`
` Entered: 28 June 2013
`
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SONY CORPORATION
`Petitioner,
`
`v.
`
`YISSUM RESEARCH DEVELOPMENT COMPANY
`OF THE HEBREW UNIVERSITY OF JERUSALEM
`Patent Owner.
`_______________
`
`Case IPR2013-00219 (SCM)
`Patent 7,477,284 B2
`_______________
`
`
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, and JAMES B. ARPIN,
`Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`DECISION
`Motion for Pro Hac Vice Admission
` 37 C.F.R. § 42.10
`
`
`
`
`
`Yissum Research Development Company of the Hebrew University of
`
`Jerusalem (“Yissum”) filed a motion for pro hac vice admission of William Nelson
`
`and Robert Gerrity. Paper 12. The motion is unopposed. The motion is granted.
`
`
`
`IPR2013-00219
`Patent 7,477,284 B2
`
`
`Pursuant to 37 C.F.R. § 42.10(c), the Board may recognize counsel pro hac
`
`vice during a proceeding upon a showing of good cause. In authorizing motions
`
`for pro hac vice, 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 in this
`
`proceeding. “Notice”; Paper 6.
`
`In its motion, Yissum states that there is good cause for the Board to
`
`recognize Mr. Nelson and Mr. Gerrity pro hac vice during this proceeding, because
`
`they are experienced litigating attorneys with an established familiarity with the
`
`subject matter at issue in the proceeding. Paper 12, 2-3. In addition, the motion
`
`states that Mr. Nelson and Mr. Gerrity are counsel for HumanEyes Technologies
`
`Ltd. (the exclusive licensee of the involved patent) and that they are counsel in
`
`related litigation between Sony and HumanEyes Technologies Ltd. Id. at 4.
`
`Mr. Nelson and Mr. Gerrity each made a declaration attesting to, and explaining,
`
`these facts. Exhibits 2001 and 2002. Each declaration complies with the
`
`requirements set forth in the Notice.
`
`Upon consideration, Yissum has demonstrated that Mr. Nelson and
`
`Mr. Gerrity have sufficient legal and technical qualifications to represent Yissum
`
`in this proceeding. Moreover, the Board recognizes that there is a need for Yissum
`
`to have related litigation counsel involved in this proceeding. Accordingly,
`
`Yissum has also established that there is good cause for admitting Mr. Nelson and
`
`Mr. Gerrity.
`
`
`
`
`
`2
`
`
`
`IPR2013-00219
`Patent 7,477,284 B2
`
`
`Attention is directed to the Office’s Final Rule adopting new Rules of
`
`Professional Conduct. See Changes to Representation of Others Before the
`
`United States Patent and Trademark Office; Final Rule, 78 Fed. Reg. 20180
`
`(Apr. 3, 2013). The Final Rule also removes Part 10 of Title 37, Code of Federal
`
`Regulations. The changes set forth in that Final Rule including the USPTO’s
`
`Rules of Professional Conduct took effect on May 3, 2013. Therefore, Mr. Nelson
`
`and Mr. Gerrity are subject to the USPTO’s Rules of Professional Conduct that
`
`took effect May 3, 2013.
`
`It is
`
`ORDERED that the Yissum motion for pro hac vice admission of William
`
`Nelson and Robert Gerrity for this proceeding is granted;
`
`FURTHER ORDERED that Yissum is to continue to have a registered
`
`practitioner represent it as lead counsel for this proceeding; and
`
`FURTHER ORDERED that Mr. Nelson and Mr. Gerrity are to comply
`
`with the Office Patent Trial Practice Guide and 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. Nelson and Mr. Gerrity are 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.
`
`3
`
`
`
`
`
`
`
`
`
`IPR2013-00219
`Patent 7,477,284 B2
`
`PETITIONER:
`
`Walter Hanley
`Michelle Carniaux
`Kenyon & Kenyon, LLP
`Sony-humaneyes@kenyon.com
`
`PATENT OWNER:
`
`David L. McCombs
`David O’Dell
`Haynes and Boone, LLP
`David.mccombs.ipr@haynesboone.com
`David.odell.ipr@haynesboone.com
`
`Robert Gerrity
`William Nelson
`Tensegrity Law Group, LLP
`Robert.gerrity@tensegritylawgroup.com
`William.nelson@tensegritylawgroup.com
`
`4
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