UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`RTI SURGICAL, INC.,
`Petitioner,
`
`v.
`
`LIFENET HEALTH,
`Patent Owner.
`________________________
`
`IPR2019-00569
`U.S. Patent No. 6,458,158
`
`IPR2019-00570
`U.S. Patent No. 8,182,532
`
`IPR2019-00571
`U.S. Patent No. 6,569,200
`
`IPR2019-00572
`U.S. Patent No. 9,579,420
`
`IPR2019-00573
`U.S. Patent No. 9,585,986
`________________________
`
`MOTION FOR PRO HAC VICE ADMISSION OF
`ALI H.K. TEHRANI UNDER 37 C.F.R. § 42.101
`
`
`
`
`
`
`
`1 This paper has been filed in each of the above-captioned proceedings.
`
`
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`RTI SURGICAL, INC.,
`Petitioner,
`
`v.
`
`LIFENET HEALTH,
`Patent Owner.
`________________________
`
`IPR2019-00569
`U.S. Patent No. 6,458,158
`
`IPR2019-00570
`U.S. Patent No. 8,182,532
`
`IPR2019-00571
`U.S. Patent No. 6,569,200
`
`IPR2019-00572
`U.S. Patent No. 9,579,420
`
`IPR2019-00573
`U.S. Patent No. 9,585,986
`________________________
`
`MOTION FOR PRO HAC VICE ADMISSION OF
`ALI H.K. TEHRANI UNDER 37 C.F.R. § 42.101
`
`
`
`
`
`
`
`1 This paper has been filed in each of the above-captioned proceedings.
`
`
`
`-00573
`-00572
`-00571
`-00570
`IPR2019 -00569
`Pat. Nos. 6,458,158 8,182,532 6,569,200 9,579,420 9,585,986
`
`
`Patent Owner LifeNet Health respectfully requests that the Board recognize
`
`Ali H.K. Tehrani as counsel pro hac vice for the above-captioned proceedings in
`
`accordance with 37 C.F.R. § 42.10(c). The lead counsel, Michael H. Jacobs, is a
`
`registered practitioner (Reg. No. 41,870).
`
`Petitioner has indicated that they do not oppose this motion.
`
`I.
`
`Time for Filing
`
`This Motion for Pro Hac Vice Admission is being filed no sooner than
`
`twenty-one (21) days after service of the Petition, as required by the Order
`
`Authorizing Motion for Pro Hac Vice Admission referenced in the Notice of Filing
`
`Date entered on March 6, 2019.
`
`II. Statement of Facts
`
`As required by the Order Authorizing Motion for Pro Hac Vice Admission,
`
`the following statement of facts demonstrates good cause for the Board to
`
`recognize Mr. Tehrani pro hac vice. Mr. Tehrani is an experienced litigation
`
`attorney, and has been involved in numerous litigations involving patent
`
`infringement in U.S. District Courts across the country, the U.S. Court of Appeals
`
`for the Federal Circuit, and the International Trade Commission. Mr. Tehrani has
`
`been a litigation attorney for over 5 years, and has represented a wide range of
`
`clients in patent litigation matters.
`
`1
`
`
`
`-00573
`-00572
`-00571
`-00570
`IPR2019 -00569
`Pat. Nos. 6,458,158 8,182,532 6,569,200 9,579,420 9,585,986
`
`
`U.S. Patent Nos. 6,458,158, 8,182,532, 6,569,200, 9,579,420, and 9,585,986
`
`(collectively, “LifeNet Patents”) are currently being asserted by Patent Owner
`
`against Petitioner in an infringement suit pending in the U.S. District Court for the
`
`Northern District of Florida, styled Lifenet Health v. RTI Surgical, Inc., No. 1:18-
`
`cv-00146-MW/GRJ (D. Fl.) (“the District Court Litigation”). Petitioner has
`
`asserted the same prior art references against the LifeNet Patents in the District
`
`Court Litigation.
`
`Mr. Tehrani is a counsel for Patent Owner in connection with the District
`
`Court Litigation. As a result, Mr. Tehrani has a well-established familiarity with
`
`the subject matter at issue in these proceedings. For instance, Mr. Tehrani has
`
`been involved in meetings with engineers and experts for Patent Owner regarding
`
`the technology described and claimed in the LifeNet Patents, as well as Petitioner’s
`
`allegedly infringing products. Throughout this process, Mr. Tehrani has gained
`
`relevant technical knowledge and experience in the fields of bone and soft tissue
`
`grafts. He has also been involved in preparing Patent Owner’s infringement
`
`contentions, including underlying analyses of the scope and meaning of the
`
`asserted claims of the LifeNet Patents, and has been involved in studying the prior
`
`art references at issue in the context of assessing Petitioner’s invalidity contentions
`
`in the District Court Litigation.
`
`2
`
`
`
`-00573
`-00572
`-00571
`-00570
`IPR2019 -00569
`Pat. Nos. 6,458,158 8,182,532 6,569,200 9,579,420 9,585,986
`
`
`III. Affidavit or Declaration of Individual Seeking to Appear
`
`This Motion for Pro Hac Vice Admission is accompanied by the Declaration
`
`and biography of Ali H.K. Tehrani (Ex. 2014 for IPR Nos. 2019-00571, -00572, -
`
`00573)(Ex. 2026 for IPR Nos. 2019-00569, -00570) as required by the Order
`
`Authorizing Motion for Pro Hac Vice Admission. In this Declaration, Mr. Tehrani
`
`states compliance with the general requirements for pro hac vice admission,
`
`including that he is a member in good standing of the Bar of the State of Maryland
`
`and the Bar of the District of Columbia, and is admitted to practice before the U.S.
`
`Courts of Appeals for the Federal Circuit. Mr. Tehrani also states that he has never
`
`been suspended, disbarred, sanctioned, or cited for contempt by any court or
`
`administrative body; he has never had a court or administrative body deny his
`
`application for admission to practice; he has 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 Title 37 of the Code of Federal Regulations; he agrees to be subject to
`
`the United States Patent and Trademark Office 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 in the past three (3) years, he has not applied to appear pro hac vice
`
`in any proceedings before the United States Patent and Trademark Office. In
`
`3
`
`
`
`-00573
`-00572
`-00571
`-00570
`IPR2019 -00569
`Pat. Nos. 6,458,158 8,182,532 6,569,200 9,579,420 9,585,986
`
`
`addition, Mr. Tehrani states that he has familiarity with the subject matter at issue
`
`in these inter partes review proceedings.
`
`Accordingly, Patent Owner respectfully submits that there is good cause for
`
`the Board to recognize Mr. Tehrani as counsel pro hac vice during these
`
`proceedings.
`
`
`Dated: October 4, 2019
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`/ Deborah H. Yellin/
`Deborah H. Yellin, Reg. No. 45,904
`CROWELL & MORING LLP
`Intellectual Property Group
`P.O. Box 14300
`Washington, DC 20044-4300
`Telephone: (202) 624-2500
`Facsimile: (202) 628-8844
`
`ATTORNEY FOR PATENT OWNER
`LIFENET HEALTH
`
`4
`
`
`
`-00573
`-00572
`-00571
`-00570
`IPR2019 -00569
`Pat. Nos. 6,458,158 8,182,532 6,569,200 9,579,420 9,585,986
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e)(4), the undersigned hereby certifies that on
`
`
`
`October 4, 2019, the foregoing MOTION FOR PRO HAC VICE ADMISSION OF
`
`ALI H.K. TEHRANI UNDER 37 C.F.R. § 42.10 was served electronically by
`
`filing this document through the PTAB E2E System, as well as by e-mailing copies
`
`to the following email address for counsel of record for Petitioner:
`
`Herbert D. Hart III (Reg. No. 30,063)
`David D. Headrick (Reg. No.40,642)
`Alejandro Menchaca (Reg.No. 34,389)
`Gregory C. Schodde (Reg. No. 36,668)
`Scott P. McBride (Reg. No. 42,853)
`McAndrews, Held & Malloy, Ltd.
`500 West Madison Street
`Chicago, Illinois 60661
`Tel.: (312) 775-8000
`RTI532IPR@mcandrews-ip.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/April Marconi/
`Case Manager
`
`
`
`
`
`
`5
`
`
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