`Tel: 571-272-7822
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`Paper 23
`Entered: June 6, 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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`PNY TECHNOLOGIES, INC.
`Petitioner
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`v.
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`PHISON ELECTRONICS CORP.
`Patent Owner
`____________
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`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.
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`
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`
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`DECISION
`Patent Owner’s Motion for Pro Hac Vice Admission of David M. Barkan
`37 C.F.R. § 42.10
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`1 Case IPR2014-00150 has been joined with this proceeding.
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`
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`Cases IPR2013-00472
`Patent 7,518,879
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`Phison Electronics Corp. (“Patent Owner”) filed a motion for pro hac
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`vice admission of Mr. David M. Barkan. Paper 21. PNY Technologies, Inc.
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`(“Petitioner”) did not file an opposition to the motion. For the reasons
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`provided below, Patent Owner’s motion is granted.
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`As set forth in 37 C.F.R. § 42.10(c), the Board may recognize counsel
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`pro hac vice during a proceeding upon a showing of good cause, subject to
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`the condition that lead counsel be a registered practitioner. For example,
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`where the lead counsel is a registered practitioner, a non-registered
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`practitioner may be permitted to appear pro hac vice “upon showing that
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`counsel is an experienced litigating attorney and has an established
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`familiarity with the subject matter at issue in the proceeding.” 37 C.F.R.
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`§ 42.10(c). In authorizing motions for pro hac vice admission, the Board
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`also required a statement of facts showing there is good cause for the Board
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`to recognize counsel pro hac vice and an affidavit or declaration of the
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`individual seeking to appear in this proceeding. Paper 4 at 2 (referencing the
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`“Order – Authorizing Motion for Pro Hac Vice Admission” in IPR2013-
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`00010, Paper 8); see also IPR2013-00639, Paper 72 (setting forth
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`requirements for pro hac vice admission).
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`In its motion, Patent Owner asserts that there is good cause for Mr.
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`Barkan’s pro hac vice admission because: (1) Mr. Barkan is an experienced
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`litigation attorney and has been involved in numerous patent litigations in
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`
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`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
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`
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`Cases IPR2013-00472
`Patent 7,518,879
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`federal court and in the US International Trade Commission; (2) Mr. Barkan
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`has represented Patent Owner as lead counsel in numerous matters involving
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`the patent-at-issue, the most recent of which is currently stayed pending the
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`outcome of this proceeding; and (3) Mr. Barkan has an established
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`familiarity with the patent-at-issue, the relevant prior art and the legal and
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`factual arguments, and has kept abreast of developments in this proceeding.
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`Paper 21 at 1-3. In support of the motion, Mr. Barkan attests to these facts
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`in his declaration with sufficient explanations. Ex. 2007 at 2-4 (Affidavit of
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`David M. Barkan In Support of Patent Owner’s Motion for Pro Hac Vice
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`Admission). Additionally, the motion and Mr. Barkan’s declaration comply
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`with the requirements set forth in the Board’s order authorizing Patent
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`Owner’s motion for pro hac vice admission.
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`Based on the record, we find that Mr. Barkan has sufficient legal and
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`technical qualifications to represent Patent Owner in the instant proceeding.
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`Accordingly, Patent Owner has established that there is good cause for Mr.
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`Barkan’s admission. Mr. Barkan will be permitted to appear pro hac vice in
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`this proceeding as back-up counsel only. See 37 C.F.R. § 42.10(c).
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`For the foregoing reasons, it is
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`ORDERED that Patent Owner’s motion for pro hac vice admission of
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`Mr. Barkan for the instant proceeding is granted; Mr. Barkan is authorized to
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`represent Patent Owner as back-up counsel in the instant proceeding;
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`FURTHER ORDERED that Patent Owner is to continue to have a
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`registered practitioner as lead counsel in the instant proceeding; and
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`FURTHER ORDERED that Mr. Barkan is to comply with the Office
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`Patent Trial Practice Guide and the Board’s Rules of Practice for Trials, as
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`3
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`
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`Cases IPR2013-00472
`Patent 7,518,879
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`set forth in Title 37, Part 42 of the C.F.R., and to be subject to the Office’s
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`disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and the USPTO Rules
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`of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq.
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`4
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`Cases IPR2013-00472
`Patent 7,518,879
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`For PETITIONER:
`
`Mark E. Nikolsky
`Sanjiv M. Chokshi
`McCARTER & ENGLISH LLP
`mnikolsky@mccarter.com
`schokshi@mccarter.com
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`
`For PATENT OWNER:
`
`Joshua A. Griswold
`David M. Hoffman
`FISH & RICHARDSON P.C.
`griswold@fr.com
`hoffman@fr.com
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`5
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