UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________
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`CORPAK MEDSYSTEMS, INC. and HALYARD HEALTH, INC,
`Petitioners
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`v.
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`KIRN MEDICAL DESIGN, L.L.C. and
`APPLIED MEDICAL TECHNOLOGY, INC.
`Patent Owner
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`_______________
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`Inter Partes Review No. IPR2017-01990
`Patent 6,631,715
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`_______________
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`Mailed: September 27, 2017
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`Before PATRICK E. BAKER, Trial Paralegal
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`NOTICE OF FILING OF PATENT OWNER’S MOTION FOR PRO HAC VICE
`ADMISSION OF MICHAEL PADDEN AS BACK-UP COUNSEL UNDER 37
`C.F.R. § 42.10(c)
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`A pro hac vice motion in the above proceeding is filed herewith.
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`______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
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`CORPAK MEDSYSTEMS, INC. and HALYARD HEALTH, INC,
`Petitioners
`
`v.
`
`KIRN MEDICAL DESIGN, L.L.C. and
`APPLIED MEDICAL TECHNOLOGY, INC.
`Patent Owner
`
`_______________
`
`Inter Partes Review No. IPR2017-01990
`Patent 6,631,715
`
`_______________
`
`Mailed: September 27, 2017
`
`Before PATRICK E. BAKER, Trial Paralegal
`
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`NOTICE OF FILING OF PATENT OWNER’S MOTION FOR PRO HAC VICE
`ADMISSION OF MICHAEL PADDEN AS BACK-UP COUNSEL UNDER 37
`C.F.R. § 42.10(c)
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`A pro hac vice motion in the above proceeding is filed herewith.
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`Pursuant to 37 C.F.R. § 42.10(c), and the Board’s order received September
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`13, 2017 authorizing the filing of the instant motion, exclusive licensee APPLIED
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`MEDICAL TECHNOLOGY, INC. respectfully requests that the Board recognize
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`Michael P. Padden, Esq., as back-up counsel pro hac vice on behalf of Patent
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`Owner during this proceeding.
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`In an Inter Partes Review (IPR), the Board has discretion under 37 C.F.R. §
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`42.10(c) to recognize counsel pro hac vice. 37 C.F.R. § 42.10(c) provides that:
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`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 and to any other conditions as the
`Board may impose. For example, where the lead counsel is a
`registered practitioner, a motion to appear pro hac vice by counsel
`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.
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`
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`This motion is being filed no sooner than twenty one (21) days after service
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`of the petition in accordance with the “Order -- Authorizing Motion for Pro Hac
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`Vice Admission” in Case IPR2013-00639, Paper 7, a copy of which is available on
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`the Board website under “Representative Orders, Decisions, and Notices.”
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`I.
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`Statement of Facts Showing That There Is Good Cause For The
`Board To Recognize Mr. Padden Pro Hac Vice In This Proceeding
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`Based on the following facts, and supported by the Declaration of Mr.
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`Michael P. Padden submitted herewith, there is good cause for the Board to
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`recognize Mr. Padden as back-up counsel pro hac vice in this matter:
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`1. Lead counsel in this Inter Partes Review proceeding is Gregory M. York.
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`Mr. York is a partner at the law firm Pearne & Gordon LLP and registered
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`to practice before the United States Patent and Trademark Office (Reg.
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`No. 57,533).
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`2. Mr. Padden is a partner at the law firm Pearne & Gordon LLP. Declaration
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`of Michael P. Padden, Exhibit 2001, ¶ 1.
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`3. Mr. Padden is an experienced litigating attorney. Mr. Padden has been a
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`litigating attorney for more than thirty years and has been litigating patent
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`cases for at least twenty years. Mr. Padden is a co-chair of the Patent
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`Litigation Subcommittee of the American Bar Association’s Section of
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`Litigation. He was a member of the working group that drafted the Local
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`Patent Rules for the United States District Court for the Northern District of
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`Illinois. He is a frequent speaker and author on topics relating to patent
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`litigation. Id., ¶ 2.
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`4. Mr. Padden is a member in good standing of the State Bar of Illinois. Id.,
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`¶ 3.
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`5. Mr. Padden has never been suspended or disbarred from practice before
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`any court or administrative body. Id., ¶ 4.
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`6. This is Mr. Padden’s t h i r d application for pro hac vice admission to the
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`Patent Trial and Appeal Board. No application under his name for
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`admission to practice before any court or administrative body has been
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`denied. Id., ¶ 5.
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`7. Mr. Padden is a member of the Trial Bar of the United States District
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`Court for the Northern District of Illinois and has also been admitted to
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`practice in federal district courts in Ohio, Indiana, Michigan, Florida, and
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`Wyoming. Mr. Padden has been allowed to appear pro hac vice in
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`numerous state and federal courts throughout the country and has never
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`been denied admission pro hac vice. Id., ¶ 6.
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`8. No sanctions or contempt citations have ever been imposed against Mr.
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`Padden by any court or administrative body. Id., ¶ 7.
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`9. Mr. Padden has read and will comply with the Office Patent Trial Practice
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`Guide and the Board’s Rules of Practice for Trial set forth in Part 42 of 37
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`C.F.R. Id., ¶ 8.
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`10. Mr. Padden understands that he will be subject to the USPTO Rules of
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`Professional Responsibility set forth in 37 C.F.R. §§ 11.101 et seq. and
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`disciplinary jurisdiction under 37 C.F.R. § 11.19(a). Id., ¶ 9.
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`11. Mr. Padden has established familiarity with the subject matter at issue in
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`this proceeding. He has participated extensively in advising Patent Owner
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`in this matter. Through his participation to date he has become very
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`familiar with the ‘715 Patent and the prior art cited in the Petition. Id., ¶
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`10.
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`12. Mr. Padden is also the lead trial counsel for Patent Owner in the concurrent
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`litigation Applied Medical Technology, Inc. v. Corpak Medsystems, Inc.,
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`1:16-cv-02190 (N.D. Ohio), involving the same patent and prior art
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`submitted by Petitioner in the Petition of this proceeding. As lead trial
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`counsel of the concurrent litigation, he is involved in claim construction
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`regarding the ‘715 patent.
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`II. Declaration of Mr. Padden
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`In support of this motion, a declaration of Michael P. Padden is submitted
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`herewith (Exhibit 2001) showing that Mr. Padden satisfies the requirements for
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`pro hac vice admission as set forth in IPR2013-00639, Paper 7, dated October 15,
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`2013.
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`Given his knowledge of the subject matter at issue in this proceeding and his
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`experience in litigating patent validity issues, Patent Owner would benefit from Mr.
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`Padden’s expertise and involvement in this proceeding.
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`III. Conclusion
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`Patent Owner respectfully submits that, in light of the foregoing, the Board
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`should recognize Mr. Padden as back-up counsel pro hac vice for Patent Owner
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`during this proceeding.
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`Date: September 27, 2017
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`Respectfully submitted,
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`/Gregory M. York/
`By:
`Gregory M. York (Reg. No. 57,533)
`Pearne & Gordon LLP
`Attorney for Patent Owner
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e), the undersigned certifies that on September 27,
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`
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`2017, a complete and entire copy of this MOTION FOR PRO HAC VICE
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`ADMISSION was provided via electronic mail to the attorneys of record for
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`Petitioners:
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`Lead Counsel:
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`Richard M. McDermott
`Registration No. 40,720
`ALSTON & BIRD LLP
`101 S. Tryon St, Ste 4000
`Charlotte, NC 28280
`rick.mcdermott@alston.com
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`Back-up Counsel: Jitendra Malik Ph.D.
`Registration No. 55,823
`ALSTON & BIRD LLP
`jitty.malik@alston.com
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`Alissa M. Pacchioli
`Registration No. 74,252
`ALSTON & BIRD LLP
`alissa.pacchioli@alston.com
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`/Gregory M. York/
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`Gregory M. York (Reg. No. 57,533)
`Pearne & Gordon LLP
`Attorney for Patent Owner
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