`Tel: 571-272-7822
`
`
`Paper 23
`Entered: June 6, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`PNY TECHNOLOGIES, INC.
`Petitioner
`
`v.
`
`PHISON ELECTRONICS CORP.
`Patent Owner
`____________
`
`Case IPR2013-004721
`Patent 7,518,879
`____________
`
`
`Before KEVIN F. TURNER, STEPHEN C. SIU, and
`RAMA G. ELLURU, Administrative Patent Judges.
`
`
`TURNER, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Patent Owner’s Motion for Pro Hac Vice Admission of David M. Barkan
`37 C.F.R. § 42.10
`
`
`
`
`1 Case IPR2014-00150 has been joined with this proceeding.
`
`
`
`Cases IPR2013-00472
`Patent 7,518,879
`
`Phison Electronics Corp. (“Patent Owner”) filed a motion for pro hac
`
`vice admission of Mr. David M. Barkan. Paper 21. PNY Technologies, Inc.
`
`(“Petitioner”) did not file an opposition to the motion. For the reasons
`
`provided below, Patent Owner’s motion is granted.
`
`As set forth in 37 C.F.R. § 42.10(c), the Board may recognize counsel
`
`pro hac vice during a proceeding upon a showing of good cause, subject to
`
`the condition that lead counsel be a registered practitioner. For example,
`
`where the 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.” 37 C.F.R.
`
`§ 42.10(c). In authorizing motions for pro hac vice admission, the Board
`
`also required 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. Paper 4 at 2 (referencing the
`
`“Order – Authorizing Motion for Pro Hac Vice Admission” in IPR2013-
`
`00010, Paper 8); see also IPR2013-00639, Paper 72 (setting forth
`
`requirements for pro hac vice admission).
`
`In its motion, Patent Owner asserts that there is good cause for Mr.
`
`Barkan’s pro hac vice admission because: (1) Mr. Barkan is an experienced
`
`litigation attorney and has been involved in numerous patent litigations in
`
`
`
`2 Available at http://www.uspto.gov/ip/boards/bpai/ptab_trials.jsp,
`“Representative Orders, Decisions, and Notices,” “Other Representative
`Orders and Decisions”). Supersedes IPR2013-00010, “Order – Authorizing
`Motion for Pro Hac Vice Admission,” Paper 8.
`2
`
`
`
`Cases IPR2013-00472
`Patent 7,518,879
`
`federal court and in the US International Trade Commission; (2) Mr. Barkan
`
`has represented Patent Owner as lead counsel in numerous matters involving
`
`the patent-at-issue, the most recent of which is currently stayed pending the
`
`outcome of this proceeding; and (3) Mr. Barkan has an established
`
`familiarity with the patent-at-issue, the relevant prior art and the legal and
`
`factual arguments, and has kept abreast of developments in this proceeding.
`
`Paper 21 at 1-3. In support of the motion, Mr. Barkan attests to these facts
`
`in his declaration with sufficient explanations. Ex. 2007 at 2-4 (Affidavit of
`
`David M. Barkan In Support of Patent Owner’s Motion for Pro Hac Vice
`
`Admission). Additionally, the motion and Mr. Barkan’s declaration comply
`
`with the requirements set forth in the Board’s order authorizing Patent
`
`Owner’s motion for pro hac vice admission.
`
`Based on the record, we find that Mr. Barkan has sufficient legal and
`
`technical qualifications to represent Patent Owner in the instant proceeding.
`
`Accordingly, Patent Owner has established that there is good cause for Mr.
`
`Barkan’s admission. Mr. Barkan will be permitted to appear pro hac vice in
`
`this proceeding as back-up counsel only. See 37 C.F.R. § 42.10(c).
`
`For the foregoing reasons, it is
`
`ORDERED that Patent Owner’s motion for pro hac vice admission of
`
`Mr. Barkan for the instant proceeding is granted; Mr. Barkan is authorized to
`
`represent Patent Owner as back-up counsel in the instant proceeding;
`
`FURTHER ORDERED that Patent Owner is to continue to have a
`
`registered practitioner as lead counsel in the instant proceeding; and
`
`FURTHER ORDERED that Mr. Barkan is to comply with the Office
`
`Patent Trial Practice Guide and the Board’s Rules of Practice for Trials, as
`
`3
`
`
`
`Cases IPR2013-00472
`Patent 7,518,879
`
`set forth in Title 37, Part 42 of the C.F.R., and to be 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.
`
`
`
`4
`
`
`
`Cases IPR2013-00472
`Patent 7,518,879
`
`For PETITIONER:
`
`Mark E. Nikolsky
`Sanjiv M. Chokshi
`McCARTER & ENGLISH LLP
`mnikolsky@mccarter.com
`schokshi@mccarter.com
`
`
`For PATENT OWNER:
`
`Joshua A. Griswold
`David M. Hoffman
`FISH & RICHARDSON P.C.
`griswold@fr.com
`hoffman@fr.com
`
`
`5
`
`
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