UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`EDWARDS LIFESCIENCES CORPORATION, EDWARDS LIFESCIENCES
`LLC, AND EDWARDS LIFESCIENCES AG
`
`Petitioners
`
`v .
`
`BOSTON SCIENTIFIC SCIMED, INC.
`Patent Owner
`
`_______________
`
`Case IPR2017-0060
`Patent 8,992,608
`_______________
`
`PETITIONERS’ MOTION FOR ADMISSION
`PRO HAC VICE OF NICHOLAS GROOMBRIDGE
`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
`
`
`
`1
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`EDWARDS LIFESCIENCES CORPORATION, EDWARDS LIFESCIENCES
`LLC, AND EDWARDS LIFESCIENCES AG
`
`Petitioners
`
`v .
`
`BOSTON SCIENTIFIC SCIMED, INC.
`Patent Owner
`
`_______________
`
`Case IPR2017-0060
`Patent 8,992,608
`_______________
`
`PETITIONERS’ MOTION FOR ADMISSION
`PRO HAC VICE OF NICHOLAS GROOMBRIDGE
`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
`
`
`
`1
`
`
`
`I .
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`RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. §42.10(c), and as authorized in the Patent Trial and
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`Appeal Board’s (“Board”) Notice of Filing Date Accorded to Petition (Paper 3),
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`Petitioners Edwards Lifesciences Corporation, Edwards Lifesciences LLC, and
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`Edwards Lifesciences AG (collectively, “Petitioners”) respectfully request pro
`
`hac vice admission of Nicholas Groombridge as counsel in this proceeding.
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`I I . STATEMENT OF FACTS
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`37 C.F.R. §42.10(c) states:
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`The Board may recognize counsel pro hac vice during a
`
`proceeding upon a showing of good cause, subject to the
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`condition that lead counsel be a registered practitioner
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`and to any other conditions as the Board may impose. For
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`example, where
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`the
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`lead counsel
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`is a registered
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`practitioner, a motion to appear pro hac vice by counsel
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`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 attached Declaration of Nicholas Groombridge in
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`Support of Motion for Admission Pro Hac Vice (“Groombridge Decl.”), establish
`
`good cause to admit Mr. Groombridge pro hac vice in this proceeding.
`
`
`
`2
`
`
`
`1. Lead counsel Gregory S. Cordrey is a registered practitioner and
`
`is experienced in inter partes proceedings in the USPTO.
`
`2. Backup counsel Brian Egan is a registered practitioner and is
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`experienced in inter partes proceedings in the USPTO.
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`3. Backup counsel Catherine Nyarady is a registered practitioner
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`and is experienced in inter partes proceedings in the USPTO.
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`4. Nicolas Groombridge is an experienced litigation attorney. Mr.
`
`Groombridge has been a litigating attorney for twenty-eight years. (Groombridge
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`Decl. ¶ 1.) Mr. Groombridge has been litigating patent cases for all of those years.
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`(Id. ¶ 2.) Mr. Groombridge is a member in good standing of the New York State
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`Bar since 1989 with no suspensions or disbarments from practice, nor any
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`application for admission to practice denied, nor any sanctions or contempt
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`citations, and is admitted to practice in the United States District Courts for the
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`Southern, Eastern and Western Districts of New York, the United States District
`
`Courts for the Western and Eastern Districts of Michigan, the United States
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`District Court for the Eastern District of Texas, the United States District Court for
`
`the District of Colorado, the United States Court of Appeals for the Federal Circuit,
`
`and the United States Supreme Court. (Id. ¶¶ 3-6.)
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`5. Mr. Groombridge has an established familiarity with the subject
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`matter at issue in this proceeding, including, inter alia, U.S. Patent No. 8,992,608
`
`
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`3
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`
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`(the “‘608 patent”), its prior art, and the field of transcatheter aortic heart valves.
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`(Id. at ¶ 7.) Mr. Groombridge is lead counsel for Petitioners in the related district
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`court litigation Boston Scientific Corp. et al. v. Edwards Lifesciences Corp., Case
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`No. 1:16-cv-00275-SLR-SRF (D. Del.). (Id.) That litigation also involves the ‘608
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`patent and overlaps with this proceeding on a number of significant issues,
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`including the technology disclosed and claimed in the ‘608 patent, the interpretation
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`of the ‘608 patent’s claims, and the invalidity of the ‘608 patent. (Id.) As lead
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`counsel, Mr. Groombridge has been heavily involved in all substantive decisions,
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`including forming Petitioners’ claim construction, non-infringement, and invalidity
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`positions. (Id. at ¶ 8.)
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`6. Mr. Groombridge has read and will comply with the Office Patent
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`Trial Practice Guide and the Board’s Rules of Practice for Trials set forth in part 42
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`of 37 C.F.R, and he agrees to be subject to the USPTO Code of Professional
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`Responsibility set forth in 37 C.F.R. §§10.20 et seq., and to disciplinary
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`jurisdiction under 37 C.F.R. §11.19(a). (Id. ¶¶ 9-10.) Mr. Groombridge has not
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`applied to appear pro hac vice in other proceedings before the Office in the last
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`three (3) years. (Id. ¶11.)
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`7. Patent Owner Boston Scientific Scimed, Inc. has indicated that
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`this Motion will not be opposed.
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`
`
`4
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`
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`I I I . ANALYSIS
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`The facts contained in the Statement of Facts above, and contained in the
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`Groombridge Declaration, establish that there is good cause to admit Mr.
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`Groombridge pro hac vice in this proceeding under 37 C.F.R. §42.10. Lead
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`counsel are registered practitioners, Mr. Groombridge is an experienced patent
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`litigation attorney, and Mr. Groombridge has an established familiarity with the
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`subject matter at issue in the proceeding.
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`I V . CONCLUSION
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`For the foregoing reasons, Petitioner respectfully requests that the Board
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`admit Nicholas Groombridge pro hac vice in this proceeding.
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`
`
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`Dated: June 6, 2017
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`
`
`
`
`
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`/s/ Gregory S. Cordrey
`
`
`
`
`
`Respectfully submitted,
`
`Gregory S. Cordrey (Reg. No. 44,089)
`Lead Counsel for Petitioner
`Jeffer Mangels Butler & Mitchell LLP
`3 Park Plaza, Suite 1100
`Irvine, CA 92614
`Tel: (949) 623-7236
`Fax: (888) 712-3345
`gxc@jmbm.com
`
`Brian P. Egan (Reg. No. 54,866)
`Back Up Counsel for Petitioner
`Morris, Nichols, Arsht & Tunnell
`LLP
`1201 North Market Street
`
`
`
`5
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`
`
`P.O. Box 1347
`Wilmington, DE 19899-1347
`Tel: (302) 351-9454
`Fax: (302) 498-6216
`began@mnat.com
`
`
`Catherine Nyarady (Reg. No. 42,042)
`Back Up Counsel for Petitioner
`Paul, Weiss, Rifkind, Wharton &
`Garrison
`1285 Avenue of the Americas
`New York, NY 10019
`Tel: (212) 373-3532
`Fax: (212) 492-0532
`cnyarady@paulweiss.com
`
`
`
`
`6
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`
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on June 6,
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`CERTIFICATE OF SERVICE
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`2017, a complete and entire copy of PETITIONERS’ MOTION FOR
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`ADMISSION PRO HAC VICE OF NICHOLAS GROOMBRIDGE
`
`PURSUANT TO 37 C.F.R. § 42.10 has been served in its entirety by e-mail on
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`the following addresses of record for Patent Owner:
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`jennifer.sklenar@apks.com
`
`wallace.wu@apks.com
`
`
`
`/s/ Gregory S Cordrey
`
`Gregory S. Cordrey, Esq. (Reg. No. 44,089)
`Attorney for Petitioners
`
`7
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