Trials@uspto.gov
`571-272-7822
`
`Paper: 29
`Entered: January 18, 2022
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`____________
`
`IPR2020-01526
`Patent 6,771,994 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, ROBERT L. KINDER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`KINDER, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Patent Owner’s Motion for Admission
`Pro Hac Vice of Jeremiah S. Helm
`37 C.F.R. § 42.10
`
`
`
`
`571-272-7822
`
`Paper: 29
`Entered: January 18, 2022
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`____________
`
`IPR2020-01526
`Patent 6,771,994 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, ROBERT L. KINDER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`KINDER, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Patent Owner’s Motion for Admission
`Pro Hac Vice of Jeremiah S. Helm
`37 C.F.R. § 42.10
`
`
`
`
`
`IPR2020-01526
`Patent 6,771,994 B2
`
`
`On January 10, 2022, Patent Owner filed a Motion for Admission Pro
`Hac Vice of Jeremiah S. Helm. Paper 23 (“Motion”). Patent Owner also
`filed a Declaration of Jeremiah S. Helm in support of the Motion. Ex. 2016
`(“Declaration”). Patent Owner attests that Petitioner does not oppose the
`Motion. Paper 23, 1. For the reasons provided below, Patent Owner’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 4, 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 Motion and the accompanying
`Declaration, 1 we conclude that Mr. Helm has sufficient legal and technical
`
`
`1 Unified Patents indicates that “A motion for pro hac vice admission must:
`. . . Be accompanied by an affidavit or declaration of the individual seeking
`to appear attesting to the following: . . . All other proceedings before the
`Office for which the individual has applied to appear pro hac vice in the last
`three (3) years.” See Unified Patents, Paper 7 at 3. Although the
`Declaration identifies proceedings in which Mr. Helm “ha[s] appeared pro
`hac vice in proceedings before the United States Patent and Trademark
`Office,” the Declaration fails to identify all proceedings before the Office
`for which Mr. Helm has applied to appear pro hac vice in the last three
`years. See Ex. 2016 ¶ 11. For the purposes of this Order, we deem this
`harmless error.
`
`
`
`2
`
`
`
`IPR2020-01526
`Patent 6,771,994 B2
`
`qualifications to represent Patent Owner in this proceeding, that Mr. Helm
`has demonstrated sufficient familiarity with the subject matter of this
`proceeding, that Mr. Helm meets all other requirements for admission pro
`hac vice, and that Patent Owner’s intent to be represented by counsel with
`litigation experience is warranted. Accordingly, Patent Owner has
`established good cause 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).
`We note that Patent Owner has filed a Power of Attorney including
`Mr. Helm in accordance with 37 C.F.R. § 42.10(b). Paper 28. However, a
`Mandatory Notice identifying Mr. Helm as back-up counsel in accordance
`with 37 C.F.R. § 42.8(b)(3), has not been submitted by Patent Owner.
`Accordingly, Patent Owner must update its Mandatory Notices as required
`by 37 C.F.R. § 42.8(b)(3), to identify Mr. Helm as back-up counsel.
`Accordingly, it is:
`ORDERED that Patent Owner’s Motion for pro hac vice admission of
`Jeremiah S. Helm is granted;
`FURTHER ORDERED that Patent Owner is to continue to have a
`registered practitioner represent it as lead counsel for this proceeding;
`FURTHER ORDERED that Mr. Helm is authorized to represent
`Patent Owner as back-up counsel only in this proceeding;
`FURTHER ORDERED that Mr. Helm 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;
`
`2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`3
`
`
`
`
`
`IPR2020-01526
`Patent 6,771,994 B2
`
`
`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.; and
`FURTHER ORDERED that Patent Owner shall file an updated
`Mandatory Notice in this proceeding in accordance with 37 C.F.R. §
`42.8(b)(3), identifying Mr. Helm as back-up counsel.
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`IPR2020-01526
`Patent 6,771,994 B2
`
`FOR PETITIONER:
`
`Walter Renner
`Roberto Devoto
`Hyun Jin In
`Dan Smith
`Kim Leung
`Andrew Patrick
`Vivian Lu
`Usman Khan
`Grace Kim
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`devoto@fr.com
`in@fr.com
`dsmith@fr.com
`leung@fr.com
`patrick@fr.com
`vlu@fr.com
`khan@fr.com
`gkim@fr.com
`
`
`FOR PATENT OWNER:
`
`Joseph Re
`Stephen Larson
`Jarom Kesler
`Jacob Peterson
`Ben Katzenellenbogen
`Shannon Lam
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2jrr@knobbe.com
`2swl@knobbe.com
`2jzk@knobbe.com
`2jup@knobbe.com
`2bak@knobbe.com
`2sxl@knobbe.co
`
`
`
`5
`
`
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