Petitioner Authorized to File Sanctions Motion Against Inventor

In Shire Development LLC, LCS Group, LLC, IPR2014-00739, Paper 14 (December 23, 2014), the Board authorized petitioner to file a motion for sanctions after the inventor Dr. Louis Sanfilippo, send an email in violation of the Board’s December 9, 2014, Order prohibiting him from contacting Shire, Shire’s employees, the expert retained by Shire for this proceeding (Dr. Timothy Brewerton), and counsel for Petitioner, except through counsel for Patent Owner or in the presence of counsel for Patent Owner.  The Board agreed with Petitioner and clarified its earlier order:

Dr. Sanfilippo is prohibited from contacting Petitioner, Petitioner’s employees, Petitioner’s expert, Petitioner’s counsel, or anyone associated with Petitioner, in relation to this proceeding. Further, any communication from Patent Owner to Petitioner or Petitioner’s representatives regarding this proceeding must be signed by Patent Owner’s counsel of record. Moreover, Dr. Sanfilippo cannot sign any paper to be filed with the Board in this proceeding, but all papers must be signed by Patent Owner’s counsel of record. We remind counsel that they are subject to the USPTO 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).

While his conduct is no doubt disruptive, since Dr. Sanfilippo is not a party to the proceeding (the reason he was not allowed to proceed pro se), one wonders what authority the Board has over his actions

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About Bryan Wheelock

Education
J.D., Washington University in St. Louis
B.S.E. in Mechanical Engineering, Duke University

Bryan Wheelock’s practice includes preparation and prosecution of patent and trademark applications and drafting of intellectual property agreements, including non-compete agreements. He has brought and defended lawsuits in federal and state courts relating to intellectual property and has participated in seizures of counterfeit and infringing goods.

Bryan prepares and prosecutes U.S. and foreign patent applications for medical devices, mechanical and electromechanical devices, manufacturing machinery and processes, metal alloys and other materials. He also does a substantial amount of patentability searching, trademark availability searching and patent and trademark infringement studies.

In addition to his practice at Harness Dickey, Bryan is an Adjunct Professor at Washington University School of Law and Washington University School of Engineering.