Filed on behalf of: Maillefer Instruments Holding S.a.r.l.
`
` Paper ____
`
`By:
`
`Date filed: July 31, 2018
`
`Joseph A. Hynds, Lead Counsel
`Eric D. Blatt, Back-up Counsel
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`Phone: 202-783-6040
`Facsimile: 202-783-6031
`Emails: jhynds@rfem.com
` eblatt@rfem.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
` EDGE ENDO, LLC,
`Petitioner,
`
`v.
`
`MAILLEFER INSTRUMENTS HOLDING S.A.R.L.,
`Patent Owner.
`_______________
`
`Case IPR2018-01349
`Patent 9,801,696
`_______________
`
`PATENT OWNER’S MOTION FOR ADMISSION
`PRO HAC VICE OF STEVEN LIEBERMAN
`
`
`
` Paper ____
`
`By:
`
`Date filed: July 31, 2018
`
`Joseph A. Hynds, Lead Counsel
`Eric D. Blatt, Back-up Counsel
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`Phone: 202-783-6040
`Facsimile: 202-783-6031
`Emails: jhynds@rfem.com
` eblatt@rfem.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
` EDGE ENDO, LLC,
`Petitioner,
`
`v.
`
`MAILLEFER INSTRUMENTS HOLDING S.A.R.L.,
`Patent Owner.
`_______________
`
`Case IPR2018-01349
`Patent 9,801,696
`_______________
`
`PATENT OWNER’S MOTION FOR ADMISSION
`PRO HAC VICE OF STEVEN LIEBERMAN
`
`
`
`Case IPR2018-01349
`Patent 9,801,696
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`I.
`
`Relief Requested
`
`Pursuant to 37 C.F.R. § 42.10, Patent Owner Maillefer Instruments Holding
`
`S.a.r.l. (“Patent Owner”) requests that the Board admit Steven Lieberman pro hac
`
`vice in this proceeding to serve as back-up counsel.
`
`II.
`
`Statement of Facts Showing There is Good Cause for the Board to
`Recognize Counsel Pro Hac Vice During the Proceeding
`
`In accordance with 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 and to any other conditions
`
`as the Board may impose. § 42.10(c) indicates that, “where lead counsel is a
`
`registered practitioner, a motion to appear pro hac vice may be granted upon a
`
`showing that counsel is an experienced litigating attorney and has an established
`
`familiarity with the subject matter at issue in the proceeding.” The facts here
`
`establish good cause for the Board to recognize Steven Lieberman pro hac vice
`
`during this proceeding, so that he may participate in, inter alia, oral hearings,
`
`depositions, and conferences with the Board.
`
`1.
`
`Lead counsel, Joseph a. Hynds, is a registered practitioner.
`
`2
`
`
`
`Case IPR2018-01349
`Patent 9,801,696
`
`2.
`
`Counsel, Steven Lieberman, is an experienced litigating attorney and
`
`has an established familiarity with the subject matter at issue in the proceeding.
`
`Accompanying this motion is the Declaration of Steven Lieberman in Support of
`
`Patent Owner’s Motion for Admission Pro Hac Vice (“Lieberman Decl.”). Mr.
`
`Lieberman is a member in good standing of the Bars of the State of New York and
`
`the District of Columbia, admitted to practice in the United States District Courts
`
`for the District of Columbia, Maryland, the Northern District of California, and the
`
`Northern, Eastern, and Southern Districts of New York. Lieberman Decl., ¶ 2.
`
`Mr. Lieberman is also admitted to practice in the Courts of Appeals for the District
`
`of Columbia, the Second Circuit, the Fourth Circuit, the Federal Circuit, and the
`
`United States Supreme Court. Id. Mr. Lieberman has served as a President of the
`
`Giles S. Rich American Inn of Court, and the D.C. Inn is devoted to the practice of
`
`intellectual property law. Id., ¶ 3. Mr. Lieberman has been litigating patent cases
`
`since 1990, primarily as lead counsel. Id., ¶ 4.
`
`3.
`
`Mr. Lieberman is familiar with the subject matter at issue in this
`
`proceeding by virtue of his representing the Patent Owner in a lawsuit brought
`
`against the Petitioner, Dentsply Sirona Inc. et al. v. Edge Endo, LLC et al., Case
`
`No. 1:17-cv-01041-WJ-SCY (D. N.M.), involving the patent at issue in this
`
`proceeding. Lieberman Decl., ¶ 11.
`
`3
`
`
`
`Case IPR2018-01349
`Patent 9,801,696
`
`4. Mr. Lieberman attests to each of the listed items required by the
`
`“Order -- Authorizing Motion for Pro Hac Vice Admission in Case IPR2013-
`
`00639” referenced in the Notice of Filing Date Accorded to Petition and Time for
`
`Filing Patent Owner Preliminary Response, mailed July 18, 2018 (Paper 3). See
`
`Lieberman Decl., ¶¶ 1-11.
`
`5.
`
`Mr. Lieberman has read and will comply with the Office Patent Trial
`
`Practice Guide and the Board’s Rules of Practice for Trials, as set forth in Part 42
`
`of 37 C.F.R. Lieberman Decl., ¶ 8. Mr. Lieberman agrees to 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) and to be subject to the
`
`USPTO Rules of Professional Conduct as set forth in Changes to Representation of
`
`Others Before the United States Patent and Trademark Office; Final Rule, 78 Fed.
`
`Reg. 20180 (Apr. 3, 2013) (effective May 3, 2013). Lieberman Decl., ¶ 9.
`
`III. Conclusion
`
`The requirements for admission pro hac vice being hereby established,
`
`Patent Owner Maillefer Instruments Holding S.a.r.l., respectfully requests that the
`
`Board admit Steven Lieberman pro hac vice in this proceeding.
`
`4
`
`
`
`Date: July 31, 2018
`
`By:
`
`Case IPR2018-01349
`Patent 9,801,696
`
`Respectfully submitted,
`
`/ Joseph A. Hynds /
`Joseph A. Hynds, Reg. No. 34,627
`ROTHWELL, FIGG, ERNST &
` MANBECK, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`Phone: 202-783-6040
`Facsimile: 202-783-6031
`
`Counsel for Patent Owner
`Maillefer Instruments Holding S.a.r.l.
`
`5
`
`
`
`Case IPR2018-01349
`Patent 9,801,696
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 31st day of July, 2018, a true and correct copy of
`
`the foregoing PATENT OWNER’S MOTION FOR ADMISSION PRO HAC VICE
`
`OF STEVEN LIEBERMAN was served, via electronic mail, upon the following
`
`counsel of record for Petitioner Edge Endo, LLC:
`
`Jeffrey S. Ginsberg
`Abhishek Bapna
`Patterson Belknap Webb & Tyler LLP
`1133 Avenue of the Americas
`New York, NY 10036
`Phone: 212-336-2630
`Emails: jginsberg@pbwt.com
`abapna@pbwt.com
`
`/ Erik van Leeuwen /
`Erik van Leeuwen
`Litigation Operations Coordinator
`Rothwell, Figg, Ernst & Manbeck, P.C.
`
`6
`
`
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