`571-272-7822
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`Paper 14
`Entered: October 8, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`FACEBOOK, INC., LINKEDIN CORP., and TWITTER, INC.
`Petitioners,
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`v.
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`SOFTWARE RIGHTS ARCHIVE, LLC
`Patent Owner.
`____________
`
`Case IPR2013-00478 (Patent 5,544,352)
`Case IPR2013-00479 (Patent 5,832,494)
`Case IPR2013-00480 (Patent 5,832,494)
`Case IPR2013-00481 (Patent 6,233,571)1
`____________
`
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`Before SALLY C. MEDLEY, CHRISTOPHER L. CRUMBLEY, and
`BARBARA A. PARVIS, Administrative Patent Judges.
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`PARVIS, Administrative Patent Judge.
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`DECISION
`Motions for Pro Hac Vice Admission
`37 C.F.R. § 42.10
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`
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`1 This decision addresses issues that are identical in the four cases. Therefore, we
`exercise our discretion to issue one decision to be entered in each of the four cases.
`The parties, however, are not authorized to use this style heading in their papers.
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`IPR2013-00478 (Patent 5,544,352)
`IPR2013-00479 (Patent 5,832,494)
`IPR2013-00480 (Patent 5,832,494)
`IPR2013-00481 (Patent 6,233,571)
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`Petitioners filed motions for pro hac vice admission of Mr. Asim M.
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`Bhansali (Paper 10), Mr. Sharif Jacob (Paper 11), and Mr. David J. Silbert (Paper
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`12).2 The motions are unopposed. For reasons discussed below, the motions are
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`granted.
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`Pursuant to 37 C.F.R. § 42.10(c), the Board may recognize counsel pro hac
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`vice during a proceeding upon a showing of good cause, subject to the condition
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`that lead counsel is a registered practitioner. In authorizing motions for pro hac
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`vice, the Board requires the moving party to provide a statement of facts showing
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`good cause for the Board to recognize counsel pro hac vice and an affidavit or
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`declaration of the individual seeking to appear in this proceeding. “Notice”; Paper
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`7.
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`In this proceeding, lead counsel for Petitioners is Ms. Heidi L. Keefe, a
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`registered practitioner. In the motions, Petitioners state that there is good cause for
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`the Board to recognize Mr. Bhansali, Mr. Jacob, and Mr. Silbert pro hac vice
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`during this proceeding, because they are experienced litigating attorneys with an
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`established familiarity with the subject matter at issue in the proceeding. Paper 10,
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`1; Paper 11, 1; Paper 12, 1. In addition, the motions state that Mr. Bhansali, Mr.
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`Jacob, and Mr. Silbert are counsel for LinkedIn and Twitter in related litigation
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`involving the same patent. Paper 10, 1-2; Paper 11, 1-2; Paper 12, 1-2. Mr.
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`Bhansali, Mr. Jacob, and Mr. Silbert each made an affidavit attesting to, and
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`2 For the purpose of clarity and expediency, IPR2013-00478 is representative and
`all citations are to IPR2013-00478 unless otherwise noted.
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`2
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`
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`IPR2013-00478 (Patent 5,544,352)
`IPR2013-00479 (Patent 5,832,494)
`IPR2013-00480 (Patent 5,832,494)
`IPR2013-00481 (Patent 6,233,571)
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`explaining, these facts. Paper 10, Ex. A; Paper 11, Ex. A; Paper 12, Ex. A.3 Each
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`affidavit complies with the requirements set forth in the Notice.
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`Upon consideration, Petitioners have demonstrated that Mr. Bhansali, Mr.
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`Jacob, and Mr. Silbert have sufficient legal and technical qualifications to represent
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`Petitioners in this proceeding. Moreover, the Board recognizes a need for
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`Petitioners to have related litigation counsel involved in this proceeding.
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`Accordingly, Petitioners have also established good cause for admitting Mr.
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`Bhansali, Mr. Jacob, and Mr. Silbert.
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`Attention is directed to the Office’s Final Rule adopting new Rules of
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`Professional Conduct. See Changes to Representation of Others Before the United
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`States Patent and Trademark Office; Final Rule, 78 Fed. Reg. 20180 (Apr. 3,
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`2013). The Final Rule also removes Part 10 of Title 37, Code of Federal
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`Regulations. The changes set forth in that Final Rule including the USPTO’s Rules
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`of Professional Conduct took effect on May 3, 2013. Therefore, Mr. Bhansali, Mr.
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`Jacob, and Mr. Silbert are subject to the USPTO’s Rules of Professional Conduct
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`that took effect May 3, 2013.
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`It is
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`ORDERED that Petitioners’ motions for pro hac vice admission of Mr.
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`Asim M. Bhansali, Mr. Sharif Jacob, and Mr. David J. Silbert for these
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`proceedings are granted;
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`FURTHER ORDERED that Petitioners are to continue to have a registered
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`practitioner represent them as lead counsel for these proceedings;
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`3 Petitioners are reminded that each exhibit must be uniquely numbered
`sequentially and must be appropriately labeled. See 37 C.F.R. § 42.63.
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`3
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`IPR2013-00478 (Patent 5,544,352)
`IPR2013-00479 (Patent 5,832,494)
`IPR2013-00480 (Patent 5,832,494)
`IPR2013-00481 (Patent 6,233,571)
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`FURTHER ORDERED that Mr. Bhansali, Mr. Jacob, and Mr. Silbert are to
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`comply with the Office Patent Trial Practice Guide and the Board’s Rules of
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`Practice for Trials, as set forth in Part 42 of Title 37, Code of Federal Regulations;
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`and
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`FURTHER ORDERED that Mr. Bhansali, Mr. Jacob, and Mr. Silbert are
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`subject to the Office’s disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and the
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`USPTO Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq.
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`4
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`IPR2013-00478 (Patent 5,544,352)
`IPR2013-00479 (Patent 5,832,494)
`IPR2013-00480 (Patent 5,832,494)
`IPR2013-00481 (Patent 6,233,571)
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`FOR PETITIONERS:
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`Heidi L. Keefe
`COOLEY, LLP
`hkeefe@cooley.com
`dcpatentdocketing@cooley.com.
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`David Silbert
`KEKER & VAN NEST, LLP
`djs@kvn.com
`efiling@kvn.com
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`FOR PATENT OWNER:
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`Martin M. Zoltick
`Nancy J. Linck
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`mzoltick@rfem.com
`nlinck@rfem.com
`SRA-IPR@rfem.com
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`5
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