Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 43
`Entered: June 24, 2013
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EMC CORPORATION
`Petitioner,
`
`v.
`
`PERSONALWEB TECHNOLOGIES, LLC
`Patent Owner.
`____________
`
`Case IPR2013-00082 (Patent 5,978,791)
`IPR2013-00083 (Patent 6,415,280)
`IPR2013-00084 (Patent 7,945,544)
`IPR2013-00085 (Patent 7,945,539)
`IPR2013-00086 (Patent 7,949,662)
`IPR2013-00087 (Patent 8,001,096)1
`____________
`
`Before KEVIN F. TURNER, JONI Y. CHANG, and
`MICHAEL R. ZECHER, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`DECISION
`EMC Motion for Pro Hac Vice Admission of Mr. Robert Galvin
`37 C.F.R. § 42.10
`
`
`1 This Decision addresses an issue that is identical in all six cases. Therefore, we
`exercise our discretion to issue one opinion to be filed in each of the six cases. The
`parties, however, are not authorized to use this style heading in any subsequent
`papers. Note that the Petitioners for IPR2013-00082 and IPR2013-00083 are EMC
`Corporation and VMware, Inc.
`
`
`
`1
`
`
`571-272-7822
`
`
`
`
`
`Paper 43
`Entered: June 24, 2013
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EMC CORPORATION
`Petitioner,
`
`v.
`
`PERSONALWEB TECHNOLOGIES, LLC
`Patent Owner.
`____________
`
`Case IPR2013-00082 (Patent 5,978,791)
`IPR2013-00083 (Patent 6,415,280)
`IPR2013-00084 (Patent 7,945,544)
`IPR2013-00085 (Patent 7,945,539)
`IPR2013-00086 (Patent 7,949,662)
`IPR2013-00087 (Patent 8,001,096)1
`____________
`
`Before KEVIN F. TURNER, JONI Y. CHANG, and
`MICHAEL R. ZECHER, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`DECISION
`EMC Motion for Pro Hac Vice Admission of Mr. Robert Galvin
`37 C.F.R. § 42.10
`
`
`1 This Decision addresses an issue that is identical in all six cases. Therefore, we
`exercise our discretion to issue one opinion to be filed in each of the six cases. The
`parties, however, are not authorized to use this style heading in any subsequent
`papers. Note that the Petitioners for IPR2013-00082 and IPR2013-00083 are EMC
`Corporation and VMware, Inc.
`
`
`
`1
`
`
`
`IPR2013-00085, Patent 7,945,539
`IPR2013-00086, Patent 7,949,662
`IPR2013-00087, Patent 8,001,096
`
`IPR2013-00082, Patent 5,978,791
`IPR2013-00083, Patent 6,415,280
`IPR2013-00084, Patent 7,945,544
`
`Petitioner EMC Corporation (“EMC”) requests pro hac vice
`admission of Mr. Robert Galvin. Paper 42.2 EMC provides an affidavit
`from Mr. Galvin in support of its motion. Ex. 1073.3 In a separate
`correspondence with the Board, Patent Owner PersonalWeb Technologies,
`LLC (“PersonalWeb”) indicated that it would not oppose EMC’s pro hac
`vice motion. For the reasons stated below, EMC’s motion is 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. Papers 9 and 32
`(referencing the “Order – Authorizing Motion for Pro Hac Vice Admission,”
`Paper 8 in IPR2013-00010, at 3-4).
`In its motion, EMC argues that there is good cause for Mr. Galvin’s
`pro hac vice admission because he is an experienced litigation attorney and
`
`
`2 For purposes of expediency, we refer to the documents filed in IPR2013-
`00082. However, equivalent documents have been filed in the other five
`IPRs, i.e., IPR2013-00083, IPR2013-00084, IPR2013-00085, IPR2013-
`00086, and IPR2013-00087.
`3 See supra FN 2.
`
`
`
`IPR2013-00085, Patent 7,945,539
`IPR2013-00086, Patent 7,949,662
`IPR2013-00087, Patent 8,001,096
`
`IPR2013-00082, Patent 5,978,791
`IPR2013-00083, Patent 6,415,280
`IPR2013-00084, Patent 7,945,544
`
`has an established familiarity with the subject matter at issue in these inter
`partes reviews. Paper 42 at 3-4. Specifically, Mr. Galvin is counsel for
`EMC in PersonalWeb Technologies LLC v. EMC Corporation and VMware,
`Inc., Case No. 6:11-cv-00660-LED (E.D. Tex.), where the patents being
`challenged in these inter partes reviews are being asserted. Id.; Ex. 1073,
`¶ 10. In his declaration, Mr. Galvin attests that:
`(1)
`he is “a member in good standing of the Bar of the State
`of California”;
`he has “not been suspended, disbarred, sanctioned or
`cited from contempt by any court or administrative
`body,” and has “never had a court or administrative body
`deny [his] application for admission to practice”;
`(3) he has “read and will comply with [the] Office Patent
`Trial Practice Guide and the Board’s Rules of Practice
`for Trials, as set forth in part 42 of the C.F.R.,” and
`agrees to be “subject to the United States Patent and
`Trademark Office Code of Professional Responsibility
`set forth in 37 C.F.R. §§ 11.100 et seq. (78 Fed. Reg.
`20202-20211) and disciplinary jurisdiction under 37
`C.F.R. § 11.19(a)”;
`he has “practic[ed] law for over nineteen years, and
`litigat[ed] patent cases for over eighteen years. Several
`of these patent litigations concerned patent office rules
`and regulations”; and
`(5) he is familiar with “the prior art references that are the
`subject of [these] proceeding[s] as well as the evidentiary
`objections that PersonalWeb has raised in response to
`certain prior art references submitted by [EMC],” and he
`is familiar with “the subject of the references as well as
`the relevant facts relating to their authenticity,
`admissibility, and publication.”
`Ex. 1073, ¶¶ 2-11. We also note that EMC’s lead counsel in this proceeding,
`Peter Dichiara, is a registered practitioner. Paper 42 at 2.
`
`(2)
`
`(4)
`
`
`
`3
`
`
`
`IPR2013-00082, Patent 5,978,791
`IPR2013-00083, Patent 6,415,280
`IPR2013-00084, Patent 7,945,544
`
`
`IPR2013-00085, Patent 7,945,539
`IPR2013-00086, Patent 7,949,662
`IPR2013-00087, Patent 8,001,096
`
`Based on the facts set forth above, we conclude that Mr. Galvin has
`sufficient legal and technical qualifications to represent EMC in these inter
`parte reviews and that there is a need for EMC to have its counsel in the
`related litigation involved in such proceedings. Accordingly, EMC has
`established good cause for Mr. Galvin’s pro hac vice admission. Mr. Galvin
`will be permitted to appear pro hac vice in these inter partes reviews as
`back-up counsel only. See 37 C.F.R. § 42.10(c).
`Accordingly, it is:
`ORDERED that EMC’s motion for pro hac vice admission is granted
`and Mr. Robert Galvin is authorized to represent EMC as back-up counsel in
`the six inter partes reviews set forth above;
`FURTHER ORDERED that EMC is to continue to have a registered
`practitioner as lead counsel in these inter partes reviews;
`FURTHER ORDERED that Mr. Galvin 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. Galvin is subject to the Office’s
`disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and the USPTO Rules
`of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq.
`
`
`
`4
`
`
`
`IPR2013-00085, Patent 7,945,539
`IPR2013-00086, Patent 7,949,662
`IPR2013-00087, Patent 8,001,096
`
`IPR2013-00082, Patent 5,978,791
`IPR2013-00083, Patent 6,415,280
`IPR2013-00084, Patent 7,945,544
`
`PETITIONER:
`Peter M. Dichiara, Esq.
`David L. Cavanaugh, Esq.
`WILMER CUTLER PICKERING HALE & DORR LLP
`peter.dichiara@wilmerhale.com
`david.cavanaugh@wilmerhale.com
`
`
`PATENT OWNER:
`Joseph A. Rhoa, Esq.
`Updeep. S. Gill, Esq.
`NIXON & VANDERHYE P.C.
`jar@nixonvan.com
`usg@nixonvan.com
`
`
`
`
`5
`
`
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