Trials@uspto.gov
`571-272-7822
`
`Paper: 19
`Entered: February 1, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SOTERA WIRELESS, INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`____________
`
`IPR2020-00967 (Patent RE47,244 E)
`IPR2020-01019 (Patent RE47,353 E)
`IPR2020-01033 (Patent RE47,249 E)1
`____________
`
`
`
`Before JOSIAH C. COCKS, JENNIFER MEYER CHAGNON, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`PER CURIAM.
`
`
`ORDER
`Granting Patent Owner’s Motions for Admission
`Pro Hac Vice of Jeremiah S. Helm
`37 C.F.R. § 42.10
`
`
`
`
`1 We exercise our discretion to issue one order to be entered in each case. The
`parties are not authorized to use this style heading for subsequent papers without
`prior Board approval.
`
`
`571-272-7822
`
`Paper: 19
`Entered: February 1, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SOTERA WIRELESS, INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`____________
`
`IPR2020-00967 (Patent RE47,244 E)
`IPR2020-01019 (Patent RE47,353 E)
`IPR2020-01033 (Patent RE47,249 E)1
`____________
`
`
`
`Before JOSIAH C. COCKS, JENNIFER MEYER CHAGNON, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`PER CURIAM.
`
`
`ORDER
`Granting Patent Owner’s Motions for Admission
`Pro Hac Vice of Jeremiah S. Helm
`37 C.F.R. § 42.10
`
`
`
`
`1 We exercise our discretion to issue one order to be entered in each case. The
`parties are not authorized to use this style heading for subsequent papers without
`prior Board approval.
`
`
`
`IPR2020-00967 (Patent RE47,244 E)
`IPR2020-01019 (Patent RE47,353 E)
`IPR2020-01033 (Patent RE47,249 E)
`
`
`On January 28, 2021, Patent Owner filed a motion for admission pro hac
`vice of Jeremiah S. Helm in each of the above-identified proceedings (collectively,
`“Motions”). Paper 17.2 Patent Owner also filed declarations of Mr. Helm in
`support of the Motions (collectively, “Declarations”). Ex. 2010.3 Patent Owner
`attests that Petitioner does not oppose the Motions. Paper 17, 1. For the reasons
`provided below, Patent Owner’s Motions are granted.
`Pursuant to 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. In its notice authorizing motions for
`pro hac vice admission, the Board requires a statement of facts showing there is
`good cause for the Board to recognize counsel pro hac vice and an affidavit or
`declaration of the individual seeking to appear in this proceeding. See Paper 3, 2
`(citing Unified Patents, Inc. v. Parallel Iron, LLC, IPR2013-00639, Paper 7 (PTAB
`Oct. 15, 2013) (representative “Order – Authorizing Motion for Pro Hac Vice
`Admission”)).
`Based on the facts set forth in the Motions and the accompanying
`Declarations, we conclude that Mr. Helm has sufficient legal and technical
`qualifications to represent Patent Owner in these proceedings, that Mr. Helm has
`demonstrated sufficient familiarity with the subject matter of these proceedings,
`and that Patent Owner’s intent to be represented by counsel with litigation
`experience is warranted. Accordingly, Patent Owner has established good cause
`
`
`2 For purposes of expediency, we cite to Papers filed in IPR2020-00967. Patent
`Owner filed similar Motions in IPR2020-01019 (Paper 16) and IPR2020-01033
`(Paper 15).
`3 We cite to Exhibits filed in IPR2020-00967. Patent Owner filed similar
`Declarations in IPR2020-01019 (Ex. 2010) and IPR2020-01033 (Ex. 2010).
`2
`
`
`
`
`
`IPR2020-00967 (Patent RE47,244 E)
`IPR2020-01019 (Patent RE47,353 E)
`IPR2020-01033 (Patent RE47,249 E)
`
`for pro hac vice admission of Mr. Helm. Mr. Helm will be permitted to serve as
`back-up counsel only. See 37 C.F.R. § 42.10(c).
`A Power of Attorney has not been submitted for Mr. Helm. Accordingly,
`Patent Owner must submit a Power of Attorney for Mr. Helm in accordance with
`37 C.F.R. § 42.10(b), and must update its Mandatory Notices as required by
`37 C.F.R. § 42.8(b)(3).
`
`Accordingly, it is:
`ORDERED that Patent Owner’s Motions for pro hac vice admission of
`Mr. Jeremiah S. Helm are granted;
`FURTHER ORDERED that Patent Owner is to continue to have a registered
`practitioner represent it as lead counsel for the above-identified proceedings;
`FURTHER ORDERED that Mr. Helm is authorized to represent Patent
`Owner only as back-up counsel in the above-identified proceedings;
`FURTHER ORDERED that Mr. Helm is to comply with the Office Patent
`Trial Practice Guide (84 Fed. Reg. 64,280 (Nov. 21, 2019)), and the Board’s Rules
`of Practice for Trials, as set forth in Part 42 of Title 37, Code of Federal
`Regulations;
`FURTHER ORDERED that Mr. Helm shall be subject to the Office’s
`disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and the USPTO Rules of
`Professional Conduct set forth in 37 C.F.R. §§ 11.101 et. seq.;
`FURTHER ORDERED that, within ten (10) business days of the date of this
`Order, and prior to Mr. Helm’s participation in the proceedings, Patent Owner
`must submit a Power of Attorney for Mr. Helm in each of the above-identified
`proceedings in accordance with 37 C.F.R. § 42.10(b); and
`
`
`
`3
`
`
`
`IPR2020-00967 (Patent RE47,244 E)
`IPR2020-01019 (Patent RE47,353 E)
`IPR2020-01033 (Patent RE47,249 E)
`
`
`FURTHER ORDERED that Patent Owner shall file updated Mandatory
`Notices in each of the above-identified proceedings in accordance with 37 C.F.R.
`§ 42.8(b)(3), identifying Mr. Helm as back-up counsel.
`
`
`
`
`
`
`
`4
`
`
`
`IPR2020-00967 (Patent RE47,244 E)
`IPR2020-01019 (Patent RE47,353 E)
`IPR2020-01033 (Patent RE47,249 E)
`
`FOR PETITIONER:
`
`Rudolph A. Telscher, Jr.
`Daisy Manning
`Nathan P. Sportel
`HUSCH BLACKWELL LLP
`PTAB-RTelscher@huschblackwell.com
`PTAB-DManning@huschblackwell.com
`Nathan.Sportel@huschblackwell.com
`
`
`FOR PATENT OWNER:
`
`Stephen W. Larson
`Jacob L. Peterson
`Irfan A. Lateef
`Brian C. Claassen
`KNOBBE, MARTENS, OLSON, & BEAR, LLP
`2swl@knobbe.com
`2jup@knobbe.com
`2ial@knobbe.com
`2bcc@knobbe.com
`
`
`
`
`5
`
`
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