`Date: August 12, 2013
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TOYOTA MOTOR CORPORATION.
`Petitioner,
`
`v.
`
`AMERICAN VEHICULAR SCIENCES LLC.
`Patent Owner.
`____________
`
`Case IPR2013-00417 (JL)
`Patent 8,036,788
`____________
`
`Before JAMESON LEE, BARBARA A. BENOIT, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`DECISION
`Petitioner’s Motion for Pro Hac Vice Admission of Thomas R. Makin
`37 C.F.R. § 42.10
`
`On July 18, 2013, Petitioner (“Toyota”) filed a motion for pro hac vice
`
`admission of Mr. Thomas R. Makin. (Paper 5.) A motion for pro hac vice
`admission of counsel may be filed no earlier than twenty-one (21) days after
`service of the Petition. IPR2013-00010 (Paper 8, October 26, 2012.) Toyota’s
`
`
`
`
`
`IPR2013-00417
`Patent 8,036,788
`
`
`Certificate of Service appended to its Petition indicates service by Express Mail on
`July 8, 2013. (Paper 2.) Therefore, the motion was filed prematurely, eleven (11)
`days too early. The Board regards the motion as having been filed on July 29,
`2013, and thus Patent Owner’s time to oppose the motion, i.e., one week, did not
`commence to run until July 29, 2013. It is noted that as of August 9, 2013, Patent
`Owner has not filed an opposition to the motion. For reasons discussed below,
`Toyota’s motion is conditionally 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 is a registered
`practitioner. 37 C.F.R. § 42.10(c). If 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 this proceeding, lead counsel for Toyota is A. Antony Pfeffer, a registered
`practitioner. Toyota’s motion relies on a declaration of Thomas R. Makin (Ex.
`1009). Mr. Thomas R. Makin declares that he is a member in good standing of the
`Bar of New York. (Ex. 1009, ¶ 1.) Mr. Thomas R. Makin also declares that he has
`never been suspended, disbarred, sanctioned or cited for contempt by any court or
`administrative body, and that he has never had an application for admission to
`practice denied by any court or administrative body. (Ex. 1009, ¶¶ 2-4.)
`Mr. Thomas R. Makin further declares that he is familiar with the subject matter at
`issue in this proceeding based on his work as counsel for Toyota in the related
`district court litigation between the parties involving Patent 6,738,697: American
`Vehicular Sciences LLC v. Toyota Motor Corp. et al., No. 6:12-CV-405 (E.D.
`Tex.). (Ex. 1009, ¶ 8.)
`
`2
`
`
`
`
`
`
`IPR2013-00417
`Patent 8,036,788
`
`
`Mr. Thomas R. Makin further states (1) that he has read and will comply
`
`with the Board’s Rules of Practice for Trials as set forth in Part 42 of Title 37,
`Code of Federal Regulations, as well as the Office Patent Trial Practice Guide, and
`(2) that he agrees to be subject to the “United States Patent and Trademark Office
`Code of Professional Responsibility set forth in 37 C.F.R. §§ 11.101 et seq. and
`disciplinary jurisdiction under 37 C.F.R. § 11.19(a).” (Ex. 1009, ¶¶ 5-6.)
`
`Effective May 3, 2013, the USPTO Code of Professional Responsibility was
`replaced by the USPTO 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). Thus, Mr. Thomas R. Makin
`should have declared, but failed to declare, that he agrees to comply with the
`USPTO “Rules of Professional Conduct” as set forth in 37 C.F.R. §§ 11.101 et seq.
`
`But for not having a statement from Mr. Thomas R. Makin that he will
`comply with the USPTO “Rules of Professional Conduct,” Toyota has established
`good cause for admission, pro hac vice, of Mr. Thomas R. Makin.
`
`It is
`ORDERED that Toyota’s motion for pro hac vice admission of Mr. Thomas
`
`R. Makin is conditionally granted, provided that within seven (7) days of the date
`of this order, Toyota files a declaration statement from Mr. Thomas R. Makin,
`labeled as an exhibit, indicating that he agrees to be subject to the USPTO’s Rules
`of Professional Conduct as set forth in 37 C.F.R. §§ 11.101 et seq.;
`FURTHER ORDERED that if the above-noted declaration statement,
`
`labeled as an exhibit, is filed within seven (7) days of the date of this order,
`Mr. Thomas R. Makin is authorized to be designated as backup counsel, but not
`lead counsel, in this proceeding; and
`
`3
`
`
`
`
`IPR2013-00417
`Patent 8,036,788
`
`
`FURTHER ORDERED that Mr. Thomas R. Makin is subject to the
`
`USPTO’s Rules of Professional Conduct as set forth in 37 C.F.R. §§ 11.101 et seq.
`
`
`
`
`
`4
`
`
`
`
`
`
`
`
`IPR2013-00417
`Patent 8,036,788
`
`For Petitioner:
`A. Antony Pfeffer
`apfeffer@kenyon.com
`
`For Patent Owner:
`Thomas Wimbiscus
`Scott McBride
`twimbiscus@mcandrews-ip.com
`smcbride@mcandrews-ip.com
`
`
`5
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