UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CORPAK MEDSYSTEMS, INC. and HALYARD HEALTH, INC,
`Petitioners
`
`V.
`
`KIRN MEDICAL DESIGN, L.L.C. and
`APPLIED MEDICAL TECHNOLOGY, INC
`Patent Owner
`
`
`
`Inter Parres Review No. IPR2017-01990
`
`Patent 6,631,715
`
`
`
`Mailed: September 27, 2017
`
`Before PATRICK E. BAKER, Trial Paralegal
`
`DECLARATION OF MICHAEL P. PADDEN, ESQ, IN SUPPORT OF MOTION
`FOR PRO HAC VICE ADMISSION
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CORPAK MEDSYSTEMS, INC. and HALYARD HEALTH, INC,
`Petitioners
`
`V.
`
`KIRN MEDICAL DESIGN, L.L.C. and
`APPLIED MEDICAL TECHNOLOGY, INC
`Patent Owner
`
`
`
`Inter Parres Review No. IPR2017-01990
`
`Patent 6,631,715
`
`
`
`Mailed: September 27, 2017
`
`Before PATRICK E. BAKER, Trial Paralegal
`
`DECLARATION OF MICHAEL P. PADDEN, ESQ, IN SUPPORT OF MOTION
`FOR PRO HAC VICE ADMISSION
`
`
`
`I, Michael P. Padden, declare as follows:
`
`1. I am a partner at the law firm Pearne & Gordon LLP.
`
`2. I have been a litigating attorney for more than thirty years. I have been
`
`litigating patent cases for at least the past twenty years.
`
`I am a co—chair of the
`
`Patent Litigation Subcommittee of the American Bar Association’s Section of
`
`Litigation.
`
`I was a member of the working group that drafted the Local Patent
`
`Rules for the United States District Court for the Northern District of Illinois.
`
`I am
`
`a frequent speaker and author on topics relating to patent litigation. A listing of
`
`recent presentations and publications is attached as Exhibit A.
`
`3. I am a member in good standing of the State Bar of Illinois.
`
`4. I have never been suspended or disbarred from practice before any court
`
`or administrative body.
`
`5. This my third application for pro hac vice admission to the Patent Trial
`
`and Appeal Board. No application under my name for admission to practice before
`
`any court or administrative body has been denied.
`
`6. I am a member of the Trial Bar of the United States District Court for the
`
`Northern District of Illinois and I have also been admitted to practice in federal
`
`district courts in Ohio, Indiana, Michigan, Florida, and Wyoming. I have been
`
`allowed to appear pro hac vice in numerous state and federal courts throughout the
`
`country and I have never been denied admission pro hac vice.
`
`
`
`7. No sanctions or contempt citations have ever been imposed against me by
`
`any court or administrative body.
`
`8. 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 37 C.F.R.
`
`9. I understand that I will be subject to the USPTO Rules of Professional
`
`Responsibility set forth in 37 CPR § § 11.101 et seq. and disciplinary jurisdiction
`
`under 37 C.F.R. § 1 1.19(a).
`
`10. I have an established familiarity with the subject matter at issue in this
`
`proceeding. I participated extensively in advising Patent Owner in this matter.
`
`Through my participation to date I have become very familiar with United States
`
`Patent No. 6,631,715 and the prior art cited in the Petition.
`
`11. I am lead trial counsel for Patent Owner in the concurrent litigation
`
`Applied Medical Technology, Inc. v. Corpak Medsystems, Ina, 1:16-cv—02190
`
`(N .D. Ohio), involving the same patent and prior art submitted by Petitioner in the
`
`Petition of this proceeding. As lead trial counsel of the concurrent litigation, I am
`
`involved in claim construction regarding the ‘715 patent.
`
`
`
`I hereby declare that all statements made herein of my own knowledge are
`
`true and that all statements made on information and belief are believed to be true;
`
`and further that these statements are made with the knowledge that willful false
`
`statements and the like so made are punishable by fine or imprisonment, or both,
`
`under section 1001 of Title 18 of the United States Code.
`
`Dated: September 27, 2017
`
`Michael P. Padden
`
`Pearne & Gordon LLP
`2 N. LaSalle Street, 12th Floor
`Chicago, Illinois 60602
`Phone: 216-301-2276
`
`mpadden@pearne.com
`
`
`
`EXHIBIT A
`
`
`
`Michael P. Padden
`
`Recent Publications and Presentations
`
`“Patent Cases in the Supreme Court”, ABA Section of Litigation Intellectual
`Property Committee Roundtable, March 24, 2017.
`
`“The Rise of the ‘Footprint’ Approach in Reasonable Royalty Damages: What’s
`New in 2016,” The Knowledge Group/The Knowledge Congress Live Webcast
`Series, February 18, 2016.
`
`“Supreme Court Announces New Standard for Review of Claim Construction
`Rulings,” ABA Section of Litigation News & Notes, Intellectual Property, January
`29, 2015.
`
`“Reasonable Royalty Damages: How to Satisfy the Judge and Persuade the Jury,”
`ABA Section of Intellectual Property Law and the ABA Center for Professional
`Development, August 19, 2014.
`
`“Post-Uniloc Reasonable Royalty Damages: What to Do Now and How to Present
`It to the Jury?” Landslide, July/August 2014.
`
`“Supreme Court Eases Standard for Award of Attorney Fees in Patent Cases,”
`ABA Intellectual Property Website, June 17, 2014.
`
`“SCOTUS Rejects Expanded Concept of Induced Infringement,” ABA Intellectual
`Property Website, June 16, 2014.
`
`“Patent Trolls: Do They Help or Hurt Innovation and Will the New Legislation
`Kill Them?” ABA Litigation Section Annual Conference, April 10, 2014.
`
`“Determining Damages in Patent Cases Since Uniloc ’s Prohibition on Using the
`25% Rule,” Intellectual Property Law Association of Chicago, September 20,
`2012.
`
`”Out of Court Investigations," Ethics for In—House 1P Counsel, June 19, 2012.
`
`“Spoliation Rules for Patent Litigation,” IPLAC Corporate Counsel Committee
`CLE Seminar, April 13, 2012.
`
`“Ethics in Litigation Management,” Ethics for In—House IP Counsel, June 8, 2010.
`
`
`
`“Issues and Considerations Associated with Concurrent Reexamination: A
`Litigator’s Perspective,” Practising Law Institute, Patent Litigation Program,
`March 11, 2010.
`
`“After Forest Group v. Bon Tool: What’s Next in False Marking?” ABA
`Intellectual Property Litigation Web Site, March 2010.
`
`“A Conversation with Hon. Paul I. Luckern, Chief Administrative Law Judge for
`the United States International Trade Commission,” ABA Litigation Section Patent
`Litigation Subcommittee, March 9, 2010.
`
`“Licensing Strategies in the Wake of the Terrible Trio: eBay, Medimmune and
`KSR,” IQPL Patent Strategies Conference, September 26, 2007.
`
`“In re Seagare Technology, Federal Circuit Imposes Recklessness Standard for
`Willful Infringement and Establishes General Rule that Reliance on Opinion of
`Counsel Will Not Waive Privilege for Trial Counsel,” ABA 1P Litigation Web site,
`September, 2007.
`
`“Patent Litigators are Placed in Role of Translators,” National Law Journal,
`August 27, 2007.
`
`“Patent Claim Construction from Markman to Phillips,” Forum on Preventing and
`Defending Pharmaceutical and Biotech Patent Litigation, December 9, 2005.
`
`“Early Stage Patent Litigation,” Law Seminars International, Program Co—Chair,
`September 24, 2004.
`
`“New Strategies Arising From Hatch-Waxman Amendments,” Practising Law
`Institute, Telephone Briefing, May 12, 2004.
`
`“Hatch—Waxman Changes,” National Law Journal, February 23, 2004.
`
`“Supreme Court Weighs In On Trade Dress Protection After Patent Expiration,”
`Gardner, Carton & Douglas Client Memorandum, April, 2001.
`
`“Exclusive Contracts, Market Share Discounts and Bundled Discounts,” Gardner,
`Carton & Douglas Breakfast Briefing on Antitrust Issues in Distribution and B2B
`Exchanges, February 8, 2001.
`
`
`
`“Staying Ahead in e-Business Method Patenting,” Gardner, Carton & Douglas
`Breakfast Briefing, November 30, 2000.
`
`
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