throbber
Trials@uspto.gov
`571-272-7822
`
`Paper 14
`Date: April 20, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2020-01520 (Patent 10,258,265 B1)
`IPR2020-01536 (Patent 10,588,553 B2)
`IPR2020-01537 (Patent 10,588,553 B2)
`IPR2020-01538 (Patent 10,588,554 B2)
`IPR2020-01539 (Patent 10,588,554 B2)1
`
`
`
`
`
`
`
`
`
`Before GEORGE R. HOSKINS, ROBERT L. KINDER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`WIEKER, Administrative Patent Judge.
`
`
`DECISION
`Granting Patent Owner’s Motions for Pro Hac Vice Admission of
`Jeremiah S. Helm and William R. Zimmerman
`37 C.F.R. § 42.10
`
`
`1 We exercise our discretion to issue one Order to be entered in each
`proceeding. The parties are not authorized to use a multiple-case caption.
`
`

`

`IPR2020-01520 (Patent 10,258,265 B1)
`IPR2020-01536 (Patent 10,588,553 B2)
`IPR2020-01537 (Patent 10,588,553 B2)
`IPR2020-01538 (Patent 10,588,554 B2)
`IPR2020-01539 (Patent 10,588,554 B2)
`DISCUSSION
`On April 16, 2021, Masimo Corporation (“Patent Owner”) filed
`motions for pro hac vice admission of Mr. Jeremiah S. Helm and
`Mr. William R. Zimmerman, in the above-captioned proceedings. Papers 11
`and 12 (collectively “Motions”).2 The motions are accompanied by
`declarations from Mr. Helm (Ex. 2001) and Mr. Zimmerman (Ex. 2002).
`Patent Owner indicates the motions are unopposed. Paper 11, 1; Paper 12, 1.
`Having reviewed the motions and declarations, we conclude that
`Mr. Helm and Mr. Zimmerman have sufficient qualifications to represent
`Patent Owner in this proceeding, and that Patent Owner has shown good
`cause for pro hac vice admission of Mr. Helm and Mr. Zimmerman. See
`Unified Patents, Inc. v. Parallel Iron, LLC, IPR2013-00639, Paper 7 (PTAB
`Oct. 15, 2013) (Order Authorizing Motion for Pro Hac Vice Admission)
`(setting forth the requirements for pro hac vice admission). Mr. Helm and
`Mr. Zimmerman will be permitted to appear pro hac vice as back-up counsel
`only. See 37 C.F.R. § 42.10(c).
`
`
`
`
`
`
`2 Paper and exhibit numbers refer to IPR2020-001520. Corresponding
`Motions and Declarations were filed in IPR2020-001536, IPR2020-001537,
`IPR2020-001538, and IPR2020-001539.
`
`2
`
`

`

`IPR2020-01520 (Patent 10,258,265 B1)
`IPR2020-01536 (Patent 10,588,553 B2)
`IPR2020-01537 (Patent 10,588,553 B2)
`IPR2020-01538 (Patent 10,588,554 B2)
`IPR2020-01539 (Patent 10,588,554 B2)
`ORDER
`
`It is:
`ORDERED that Patent Owner’s motion for pro hac vice admission of
`Jeremiah S. Helm is granted, and Mr. Helm is authorized to represent Patent
`Owner only as back-up counsel in this proceeding;
`ORDERED that Patent Owner’s motion for pro hac vice admission
`of William R. Zimmerman is granted, and Mr. Zimmerman is authorized to
`represent Patent Owner only as back-up counsel in this proceeding;
`FURTHER ORDERED that Patent Owner must file, before the
`scheduled deposition on April 22, 2021, updated mandatory notices
`identifying Mr. Helm and Mr. Zimmerman as back-up counsel in the above-
`identified proceedings in accordance with 37 C.F.R. § 42.8(b)(3);
`FURTHER ORDERED that Patent Owner must file, before the
`scheduled deposition on April 22, 2021, a power of attorney for Mr. Helm
`and Mr. Zimmerman in the above-identified proceedings in accordance with
`37 C.F.R. § 42.10(b);
`FURTHER ORDERED that Patent Owner is to continue to have a
`registered practitioner as lead counsel in each proceeding;
`FURTHER ORDERED that Mr. Helm and Mr. Zimmerman are to
`comply with the Office Patent Trial Practice Guide3 (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
`
`
`3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`3
`
`

`

`IPR2020-01520 (Patent 10,258,265 B1)
`IPR2020-01536 (Patent 10,588,553 B2)
`IPR2020-01537 (Patent 10,588,553 B2)
`IPR2020-01538 (Patent 10,588,554 B2)
`IPR2020-01539 (Patent 10,588,554 B2)
`FURTHER ORDERED that Mr. Helm and Mr. Zimmerman are
`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.
`§§ 11.101–11.901.
`
`
`
`
`
`
`
`4
`
`

`

`IPR2020-01520 (Patent 10,258,265 B1)
`IPR2020-01536 (Patent 10,588,553 B2)
`IPR2020-01537 (Patent 10,588,553 B2)
`IPR2020-01538 (Patent 10,588,554 B2)
`IPR2020-01539 (Patent 10,588,554 B2)
`
`For PETITIONER:
`
`Walter Renner
`Roberto Devoto
`Hyun Jin In
`FISH & RICHARDSON P.C.
`Axf-ptab@fr.com
`devoto@fr.com
`in@fr.com
`
`
`For PATENT OWNER:
`
`Joseph Re
`Stephen Larson
`Jarom Kesler
`Jacob Peterson
`KNOBBE, MARTENS, OLSON & BEAR LLP
`2jrr@knobbe.com
`2jzk@knobbe.com
`2swl@knobbe.com
`2jup@jknobbe.com
`
`
`
`
`5
`
`

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