`Tel: 571-272-7822
`
`
`
` Paper 8
` Entered: July 8, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`STARBUCKS CORPORATION,
`Petitioner,
`
`v.
`
`AMERANTH, INC.,
`Patent Owner.
`____________
`
`Case CBM2015-00091 (Patent 6,384,850)
` CBM2015-00099 (Patent 6,871,325)1
`
`
`
`Before MEREDITH C. PETRAVICK, RICHARD E. RICE, and
`STACEY G. WHITE, Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`
`DECISION
`Petitioner’s Motions for Pro Hac Vice Admission of Matthew C. Bernstein
`37 C.F.R. § 42.10
`
`
`1 This order addresses a similar issue in the two cases. Therefore, we
`exercise discretion to issue one order to be filed in each case. The parties,
`however, are not authorized to use this caption in subsequent papers.
`
`
`
`CBM2015-00091 (Patent 6,384,850)
`CBM2015-00099 (Patent 6,871,325)
`
`
`In each of the instant proceedings, Petitioner Starbucks Corporation
`filed a motion requesting pro hac vice admission of Mr. Matthew C.
`Bernstein and provided an affidavit from Mr. Bernstein in support of the
`request.2 Patent Owner Ameranth, Inc. did not file an opposition to either of
`the motions. For the reasons stated below, Petitioner’s motions are granted.
`As the motions and affidavits in both proceedings are substantially similar,
`we will refer herein to the papers filed in CBM2015-00091 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 7
`(referencing the “Order – Authorizing Motion for Pro Hac Vice Admission,”
`Paper 7 in IPR2013-00639).
`In the motion, Petitioner asserts that there is good cause for Mr.
`Bernstein’s pro hac vice admission because: (1) Mr. Bernstein is an
`experienced litigation attorney with experience in numerous patent
`infringement litigations; and (2) Mr. Bernstein has an established familiarity
`
`
`2 See CBM2015-00091, Paper 6, Ex. 1052; CBM2015-00099, Paper 6,
`Ex. 1062.
`
`
`
`2
`
`
`
`CBM2015-00091 (Patent 6,384,850)
`CBM2015-00099 (Patent 6,871,325)
`
`with subject matter at issue in this proceeding. Paper 3, 2–3. In support of
`the motion, Mr. Bernstein attests to these facts in his declaration with
`sufficient explanations. Ex. 1052.
`Based on the facts set forth above, we conclude that Mr. Bernstein has
`sufficient legal and technical qualifications to represent Petitioner in these
`proceedings. See Unified Patents, Inc. v. Parallel Iron, LLC, Case IPR2013-
`00639, slip op. at 2–4 (PTAB Oct. 15, 2013) (Paper 7) (setting forth the
`requirements for pro hac vice admission). Accordingly, Petitioner has
`established good cause for Mr. Bernstein’s pro hac vice admission. Mr.
`Bernstein 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
`Matthew C. Bernstein in the instant proceedings are granted and Mr.
`Bernstein 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 Mr. Bernstein 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. Bernstein 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).
`
`
`
`3
`
`
`
`CBM2015-00091 (Patent 6,384,850)
`CBM2015-00099 (Patent 6,871,325)
`
`PETITIONER:
`Bing Ai
`Ai-ptab@perkinscoie.com
`
`Patrick N. McKeever
`PMcKeever@perkinscoie.com
`
`Yun L. Lu
`LLu@perkinscoie.com
`
`PATENT OWNER:
`John William Osborne
`josborne@osborneipl.com
`
`Michael D Fabiano
`mdfabiano@fabianolawfirm.com
`
`
`
`
`
`4