throbber
Trials@uspto.gov
`571-272-7822
`
`Paper 10
`Date: April 7, 2014
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INDEED, INC. and MONSTER WORLDWIDE, INC.
`Petitioners,
`
`v.
`
`CAREER DESTINATION DEVELOPMENT, LLC
`Patent Owner.
`____________
`
`
`
`Case CBM2014-00068 (US 7,424,438 B2)
`Case CBM2014-00077 (US 7,424,438 B2)1
`____________
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`JUSTIN BUSCH, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Patent Owner’s Motion for Pro Hac Vice Admission of David L. Marcus
`37 C.F.R. § 42.10
`
`
`
`1 This decision addresses issues that are identical in the two cases. Therefore, we
`exercise our discretion to issue one decision to be entered in each of the two cases.
`The parties, however, are not authorized to use this style heading in their papers.
`
`

`

`CBM2014-00068 (US 7,424,438 B2)
`CBM2014-00077 (US 7,424,438 B2)
`
`
`INTRODUCTION
`Patent Owner Career Destination Development, LLC (“Patent Owner”) filed
`a motion requesting pro hac vice admission of David L. Marcus. Paper 82. Patent
`Owner provided a declaration from Mr. Marcus in support of its motion. Paper 93.
`Petitioner did not oppose Patent Owner’s motion for pro hac vice admission of Mr.
`Marcus. For the reasons stated below, Patent Owner’s motion is granted.
`DISCUSSION
`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 a motion 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 6 at 2
`(referencing the “Order – Authorizing Motion for Pro Hac Vice Admission,” in
`Case IPR2013-00639, Paper 7).
`In its motion, Patent Owner argues that there is good cause for Mr. Marcus’s
`pro hac vice admission because he is an experienced litigation attorney and he has
`an established familiarity with the subject matter at issue in this proceeding. Paper
`
`
`2 For expediency, CBM2014-00068 is representative and all subsequent citations
`are to CBM2014-0068 unless otherwise noted.
`3 Mr. Marcus’s declaration should have been filed as a separate exhibit. 37 C.F.R.
`§ 42.63.
`
`
`2
`
`
`

`

`CBM2014-00068 (US 7,424,438 B2)
`CBM2014-00077 (US 7,424,438 B2)
`
`
`8 at 2. In particular, Mr. Marcus is counsel of record in co-pending litigations
`styled Career Destination Development, LLC v. Monster Worldwide, Inc., Case
`No. 2:13-cv-02434; Career Destination Development, LLC v. Indeed, Inc., Case
`No. 2:13-cv-02486; and Career Destination Development, LLC v.
`TheLadders.Com, Inc., Case No. 2:13-cv-02522, all filed in the U.S. District Court
`for the District of Kansas. Id. In his declaration, Mr. Marcus attests that:
`(1) he is “authorized to practice law in the States of
`Missouri, Kansas and Arizona”;
`
`(2) he has “never been suspended or disbarred in any
`court,” and has “never had sanctions or contempt
`citations imposed on [him] by any court of administrative
`body”;
`(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 37 C.F.R.,” 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)”; and
`(4) he is “familiar with the subject matter at issue in this
`proceeding and ha[s] knowledge of the facts set forth in
`the Motion for Pro Hac Vice Admission.”
`Paper 9, ¶¶ 1-4, 7, 8.
`Based on the facts set forth in support of the motion, we conclude that Mr.
`Marcus has sufficient legal and technical qualifications to represent Patent Owner
`in this proceeding, and that there is a need for Patent Owner to have its counsel in
`the related litigations involved in this proceeding. Accordingly, Patent Owner has
`established good cause for Mr. Marcus’s pro hac vice admission. Mr. Marcus will
`be permitted to appear pro hac vice in this proceeding as back-up counsel only.
`See 37 C.F.R. § 42.10(c).
`
`In consideration of the foregoing, it is
`3
`
`
`

`

`CBM2014-00068 (US 7,424,438 B2)
`CBM2014-00077 (US 7,424,438 B2)
`
`
`ORDERED that Patent Owner’s motion for pro hac vice admission of David
`L. Marcus is granted, and Mr. Marcus is authorized to represent Patent Owner only
`as back-up counsel in this proceeding;
`FURTHER ORDERED that Patent Owner should continue to have a
`registered practitioner as lead counsel in this proceeding;
`FURTHER ORDERED that Mr. Marcus 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
`FURTHER ORDERED that Mr. Marcus is subject to the USPTO’s
`disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and the USPTO’s Rules of
`Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq.
`
`For Petitioner:
`Brian M. Buroker
`Peter Weinberg
`bburoker@gibsondunn.com
`pweinberg@gibsondunn.com
`
`
`For Patent Owner:
`James J. Kernell
`David L. Marcus
`jjk@kcpatentlaw.com
`dmarcus@bmlawkc.com
`
`4
`
`
`

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