`Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 19
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` Entered: January 31, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`RICOH AMERICAS CORPORATION and XEROX CORPORATION
`Petitioner
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`v.
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`MPHJ TECHNOLOGY INVESTMENTS, LLC
`Patent Owner
`________
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`Case IPR2013-00302
`Patent 7,986,426 B1
`_______________
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`Before SALLY C. MEDLEY, MICHAEL P. TIERNEY, and
`KARL D. EASTHOM, Administrative Patent Judges.
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`MEDLEY, Administrative Patent Judge.
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`DECISION
`Motion for Pro Hac Vice Admission
` 37 C.F.R. § 42.10
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`Petitioner filed a motion for pro hac vice admission of H. Keeto Sabharwal.
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`Paper 17. The motion is unopposed. The motion is granted.
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`IPR2013-00302
`Patent 7,986,426
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`Pursuant to 37 C.F.R. § 42.10(c), the Board may recognize counsel pro hac
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`vice during a proceeding upon a showing of good cause. In authorizing motions
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`for pro hac vice, the Board requires the moving party to provide a statement of
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`facts showing there is good cause for the Board to recognize counsel pro hac vice
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`and an affidavit or declaration of the individual seeking to appear in this
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`proceeding. “Notice”; Paper 4.
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`In its motion, Petitioner states that there is good cause for the Board to
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`recognize Mr. Sabharwal pro hac vice during this proceeding, because
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`Mr. Sabharwal is an experienced litigating attorney. In addition, the motion states
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`that Mr. Sabharwal has been admitted to appear pro hac vice in four other
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`proceedings before the Board in the last three years and that he has an established
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`familiarity with the subject matter at issue in this proceeding based on his work
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`with the Petitioner on this case. Paper 17 at 5-7. Mr. Sabharwal made an affidavit
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`attesting to, and explaining, these facts. Exhibit 1012. The declaration complies
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`with the requirements set forth in the Notice.
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`Upon consideration, Petitioner has demonstrated that Mr. Sabharwal has
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`sufficient legal and technical qualifications to represent Petitioner in this
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`proceeding. Moreover, the Board recognizes that there is a need for Petitioner to
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`have Mr. Sabharwal involved in this proceeding. Accordingly, Petitioner has also
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`established that there is good cause for admitting Mr. Sabharwal.
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`Attention is directed to the Office’s Final Rule adopting new Rules of
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`Professional Conduct. See Changes to Representation of Others Before the
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`United States Patent and Trademark Office; Final Rule, 78 Fed. Reg. 20180
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`2
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`IPR2013-00302
`Patent 7,986,426
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`(Apr. 3, 2013). The Final Rule also removes Part 10 of Title 37, Code of Federal
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`Regulations. The changes set forth in that Final Rule including the USPTO’s
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`Rules of Professional Conduct took effect on May 3, 2013. Therefore,
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`Mr. Sabharwal is subject to the USPTO’s Rules of Professional Conduct that took
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`effect May 3, 2013.
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`It is
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`ORDERED that Petitioner’s motion for pro hac vice admission of H. Keeto
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`Sabharwal for this proceeding is granted;
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`FURTHER ORDERED that Petitioner is to continue to have a registered
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`practitioner represent it as lead counsel for this proceeding; and
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`FURTHER ORDERED that Mr. Sabharwal is to comply with the Office
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`Patent Trial Practice Guide and the Board’s Rules of Practice for Trials, as set forth
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`in Part 42 of Title 37, Code of Federal Regulations; and
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`FURTHER ORDERED that Mr. Sabharwal is subject to the Office’s
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`disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and the USPTO Rules of
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`Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq.
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`3
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`IPR2013-00302
`Patent 7,986,426
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`PETITIONER:
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`Michael Specht
`Jason Eisenberg
`STERNE, KESSLER, GOLDSTEIN & FOX, PLLC
`Mspecht-PTAB@skgf.com
`Jasone-PTAB@skgf.com
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`PATENT OWNER:
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`Scott Horstemeyer
`N. Andrew Crain
`THOMAS HORSTEMEYER, LLP
`Scott.horstemeyer@thomashorstemeyer.com
`Andrew.crain@thomashorstemeyer.com
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`4
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