`571-272-7822
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` Paper 13
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`Entered: November 26, 2012
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`BLOOMBERG INC.; BLOOMBERG L.P.; BLOOMBERG FINANCE L.P.;
`THE CHARLES SCHWAB CORPORATION;
`CHARLES SCHWAB & CO., INC.;
`E*TRADE FINANCIAL CORPORATION; E*TRADE SECURITIES LLC;
`E*TRADE CLEARING LLC; OPTIONSXPRESS HOLDINGS INC.;
`OPTIONSXPRESS, INC.; TD AMERITRADE HOLDING CORP.;
`TD AMERITRADE, INC.; TD AMERITRADE IP COMPANY, INC.; and
`THINKORSWIM GROUP INC.
`Petitioner,
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`v.
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`Patent of MARKETS-ALERT PTY LTD.
`Patent Owner.
`____________
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`Case CBM2013-00005 (JYC)
`Patent 7,941,357
`____________
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`
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`Before JAMESON LEE, SALLY C. MEDLEY, JONI Y. CHANG, Administrative
`Patent Judges.
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`CHANG, Administrative Patent Judge.
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`
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`DECISION
`Motion for Pro Hac Vice Admission
`37 C.F.R. § 42.10
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`
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`Case CBM2013-00005 (JYC)
`Patent 7,941,357
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`
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`Markets-Alert Pty. Ltd. (“Markets-Alert”) filed a motion for Adrian Pruetz
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`to appear pro hac vice (Paper 8), which was accompanied by a declaration of Ms.
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`Pruetz in support of the motion (Paper 101). The petitioner did not file an
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`opposition to the motion. For the reasons provided below, Markets-Alert’s motion
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`is granted.
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`As set forth in 37 C.F.R. § 42.10(c), the Board may recognize counsel pro
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`hac vice during a proceeding upon a showing of good cause, subject to the
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`condition that lead counsel be a registered practitioner. In authorizing a motion for
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`pro hac vice, the Board also requires a statement of facts showing there is good
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`cause for the Board to recognize counsel pro hac vice and an affidavit or
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`declaration of the individual seeking to appear. Paper 12.
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`In its motion, Markets-Alert states that there is good cause for Ms. Pruetz’s
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`admission because, according to Markets-Alert, lead counsel, Andrew Choung, is a
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`registered practitioner, and Ms. Pruetz is an experienced litigator and has an
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`established familiarity with the subject matter at issue in the proceeding. Paper 8,
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`p. 2. More specifically, Markets-Alert directs the Board to Ms. Pruetz’s
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`declaration where Ms. Pruetz attests to the fact that she represents Markets-Alert as
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`lead counsel in six district court actions that involve the same patent at issue in this
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`1 This declaration should have been filed as a separate exhibit and labeled properly.
`37 C.F.R. § 42.63.
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`2
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`
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`Case CBM2013-00005 (JYC)
`Patent 7,941,357
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`proceeding. Paper 8, p. 2; paper 10, ¶ 10. In her declaration, Ms. Pruetz also
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`attests that:
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`(1) She has been “practicing in the field of intellectual property, and
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`particularly, patent litigation, for over thirty years.”
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`(2) She is “a member in good standing of the Bar of the State of California
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`and is admitted to practice before the United States Supreme Court” and several
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`other Federal and state courts.
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`(3) She has been “in private practice and litigating patent cases since May
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`1982, been lead counsel on several hundred patent cases …, and litigated many of
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`them through both trial and appeal.”
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`(4) She has “never been suspended, disbarred, sanctioned or cited for
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`contempt by any court or administrative body.”
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`(5) She has “never had a court or administrative body deny [her] application
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`for admission to practice.”
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`(6) She has “read and will comply with Office Patent Trial Practice Guide
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`and the Board’s Rules of Practice for Trials, as set forth in Part 42 of the C.F.R.”
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`(7) She agrees “to be subject to the United States Patent and Trademark
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`Office Code of Professional Responsibility set forth in 37 C.F.R. §§ 10.20 et seq.
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`and disciplinary jurisdiction under 37 C.F.R. § 11.19(a).” Paper 10, ¶¶ 1-2, 4-8.
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`3
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`Case CBM2013-00005 (JYC)
`Patent 7,941,357
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`We find that Ms. Pruetz has sufficient legal and technical qualifications to
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`represent Markets-Alert in the instant proceeding. We further recognize that there
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`is a need for Markets-Alert to have its lead counsel in the related litigations
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`involved in this proceeding. Accordingly, we determine that Markets-Alert has
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`established good cause for Ms. Pruetz’s admission.
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`For the foregoing reasons, it is
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`ORDERED that Markets-Alert’s motion for pro hac vice admission is
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`granted, namely Ms. Pruetz is authorized to represent Markets-Alert as back-up
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`counsel in the instant proceeding;
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`FURTHER ORDERED that Markets-Alert is to continue to have a
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`registered practitioner as lead counsel in the instant proceeding; and
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`FURTHER ORDERED that Ms. Pruetz is to comply with the Office Patent
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`Trial Practice Guide and the Board’s Rules of Practice for Trials, as set forth in
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`Part 42 of the C.F.R., and to be subject to the Office’s Code of Professional
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`Responsibility set forth in 37 C.F.R. §§ 10.20 et seq. and disciplinary jurisdiction
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`under 37 C.F.R. § 11.19(a).
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`PETITIONER:
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`Michael T. Rosato
`WILSON SONSINI GOODRICH & ROSATI
`701 Fifth Avenue
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`4
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`Case CBM2013-00005 (JYC)
`Patent 7,941,357
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`Suite 5100
`Seattle, WA 98104-7036
`Tel.: 206.883.2529
`Fax: 206.883.2699
`Email: mrosato@wsgr.com
`
`Brian D. Range
`WILSON SONSINI GOODRICH & ROSATI
`900 South Capital of Texas Hwy
`Las Cimas IV, Fifth Floor
`Austin, TX 78746-5546
`Tel.: 512.338.5478
`Fax: 512.338.5499
`Email: brange@wsgr.com
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`PATENT OWNER:
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`Andrew Choung
`GLASER WEIL FINK JACOBS HOWARD
`AVCHEN & SHAPIRO LLP
`10250 Constellation Boulevard, 19th Floor
`Los Angeles, CA 90067
`achoung@glaserweil.com
`Tel.: 310-553-3000
`Fax: 310-785-3506
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`5
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