`Entered: November 26, 2013
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC., LINKEDIN CORP., and TWITTER, INC.
`Petitioners,
`
`v.
`
`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
`____________
`
`Before SALLY C. MEDLEY, CHRISTOPHER L. CRUMBLEY, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`CRUMBLEY, Administrative Patent Judge.
`
`
`DECISION
`Motion for Pro Hac Vice Admission
`37 C.F.R. § 42.10
`
`
`1 This decision addresses motions for pro hac vice admission submitted in each of
`the four cases. We exercise our discretion to issue one decision to be entered in
`each case. The parties are not authorized to use this style heading without
`authorization from the Board.
`
`
`
`
`
`IPR2013-00478 (Patent 5,544,352)
`IPR2013-00479 (Patent 5,832,494)
`IPR2013-00480 (Patent 5,832,494)
`IPR2013-00481 (Patent 6,233,571)
`
`
`Petitioners filed motions for pro hac vice admission of Mr. Mark R.
`
`Weinstein in the above-identified cases on November 13, 2013. IPR2013-00478,
`Paper 15; IPR2013-00479, Paper 16; IPR2013-00480, Paper 15; IPR2013-00481,
`Paper 14.2 Patent Owner did not file an opposition to the motions. For the
`following reasons, the motions are granted.
`Pursuant to 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 is a registered practitioner. In authorizing motions for pro hac
`vice admission, the Board requires the moving party to provide a statement of facts
`showing 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 7, Notice of Filing Date Accorded to Petition, 2 (incorporating requirements
`in the “Order – Authorizing Motion for Pro Hac Vice Admission” in IPR2013-
`00010).3
`
`In this proceeding, lead counsel for Petitioners is Ms. Heidi L. Keefe, a
`registered practitioner. In the motions, Petitioners state that there is good cause for
`the Board to recognize Mr. Weinstein pro hac vice during this proceeding, because
`he is an experienced litigating attorney with an established familiarity with the
`subject matter at issue in the proceeding. Paper 15, 1. In addition, the motion
`states that Mr. Weinstein is counsel of record in related litigation involving the
`same patents. Id. Mr. Weinstein submits affidavits attesting to, and explaining,
`
`2 For expediency, IPR2013-00478 is representative and all subsequent citations are
`to IPR2013-00478 unless otherwise noted.
`3 After the Notice was entered, an expanded panel of the Board updated the
`requirements for filing a motion for pro hac vice admission. See IPR2013-00639,
`Paper 7.
`
`2
`
`
`
`
`
`
`IPR2013-00478 (Patent 5,544,352)
`IPR2013-00479 (Patent 5,832,494)
`IPR2013-00480 (Patent 5,832,494)
`IPR2013-00481 (Patent 6,233,571)
`
`
`these facts. Id., Ex. A.4 The motions and affidavits comply with the requirements
`set forth in the Notice, as well as the updated requirements set forth in the Board’s
`order authorizing pro hac vice admission.
`Upon consideration, Petitioners have demonstrated that Mr. Weinstein
`possesses sufficient legal and technical qualifications to represent Petitioners in
`this proceeding, and the Board recognizes that there is a need for Petitioners to
`have related litigation counsel involved. Accordingly, Petitioners have established
`good cause for Mr. Weinstein’s admission. Mr. Weinstein will be permitted to
`appear pro hac vice in this proceeding as back-up counsel only. See 37 C.F.R.
`§ 42.10(c).
`
`We direct Mr. Weinstein’s attention to the Office’s Final Rule that took
`effect on May 3, 2013 adopting new Rules of Professional Conduct. See Changes
`to Representation of Others Before the United States Patent and Trademark Office;
`Final Rule, 78 Fed. Reg. 20179 (Apr. 3, 2013). The Final Rule also removes Part
`10 of Title 37, Code of Federal Regulations. The motion is granted with the
`understanding that Mr. Weinstein is subject to the Office’s Rules of Professional
`Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction under
`37 C.F.R. § 11.19(a).
`
`For the foregoing reasons, it is
`ORDERED that Petitioners’ motions for pro hac vice admission of Mr.
`
`Mark R. Weinstein for these proceedings are granted;
`FURTHER ORDERED that Mr. Weinstein is authorized to represent
`Petitioners as back-up counsel;
`
`4 Petitioners are again reminded that each exhibit must be uniquely numbered
`sequentially and must be appropriately labeled. See 37 C.F.R. § 42.63.
`3
`
`
`
`
`IPR2013-00478 (Patent 5,544,352)
`IPR2013-00479 (Patent 5,832,494)
`IPR2013-00480 (Patent 5,832,494)
`IPR2013-00481 (Patent 6,233,571)
`
`
`
`
`
`FURTHER ORDERED that Petitioners are to continue to have a registered
`practitioner represent them as lead counsel for these proceedings; and
`FURTHER ORDERED that Mr. Weinstein is to comply with the Office
`Patent Trial Practice Guide and the Board’s Rules of Practice for Trials, as set forth
`in Part 42 of Title 37, Code of Federal Regulations, 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
`
`
`
`
`
`
`
`
`IPR2013-00478 (Patent 5,544,352)
`IPR2013-00479 (Patent 5,832,494)
`IPR2013-00480 (Patent 5,832,494)
`IPR2013-00481 (Patent 6,233,571)
`
`FOR PETITIONERS:
`Heidi L. Keefe
`COOLEY, LLP
`hkeefe@cooley.com
`dcpatentdocketing@cooley.com
`
`David Silbert
`KEKER & VAN NEST, LLP
`djs@kvn.com
`efiling@kvn.com
`
`FOR PATENT OWNER:
`
`Martin M. Zoltick
`Nancy J. Linck
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`mzoltick@rfem.com
`nlinck@rfem.com
`SRA-IPR@rfem.com
`
`
`
`5
`
`
`