
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