`Tel: 571-272-7822
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`Paper 63
`Entered: April 2, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.
`Petitioner
`
`v.
`
`SIGHTSOUND TECHNOLOGIES, LLC
`Patent Owner
`____________
`
`Case CBM2013-00020 (Patent 5,191,573)
`Case CBM2013-00023 (Patent 5,966,440)1
`
`
`
`Before MICHAEL P. TIERNEY, JUSTIN T. ARBES, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`DECISION
`Petitioner’s Motion for Pro Hac Vice Admission of
`Lauren N. Robinson
`37 C.F.R. § 42.10
`
`
`1 This Decision addresses an issue pertaining to both cases. Therefore, we
`exercise our discretion to issue one Decision to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
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`
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`Case CBM2013-00020 (Patent 5,191,573)
`Case CBM2013-00023 (Patent 5,966,440)
`
`
`
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`In each of the instant proceedings, Petitioner filed a motion requesting
`pro hac vice admission of Lauren N. Robinson and provided a declaration
`from Ms. Robinson in support of the request.2 See CBM2013-00020, Paper
`55; CBM2013-00023, Paper 52. Patent Owner did not file an opposition to
`either of the motions. For the reasons stated below, Petitioner’s motions are
`granted. As the motions and declarations in the two proceedings are
`substantially similar, we will refer herein to the papers filed in Case
`CBM2013-00020 for convenience.
`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 and to any other conditions as the Board may
`impose.” 37 C.F.R. § 42.10(c). For example, where the lead counsel is a
`registered practitioner, a non-registered practitioner may be permitted to
`appear pro hac vice “upon showing that counsel is an experienced litigating
`attorney and has an established familiarity with the subject matter at issue in
`the proceeding.” Id. In authorizing motions for pro hac vice admission, the
`Board requires the moving party to provide 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. Paper 5
`(referencing the “Order – Authorizing Motion for Pro Hac Vice Admission,”
`Paper 6 in IPR2013-00010, at 3-4).
`
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`2 Petitioner filed each motion and declaration as a single document in the
`Patent Review Processing System (PRPS). Petitioner is reminded that
`exhibits (e.g., declarations) should be filed separately from other papers,
`such as motions, so that they may be referenced individually by number.
`See CBM2013-00020, Paper 39 at n.1; CBM2013-00023, Paper 35 at n.1;
`37 C.F.R. § 42.63.
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`2
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`
`
`Case CBM2013-00020 (Patent 5,191,573)
`Case CBM2013-00023 (Patent 5,966,440)
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`
`(3)
`
`In its motions, Petitioner argues that there is good cause for
`Ms. Robinson’s pro hac vice admission because she is an experienced
`litigation attorney and she has an established familiarity with the subject
`matter at issue in these proceedings. Paper 55 at 2-3. Specifically,
`Ms. Robinson is counsel for Petitioner in the related litigation involving the
`patents being challenged in the instant proceedings, and has been “heavily
`involved with forming invalidity positions against” the challenged patents.
`Id. at 3. Petitioner states that given Ms. Robinson’s involvement in the
`related litigation, Petitioner prefers for her to act as counsel in these
`proceedings as well. Id. In her declaration, Ms. Robinson attests that:
`(1)
`she is “a member in good standing of the Bar of California”;
`(2)
`she has “never been suspended or disbarred from practice
`before any court or administrative body” and “never been
`denied an application for admission to practice before any court
`or administrative body,” and “[n]o sanction or contempt citation
`has ever been imposed against [her] by any court or
`administrative body”;
`she has “read and will comply with the Office Patent Trial
`Practice Guide and the Board’s Rules of Practice for Trials set
`forth in part 42 of [title 37 of] the Code of Federal
`Regulations,” and understands that she “will be 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)”;
`in the last three years, she has “not applied to appear pro hac
`vice before the Office” in any proceeding other than the instant
`proceedings;
`she has been “practicing law since 2008 and [has] extensive
`experience litigating patent infringement cases”; and
`she has “represented [Petitioner] against [Patent Owner] in the
`pending District Court litigation since 2012,” and has been
`
`(4)
`
`(5)
`
`(6)
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`3
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`Case CBM2013-00020 (Patent 5,191,573)
`Case CBM2013-00023 (Patent 5,966,440)
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`“heavily involved with forming invalidity positions against [the
`challenged patents] and related patents.”
`See Paper 55, Declaration of Lauren N. Robinson in Support of Motion for
`Pro Hac Vice Admission ¶¶ 1-8. Also, Petitioner’s lead counsel, J. Steven
`Baughman, is a registered practitioner.
`Based on the facts set forth above, we conclude that Ms. Robinson has
`sufficient legal and technical qualifications to represent Petitioner in these
`proceedings and that there is a need for Petitioner to have its counsel in the
`related litigation involved in these proceedings. See Unified Patents, Inc. v.
`Parallel Iron, LLC, IPR2013-00639, Paper 7 (Oct. 15, 2013) (superseding
`IPR2013-00010, Paper 6, dated October 15, 2012, and setting forth the
`requirements for pro hac vice admission) (copy available on the Board Web
`site under “Representative Orders, Decisions, and Notices”). Accordingly,
`Petitioner has established good cause for Ms. Robinson’s pro hac vice
`admission. Ms. Robinson will be permitted to appear pro hac vice in the
`instant proceedings as back-up counsel only. See 37 C.F.R. § 42.10(c).
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s motions for pro hac vice admission of
`Lauren N. Robinson in the instant proceedings are granted and
`Ms. Robinson is authorized to represent Petitioner as back-up counsel in the
`instant proceedings;
`FURTHER ORDERED that Petitioner is to continue to have a
`registered practitioner as lead counsel in the instant proceedings;
`FURTHER ORDERED that Ms. Robinson is to comply with the
`Office Patent Trial Practice Guide and the Board’s Rules of Practice for
`Trials, as set forth in Title 37, Part 42 of the Code of Federal Regulations;
`and
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`4
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`Case CBM2013-00020 (Patent 5,191,573)
`Case CBM2013-00023 (Patent 5,966,440)
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`FURTHER ORDERED that Ms. Robinson is subject to the USPTO
`Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and
`the Office’s disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
`
`
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`5
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`Case CBM2013-00020 (Patent 5,191,573)
`Case CBM2013-00023 (Patent 5,966,440)
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`PETITIONER:
`
`J. Steven Baughman
`Ching-Lee Fukuda
`ROPES & GRAY LLP
`steven.baughman@ropesgray.com
`ching-lee.fukuda@ropesgray.com
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`
`PATENT OWNER:
`
`David R. Marsh
`Kristan L. Lansbery
`ARNOLD & PORTER LLP
`david.marsh@aporter.com
`kristan.lansbery@aporter.com
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`6
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