`571-272-7822
`
`Paper 32
`Entered: September 29, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NEUMODX MOLECULAR, INC.,
`Petitioner,
`
`v.
`
`HANDYLAB, INC.,
`Patent Owner.
`____________
`
`IPR2020-01133
`Patent 8,415,103 B2
`____________
`
`
`
`Before SHERIDAN K. SNEDDEN, JO-ANNE M. KOKOSKI, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Petitioner’s Motion for Admission
`Pro Hac Vice of Peter M. Kohlhepp
`37 C.F.R. § 42.10
`
`
`
`
`
`IPR2020-01133
`Patent 8,415,103 B2
`
`
`On September 7, 2021, Petitioner filed a Motion for Admission Pro
`Hac Vice of Peter M. Kohlhepp. Paper 29 (“Motion”). Petitioner also filed
`a Declaration of Peter M. Kohlhepp in support of the Motion. Paper 30
`(“Declaration”).1 Petitioner attests that Patent Owner does not oppose the
`Motion. Paper 29, 1. For the reasons provided below, Petitioner’s Motion is
`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 8, 3 (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 Motion and the accompanying
`Declaration, we conclude that Mr. Kohlhepp (1) has sufficient legal and
`technical qualifications to represent Petitioner in this proceeding, (2) has
`demonstrated sufficient familiarity with the subject matter of this
`proceeding, and (3) meets all other requirements for admission pro hac vice,
`and that Petitioner’s intent to be represented by counsel with litigation
`experience is warranted. Accordingly, Petitioner has established good cause
`
`
`1 Petitioner filed the Declaration as a Paper. Petitioner is reminded that
`affidavits and declarations must be filed as exhibits so that they may be
`referenced individually by exhibit number. See 37 C.F.R. § 42.63.
`2
`
`
`
`
`
`IPR2020-01133
`Patent 8,415,103 B2
`
`for pro hac vice admission of Mr. Kohlhepp. Mr. Kohlhepp will be
`permitted to serve as back-up counsel only. See 37 C.F.R. § 42.10(c).
`We note that Petitioner filed a Power of Attorney including
`Mr. Kohlhepp in accordance with 37 C.F.R. § 42.10(b). Paper 27.
`Petitioner also filed a Mandatory Notice identifying Mr. Kohlhepp as back-
`up counsel in accordance with 37 C.F.R. § 42.8(b)(3). Paper 26.
`Accordingly, it is:
`ORDERED that Petitioner’s Motion for pro hac vice admission of
`Peter M. Kohlhepp is granted;
`FURTHER ORDERED that Petitioner is to continue to have a
`registered practitioner represent it as lead counsel for this proceeding;
`FURTHER ORDERED that Mr. Kohlhepp is authorized to represent
`Petitioner as back-up counsel only in this proceeding;
`FURTHER ORDERED that Mr. Kohlhepp is to comply with the
`Consolidated Trial Practice Guide2 (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; and
`FURTHER ORDERED that Mr. Kohlhepp 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.
`
`
`
`
`
`
`
`2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`3
`
`
`
`
`
`IPR2020-01133
`Patent 8,415,103 B2
`
`For PETITIONER:
`
`James K. Cleland
`Michael N. Spink
`Keith Weiss
`DICKINSON WRIGHT, PLLC
`jcleland@dickison-wright.com
`mspink@dickinson-wright.com
`kweiss@dickinson-wright.com
`
`
`For PATENT OWNER:
`
`Heather M. Petruzzi
`Barish Ozdamar, Ph.D.
`WILMER CUTLER PICKERING HALE and DORR LLP
`heather.petruzzi@wilmerhale.com
`barish.ozdamar@wilmerhale.com
`
`
`
`
`4
`
`
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