Trials@uspto.gov
`571-272-7822
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` Paper 35
`Entered: November 26, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`APPLE INC.
`Petitioner
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`v.
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`SIGHTSOUND TECHNOLOGIES, LLC
`Patent Owner
`____________
`
`Case CBM2013-00023
`Patent 5,966,440
`
`
`
`Before MICHAEL P. TIERNEY, JUSTIN T. ARBES, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
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`
`
`
`DECISION
`Petitioner’s Motion for Pro Hac Vice Admission of James R. Batchelder
`37 C.F.R. § 42.10
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`Petitioner filed a motion requesting pro hac vice admission of James
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`R. Batchelder and provided a declaration from Mr. Batchelder in support of
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`

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`Case CBM2013-00023
`Patent 5,966,440
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`its request.1 Paper 20. Patent Owner did not file an opposition to the
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`motion. For the reasons stated below, Petitioner’s motion is granted.
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`The Board may recognize counsel pro hac vice during a proceeding
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`“upon a showing of good cause, subject to the condition that lead counsel be
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`a registered practitioner and to any other conditions as the Board may
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`impose.” 37 C.F.R. § 42.10(c). For example, where the lead counsel is a
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`registered practitioner, a non-registered practitioner may be permitted to
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`appear pro hac vice “upon showing that counsel is an experienced litigating
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`attorney and has an established familiarity with the subject matter at issue in
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`the proceeding.” Id. In authorizing motions for pro hac vice admission, the
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`Board requires the moving party to provide a statement of facts showing
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`there is good cause for the Board to recognize counsel pro hac vice and an
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`affidavit or declaration of the individual seeking to appear. Paper 4
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`(referencing the “Order – Authorizing Motion for Pro Hac Vice Admission,”
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`Paper 6 in IPR2013-00010, at 3-4).
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`In its motion, Petitioner argues that there is good cause for
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`Mr. Batchelder’s pro hac vice admission because he is an experienced
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`litigation attorney and has an established familiarity with the subject matter
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`at issue in this proceeding. Paper 20 at 2-3. Specifically, Mr. Batchelder is
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`lead counsel for Petitioner in the related litigation involving the patent being
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`challenged in this proceeding, and has been “heavily involved with forming
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`non-infringement and invalidity positions against” the challenged patent. Id.
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`at 3. Petitioner states that given Mr. Batchelder’s involvement in the related
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`1 Petitioner filed its motion and declaration as one document in the Patent
`Review Processing System (PRPS). In the future, the parties should file
`exhibits separately from other papers, such as motions, so that they may be
`referenced individually by number. See 37 C.F.R. § 42.63.
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`2
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`

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`Case CBM2013-00023
`Patent 5,966,440
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`litigation, there is a need for him to act as counsel for Petitioner in this
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`proceeding as well. Id. In his declaration, Mr. Batchelder attests that:
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`(1)
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`(2)
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`he is “a member in good standing of the Bar of California”;
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`he has “never been suspended or disbarred from practice before
`any court or administrative body,” has “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 [him] by any court or
`administrative body”;
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`(3) he 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 agrees to 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)”;
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`(4)
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`(5)
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`he has not “applied to appear pro hac vice before the Office in
`any other matters,” other than related Case CBM2013-00020;
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`he has been “practicing law since 1988 and [has] extensive
`experience litigating patent infringement cases”; and
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`(6) he has “represented [Petitioner] against [Patent Owner] as lead
`counsel in the pending District Court litigation since shortly
`after October 2011,” and has been “heavily involved with
`forming non-infringement and invalidity positions against
`[the challenged patent] and related patents.”
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`See Paper 20, Declaration of James R. Batchelder in Support of Motion for
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`Pro Hac Vice Admission ¶¶ 1-8. Also, Petitioner’s lead counsel, J. Steven
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`Baughman, is a registered practitioner.
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`Based on the facts set forth above, we conclude that Mr. Batchelder
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`has sufficient legal and technical qualifications to represent Petitioner in this
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`proceeding and that there is a need for Petitioner to have its counsel in the
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`related litigation involved in this proceeding. See IPR2013-00639, Paper 7,
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`dated October 15, 2013 (superseding IPR2013-00010, Paper 6, dated
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`3
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`Case CBM2013-00023
`Patent 5,966,440
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`October 15, 2012, and setting forth the requirements for pro hac vice
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`admission) (copy available on the Board Web site under “Representative
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`Orders, Decisions, and Notices”). Accordingly, Petitioner has established
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`good cause for Mr. Batchelder’s pro hac vice admission. Mr. Batchelder
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`will be permitted to appear pro hac vice in the instant proceeding as back-up
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`counsel only. See 37 C.F.R. § 42.10(c).
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`In consideration of the foregoing, it is hereby:
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`ORDERED that Petitioner’s motion for pro hac vice admission of
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`James R. Batchelder is granted and Mr. Batchelder is authorized to represent
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`Petitioner as back-up counsel;
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`FURTHER ORDERED that Petitioner is to continue to have a
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`registered practitioner as lead counsel in the instant proceeding;
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`FURTHER ORDERED that Mr. Batchelder is to comply with the
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`Office Patent Trial Practice Guide and the Board’s Rules of Practice for
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`Trials, as set forth in Title 37, Part 42 of the Code of Federal Regulations;
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`and
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`FURTHER ORDERED that Mr. Batchelder is subject to the USPTO
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`Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and
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`the Office’s disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
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`4
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`Case CBM2013-00023
`Patent 5,966,440
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`PETITIONER:
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`J. Steven Baughman
`Ching-Lee Fukuda
`ROPES & GRAY LLP
`steven.baughman@ropesgray.com
`ching-lee.fukuda@ropesgray.com
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`
`PATENT OWNER:
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`David R. Marsh
`Kristan L. Lansbery
`ARNOLD & PORTER LLP
`david.marsh@aporter.com
`kristan.lansbery@aporter.com
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`5
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