`571-272-7822
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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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`TOYOTA MOTOR CORPORATION
`Petitioner,
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`v.
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`AMERICAN VEHICULAR SCIENCES LLC
`Patent Owner.
`____________
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`Case IPR2013-00419 (JL)
`Patent 6,772,057
`____________
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`Before JAMESON LEE, MICHAEL W, KIM, and LYNNE E. PETTIGREW,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
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`Paper 13
`Date: August 12, 2013
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`DECISION
`Petitioner’s Motion for Pro Hac Vice Admission of Thomas R. Makin
`37 C.F.R. § 42.10
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`On July 18, 2013, Petitioner (“Toyota”) filed a motion for pro hac vice
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`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
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`IPR2013-00419
`Patent 6,772,057
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`Certificate of Service appended to its Petition indicates service by Express Mail on
`July 12, 2013. (Paper 3.) Therefore, the motion was filed prematurely, fifteen (15)
`days too early. The Board regards the motion as having been filed on August 2,
`2013, and thus Patent Owner’s time to oppose the motion, i.e., one week, did not
`commence to run until August 2, 2013. It is noted that as of August 12, 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
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`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.
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`In this proceeding, lead counsel for Toyota is Matthew Berkowitz, a
`registered practitioner. Toyota’s motion relies on a declaration of Thomas R.
`Makin (Ex. 1017). Mr. Thomas R. Makin declares that he is a member in good
`standing of the Bar of New York. (Ex. 1017, ¶ 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. 1017, ¶¶ 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
`6,772,057: American Vehicular Sciences LLC v. Toyota Motor Corp. et al., No.
`6:12-CV-410 (E.D. Tex.). (Ex. 1017, ¶ 8.)
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`IPR2013-00419
`Patent 6,772,057
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`Mr. Thomas R. Makin further states (1) that he has read and will comply
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`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. 1017, ¶¶ 5-6.)
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`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. 20180-81 (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.
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`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.
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`It is
`ORDERED that Toyota’s motion for pro hac vice admission of Mr. Thomas
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`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,
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`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
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`IPR2013-00419
`Patent 6,772,057
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`FURTHER ORDERED that Mr. Thomas R. Makin is subject to the
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`USPTO’s Rules of Professional Conduct as set forth in 37 C.F.R. §§ 11.101 et seq.
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`IPR2013-00419
`Patent 6,772,057
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`For Petitioner:
`Matthew Berkowitz
`mberkowitz@kenyon.com
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`For Patent Owner:
`Thomas Wimbiscus
`Scott McBride
`twimbiscus@mcandrews-ip.com
`smcbride@mcandrews-ip.com
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`5
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