`Tel: 571-272-7822
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` Paper 16
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` Entered: January 7, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
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`HEWLETT-PACKARD COMPANY
`Petitioner
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`v.
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`MPHJ TECHNOLOGY INVESTMENTS, LLC
`Patent Owner
`________
`
`Case IPR2013-00309
`Patent 6,771,381 B1
`_______________
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`
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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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`Patent Owner filed a motion for pro hac vice admission of Steven G. Hill.
`Paper 12. The motion is unopposed. The motion is granted.
`Pursuant to 37 C.F.R. § 42.10(c), the Board may recognize counsel pro hac
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`IPR2013-00309
`Patent 6,771,381 B1
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`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 5.
`In its motion, Patent Owner states that there is good cause for the Board to
`recognize Mr. Hill pro hac vice during this proceeding, because Mr. Hill is an
`experienced litigating attorney. In addition, the motion states that Mr. Hill has an
`established familiarity with the subject matter at issue in this proceeding based on
`his work as lead counsel in two district court cases of a related patent, the
`7,986,426 patent. Paper 12 at 3-4. Mr. Hill made a declaration attesting to, and
`explaining, these facts. Exhibit 2001. The declaration complies with the
`requirements set forth in the Notice.
`Upon consideration, Patent Owner has demonstrated that Mr. Hill has
`sufficient legal and technical qualifications to represent Patent Owner in this
`proceeding. Moreover, the Board recognizes that there is a need for Patent Owner
`to have Mr. Hill involved in this proceeding. Accordingly, Patent Owner has also
`established that there is good cause for admitting Mr. Hill.
`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
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`IPR2013-00309
`Patent 6,771,381 B1
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`Rules of Professional Conduct took effect on May 3, 2013. Therefore, Mr. Hill is
`subject to the USPTO’s Rules of Professional Conduct that took effect May 3,
`2013.
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`It is
`ORDERED that Patent Owner’s motion for pro hac vice admission of
`Steven G. Hill for this proceeding is granted;
`FURTHER ORDERED that Patent Owner is to continue to have a registered
`practitioner represent it as lead counsel for this proceeding; and
`FURTHER ORDERED that Mr. Hill is 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. Hill 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.
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`IPR2013-00309
`Patent 6,771,381 B1
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`For PETITIONER:
`Stuart Meyer
`Jennifer Bush
`FENWICK & WEST LLP
`smeyer@fenwick,com
`jbush@fenwick.com
`For PATENT OWNER:
`Scott Horstemeyer
`N. Andrew Crain
`THOMAS│HORSTEMEYER, LLP
`scott.horstemeyer@thomashorstemeyer.com
`andrew.crain@thomashorstemeyer.com
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