`Tel: 571-272-7822
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` Paper 36
`Entered: September 13, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`ABB, INC.
`Petitioner
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`v.
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`ROY-G-BIV CORPORATION
`Patent Owner
`_______________
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`Case IPR2013-00062
`Case IPR2013-00282
`Patent 6,516,236 B1
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`____________
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` .
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`Before THOMAS L. GIANNETTI, Administrative Patent Judge.
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`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`IPR2013-00062
`IPR2013-00282
`Patent 6,516,236 B1
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`This Order is entered to clarify two issues relating to pro hac vice
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`appearances in these proceedings. See 37 C.F.R. 42.10 (c).
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`1. Petitioner has filed a motion to recognize Mr. Steven M. Auvil pro hac
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`vice. Paper 34. The supporting affidavit establishes that Mr. Auvil is admitted to
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`practice before the USPTO. Ex. 1031. In view of this representation, there was no
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`need to seek pro hac vice recognition for Mr. Auvil as he is a registered
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`practitioner. See 37 C.F.R. § 42.10 (c) (“ . . . a motion to appear pro hac vice by
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`counsel who is not a registered practitioner may be granted upon showing that
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`counsel is an experienced litigating attorney and has an established familiarity with
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`the subject matter at issue in the proceeding.”) Petitioner’s motion is, therefore,
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`dismissed as moot.
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`2. Patent Owner’s counsel contacted the Board, first by telephone and then
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`by email, requesting guidance on whether an attorney who is admitted to practice
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`before the USPTO could participate in a deposition in this proceeding. The
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`communications were apparently ex parte, as there is no indication Patent Owner
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`copied Petitioner’s counsel on the email, despite being requested to do so. The
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`parties are reminded that ex parte communications with the Board are prohibited
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`except in very limited circumstances. See 37 C.F.R. § 42.5(d); Office Trial
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`Practice Guide, 77 Fed. Reg. 48756, 48758 (August 14, 2012).
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`For guidance on the deposition issue, the parties are directed to the
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`“Frequently Asked Questions” section of the Board’s web site:
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`http://www.uspto.gov/ip/boards/bpai/prps.jsp.
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`Question G11 specifically addresses this issue and provides that a registered
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`USPTO practitioner or attorney recognized pro hac vice in a proceeding may
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`participate in a deposition.
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`2
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`IPR2013-00062
`IPR2013-00282
`Patent 6,516,236 B1
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`It is, therefore,
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`ORDERED that Petitioner’s motion for pro hac vice recognition of
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`Mr. Auvil is dismissed as moot.
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`3
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`IPR2013-00062
`IPR2013-00282
`Patent 6,516,236 B1
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`Counsel for Petitioner:
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`Rick McLeod
`John Vandenberg
`Klarquist Sparkman, LLP
`rick.mcleod@klarquist.com
`michael.jones@klarquist.com
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`Counsel for Patent Owner:
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`Richard Black
`Joel Arb
`Foster Pepper, LLC
`blacr@foster.com
`ardjo@foster.com
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`4
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