throbber
Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 7
`Date: October 27, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GAIN CAPITAL HOLDINGS, INC.,
`Petitioner,
`
`v.
`
`OANDA CORPORATION,
`Patent Owner.
`____________
`
`CBM2020-00021 (Patent 8,392,311 B2)
`CBM2020-00022 (Patent 7,146,336 B2)
`CBM2020-00023 (Patent 7,496,534 B2)1
`____________
`
`
`
`Before SALLY C. MEDLEY, WILLIAM V. SAINDON, and
`JUSTIN T. ARBES, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`ORDER
`Granting Patent Owner’s Motions for
`Pro Hac Vice Admission of Erik Dykema
`37 C.F.R. § 42.10(c)
`
`
`
`1 This Order addresses the same issue for the above-identified cases.
`Therefore, we exercise our discretion to issue a single Order to be filed in
`each case. The parties are not authorized to use this style heading for any
`subsequent papers.
`
`

`

`CBM2020-00021 (Patent 8,392,311 B2)
`CBM2020-00022 (Patent 7,146,336 B2)
`CBM2020-00023 (Patent 7,496,534 B2)
`
`
`In each of the instant proceedings, Patent Owner filed a motion
`requesting pro hac vice admission of Erik Dykema, along with a supporting
`declaration from Mr. Dykema.2 Petitioner did not oppose the motions within
`the requisite time period. For the reasons stated below, Patent Owner’s
`motions are granted.
`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 3, 2
`(citing Unified Patents, Inc. v. Parallel Iron, LLC, IPR2013-00639, Paper 7
`(PTAB Oct. 15, 2013) (“Order – Authorizing Motion for Pro Hac Vice
`Admission”)).
`In the motions, Patent Owner asserts that there is good cause for
`pro hac vice admission because Mr. Dykema (1) is an experienced litigation
`attorney with experience in patent infringement litigation, and (2) has an
`
`
`2 Patent Owner filed similar papers and exhibits in each of the instant
`proceedings. See CBM2020-00021, Paper 6 (“Mot.”), Ex. 2001;
`CBM2020-00022, Paper 6, Ex. 2001; CBM2020-00023, Paper 6, Ex. 2001.
`We refer to those filed in Case CBM2020-00021 for convenience.
`2
`
`
`
`

`

`CBM2020-00021 (Patent 8,392,311 B2)
`CBM2020-00022 (Patent 7,146,336 B2)
`CBM2020-00023 (Patent 7,496,534 B2)
`
`established familiarity with the subject matter at issue. See
`Mot. 3–4. Mr. Dykema attests to these facts in his declaration with
`sufficient explanations and further attests that he is counsel for Patent Owner
`in the district court case involving the challenged patents in these
`proceedings. See Ex. 2001.
`Based on the facts set forth above, we conclude that Mr. Dykema has
`sufficient legal and technical qualifications to represent Patent Owner in
`these proceedings and that there is a need for Patent Owner to have its
`counsel in the related litigation involved in these proceedings. See
`IPR2013-00639, Paper 7 (setting forth the requirements for pro hac vice
`admission). Accordingly, Patent Owner has established good cause for the
`pro hac vice admission of Mr. Dykema. Mr. Dykema 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 Patent Owner’s motions for pro hac vice admission
`of Mr. Dykema in the instant proceedings are granted, and Mr. Dykema is
`authorized to represent Patent Owner as back-up counsel only in the instant
`proceedings;
`FURTHER ORDERED that Patent Owner is to continue to have a
`registered practitioner as lead counsel in the instant proceedings;
`FURTHER ORDERED that Mr. Dykema shall comply with the
`Office Patent Trial Practice Guide, as updated by the Consolidated Trial
`Practice Guide (Nov. 2019), available at https://www.uspto.gov/
`TrialPracticeGuideConsolidated, 84 Fed. Reg. 64,280 (Nov. 21, 2019), and
`
`
`
`3
`
`

`

`CBM2020-00021 (Patent 8,392,311 B2)
`CBM2020-00022 (Patent 7,146,336 B2)
`CBM2020-00023 (Patent 7,496,534 B2)
`
`the Board’s Rules of Practice for Trials, as set forth in Part 42 of Title 37,
`Code of Federal Regulations; and
`FURTHER ORDERED that Mr. Dykema 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).
`
`
`
`
`4
`
`

`

`CBM2020-00021 (Patent 8,392,311 B2)
`CBM2020-00022 (Patent 7,146,336 B2)
`CBM2020-00023 (Patent 7,496,534 B2)
`
`PETITIONER:
`
`Michael T. Rosato
`Matthew A. Argenti
`Wesley E. Derryberry
`WILSON SONSINI GOODRICH & ROSATI
`mrosato@wsgr.com
`margenti@wsgr.com
`wderryberry@wsgr.com
`
`
`PATENT OWNER:
`
`Drew Koning
`KONING ZOLLAR LLP
`drew@kzllp.com
`
`
`
`
`5
`
`

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