`Trials@uspto.gov
`Entered: January 15, 2019
`Tel: 571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ILLUMINA, INC.,
`Petitioner,
`v.
`THE TRUSTEES OF COLUMBIA UNIVERSITY
`IN THE CITY OF NEW YORK,
`Patent Owner.
`
`Case IPR2018-00291 (Patent 9,718,852 B2)
`Case IPR2018-00318 (Patent 9,719,139 B2)
`Case IPR2018-00322 (Patent 9,708,358 B2)
`Case IPR2018-00385 (Patent 9,725,480 B2)
` Case IPR2018-00797 (Patent 9,868,985 B2)1
`
`
`
`
`
`
`
`
`
`Before JAMES A. WORTH, MICHELLE N. ANKENBRAND, and BRIAN
`D. RANGE, Administrative Patent Judges.
`RANGE, Administrative Patent Judge.
`
`
`ORDER
`Granting Petitioner’s Motion for Pro Hac Vice Admission of
`Edward R. Reines
`37 C.F.R. § 42.10(c)
`
`
`1 This Order applies to all five proceedings. Paper and exhibit numbers refer
`to Case IPR2018-00291. The proceedings have not been consolidated, and
`the parties are not authorized to use a consolidated caption unless a paper
`contains a footnote indicating that the identical paper has been filed in each
`proceeding.
`
`
`
`IPR2018-00291 (Patent 9,718,852 B2)
`IPR2018-00318 (Patent 9,719,139 B2)
`IPR2018-00322 (Patent 9,708,358 B2)
`IPR2018-00385 (Patent 9,725,480 B2)
`IPR2018-00797 (Patent 9,868,985 B2)
`
`
`Petitioner filed a motion for pro hac vice admission of Edward R.
`Reines. Paper 40 (“Motion”). Petitioner also filed a declaration from
`Mr. Reines in support of the Motion. Ex. 1088. Petitioner represents that
`Patent Owner does not oppose the Motion. Motion 1.
`Having reviewed the Motion and the declaration of Mr. Reines, we
`conclude that Mr. Reines has sufficient qualifications to represent Petitioner
`in these proceedings and that Petitioner has shown good cause for
`Mr. Reines’ pro hac vice admission. See Unified Patents, Inc. v. Parallel
`Iron, LLC, IPR2013-00639 (PTAB Oct. 15, 2013) (setting forth the
`requirements for pro hac vice admission) (Paper 7). Mr. Reines will be
`permitted to appear pro hac vice in these proceedings as back-up counsel
`only. See 37 C.F.R. § 42.10(c). Mr. Reines will be subject to the USPTO
`Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et. seq.
`
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s Motion for pro hac vice admission of
`Edward R. Reines is granted in each proceeding identified above, and
`Mr. Reines is authorized to represent Petitioner only as back-up counsel in
`these proceedings;
`FURTHER ORDERED that Petitioner is to continue to have a
`registered practitioner as lead counsel in these proceedings;
`FURTHER ORDERED that Mr. Reines is to comply with the Office
`Patent Trial Practice Guide as updated by the Office Patent Trial Practice
`Guide August 2018 Update, 83 Federal Register 39,989 (Aug. 13, 2018),
`
`2
`
`
`
`IPR2018-00291 (Patent 9,718,852 B2)
`IPR2018-00318 (Patent 9,719,139 B2)
`IPR2018-00322 (Patent 9,708,358 B2)
`IPR2018-00385 (Patent 9,725,480 B2)
`IPR2018-00797 (Patent 9,868,985 B2)
`
`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 Mr. Reines is subject to the USPTO’s
`disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and the USPTO’s Rules
`of Professional Conduct set forth at 37 C.F.R. §§ 11.101 et. seq.
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2018-00291 (Patent 9,718,852 B2)
`IPR2018-00318 (Patent 9,719,139 B2)
`IPR2018-00322 (Patent 9,708,358 B2)
`IPR2018-00385 (Patent 9,725,480 B2)
`IPR2018-00797 (Patent 9,868,985 B2)
`
`PETITIONER:
`
`Kerry Taylor
`Michael L. Fuller
`KNOBBE, MARTENS, OLSON, & BEAR, LLP
`2kst@knobbe.com
`2mlf@knobbe.com
`BoxIllumina@knobbe.com
`
`Derek Walter
`Edward R. Reines
`Weil, Gotshal & Manges LLP
`derek.walter@weil.com
`edward.reines@weil.com
`
`
`
`PATENT OWNER:
`
`John White
`Gary Gershik
`COOPER & DUNHAM LLP
`jwhite@cooperdunham.com
`ggershik@cooperdunham.com
`
`John Murnane
`Robert S. Schwartz
`Zachary L. Garrett
`Justin Oliver
`VENABLE│ FITZPATRICK VENABLE LLP
`jmurnane@venable.com
`rschwartz@venable.com
`zgarrett@venable.com
`joliver@venable.com
`
`4
`
`
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