throbber
Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 38
`Date Entered: August 26, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WINTEK CORPORATION,
`Petitioner,
`v.
`TPK TOUCH SOLUTIONS,
`Patent Owner.
`____________
`
`Case IPR2013-00567
`Case IPR2014-005411
`Patent 8,217,902
`____________
`
`Before TONI R. SCHEINER and JOSIAH C. COCKS, Administrative Patent
`Judges.
`
`SCHEINER, Administrative Patent Judge.
`
`
`DECISION
`Patent Owner’s Motion for Pro Hac Vice Admission of Derek Tang
`37 C.F.R. § 42.10
`
`
`1 IPR2014-00541 has been joined with IPR2013-00567. See IPR2013-00567,
`Paper 23.
`
`
`

`

`Cases IPR2013-00567; IPR2014-00541
`Patent 8,217,902
`
`
`
`
`Patent Owner, TPK Touch Solutions (“TPK”) filed a motion for pro hac vice
`admission of Derek Tang. Paper 33 (“Mot.”). TPK provided an affidavit of Mr.
`Tang, filed separately as Exhibit 2026, in support of its motion. The motion is
`unopposed. The motion is GRANTED, contingent on fulfilment of the condition
`discussed below.
`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 and to any other conditions as the Board may impose.” 37 C.F.R.
`§ 42.10(c). In authorizing motions for pro hac vice, the Board requires the moving
`party to provide 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 the proceeding.
`A Notice of Filing Date Accorded to Petition was entered in this proceeding
`on September 2, 2013. Paper 3 (“Notice”). The Notice advised that motions for
`pro hac vice admission be filed in accordance with the “Order—Authorizing
`Motion for Pro Hac Vice Admission” in IPR2013-00010 (MPT) . . . available on
`the Board Web site under “Representative Orders, Decisions, and Notices.” Notice
`2. However, the Notice further advised that “[a]ny motion for pro hac vice
`admission filed by the parties shall also indicate that the person sought to be
`admitted will be subject to the USPTO Rules of Professional Conduct,” which took
`effect May 3, 2013.2 Id.
`In its motion, TPK states that there is good cause for the Board to recognize
`Mr. Tang as pro hac vice backup counsel during this proceeding, as Mr. Tang is an
`experienced litigation attorney with an established familiarity with the subject
`
`2 See Changes to Representation of Others Before the United States Patent and
`Trademark Office; Final Rule, 78 Fed. Reg. 20180 (Apr. 3, 2013).
`2
`
`
`
`

`

`Cases IPR2013-00567; IPR2014-00541
`Patent 8,217,902
`
`matter at issue in this proceeding. Mot. 4. Moreover, TPK points out that Mr.
`Tang has assisted TPK in preparing its responses in a co-pending ex parte
`reexamination of the same patent at issue in this proceeding. Id.
`Mr. Tang’s affidavit in support of TPK’s motion attests to, and sufficiently
`explains, these facts. Ex. 2026 ¶ 8. Mr. Tang’s affidavit otherwise complies with
`the requirements set forth in the Notice, except that Mr. Tang attests that he
`understands that he “will be subject to the USPTO Code of Professional
`Responsibility set forth in 37 C.F.R §§ 10.20 et seq.” Id. at ¶ 6. However, as
`discussed above, the USPTO Code of Professional Responsibility set forth in part
`10 of title 37 has been superseded by the USPTO Rules of Professional Conduct.
`Accordingly, the affidavit or declaration of the individual seeking to appear
`must attest that the individual will be subject to the USPTO Rules of Professional
`Responsibility set forth in 37 C.F.R. §§ 11.101 et seq.
`We recognize that TPK has a substantial need for Mr. Tang’s pro hac vice
`admission and involvement in this proceeding. Moreover, with the exception of
`the deficiency noted above, TPK has demonstrated sufficiently that Mr. Tang has
`sufficient legal and technical qualifications to represent TPK in this proceeding,
`and that there is good cause for admitting Mr. Tang. Accordingly, TPK’s motion
`for pro hac vice admission of Derek Tang is granted—contingent on full
`compliance with the ORDER set forth below.
`
`
`
`
`
`3
`
`

`

`Cases IPR2013-00567; IPR2014-00541
`Patent 8,217,902
`
`
`It is
`ORDERED that TPK’s motion for pro hac vice admission of Derek Tang for
`this proceeding is GRANTED, contingent on Mr. Tang’s filing, no later than 5:00
`PM Eastern Time on August 29, 2014, an affidavit attesting that he will be subject
`to the Office’s 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);
`FURTHER ORDERED that TPK is to continue to have a registered
`practitioner represent it as lead counsel for this proceeding; and
`FURTHER ORDERED that Mr. Tang 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 the C.F.R., and to be subject to the Office’s 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).
`
`
`
`
`
`
`
`
`
`4
`
`

`

`Cases IPR2013-00567; IPR2014-00541
`Patent 8,217,902
`
`PETITIONER:
`
`Joseph E. Palys
`Naveen Modi
`Abhay Watwe
`FINNEGAN, HENDERSON, FARABOW
`GARRETT & DUNNER, L.L.P.
`joseph.palys@finnegan.com
`naveen.modi@finnegan.com
`abhay.watwe@finnegan.com
`
`PATENT OWNER:
`
`Joseph J. Richetti
`BRYAN CAVE LLP
`joe.richetti@bryancave.com
`
`David Bilsker
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`davidbilsker@quinnemanuel.com
`
`
`
`
`
`
`5
`
`

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