Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 49
`Entered: May 20, 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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`AKER BIOMARINE AS
`Petitioner
`
`v.
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`NEPTUNE TECHNOLOGIES AND BIORESSOURCES INC.
`Patent Owner
`_______________
`
`Case IPR2014-00003
`Patent 8,278,351
`_______________
`
`
`Before LORA M. GREEN, JACQUELINE WRIGHT BONILLA, and
`SHERIDAN K. SNEDDEN, Administrative Patent Judges.
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`GREEN, Administrative Patent Judge.
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`
`ORDER
`Petitioner’s Motion for the Pro Hac Vice Admission of
`Leslie M. Schmidt
`37 C.F.R. § 42.10
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`Case IPR2014-00003
`Patent 8,278,351
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`Petitioner, Aker BioMarine AS (“Petitioner”), timely filed a Motion for the
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`Pro Hac Vice Admission of Leslie M. Schmidt1 pursuant to 37 C.F.R. § 42.10(c)
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`(Paper 39), accompanied by the Declaration of Leslie M. Schmidt in Support of the
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`Motion (Ex. 1081). Patent Owner has not filed an opposition to the Motion. For
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`the reasons provided below, Petitioner’s Motion is granted.
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`As set forth in § 42.10(c), we may recognize counsel pro hac vice during a
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`proceeding upon a showing of good cause, subject to the condition that lead
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`counsel be a registered practitioner. For example, where the lead counsel is a
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`registered practitioner, a non-registered practitioner may be permitted to appear
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`pro hac vice “upon showing that counsel is an experienced litigating attorney and
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`has an established familiarity with the subject matter at issue in the proceeding.”
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`37 C.F.R. § 42.10(c). In authorizing motions for pro hac vice admission, we also
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`require a statement of facts showing there is good cause for us to recognize counsel
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`pro hac vice and an affidavit or declaration of the individual seeking to appear in
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`this proceeding. See Paper 7 (referencing the “Order – Authorizing Motion for Pro
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`Hac Vice Admission” in Motorola Mobility LLC v. Arnouse, Case IPR2013-00010
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`(PTAB October 15, 2012) (Paper 7 at 3-4) (expanded panel)).
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`In its Motion, Petitioner asserts that there is good cause for Ms. Schmidt’s
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`pro hac vice admission because: (1) Ms. Schmidt is an experienced patent
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`litigation attorney; and (2) Ms. Schmidt is familiar with the subject matter at issue
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`in the instant proceeding. Ms. Schmidt experience as a patent litigation attorney
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`includes “several matters in the chemical and mechanical engineering arts.” Ms.
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`1. The Motion is captioned as a combined Motion for the Pro Hac Vice Admission
`of Michael W. De Vries and Leslie M. Schmidt. This Order addresses the Motion
`as it pertains to the pro hac vice admission of Ms. Schmidt.
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`Case IPR2014-00003
`Patent 8,278,351
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`Schmidt is also “very familiar with U.S. Patent No. 8,278,351, and with the legal
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`subject matter, technical subject matter, and prior art discussed in AKBM’s
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`Request for Inter Partes Review of U.S. Patent No. 8,278,351, which forms the
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`basis for this proceeding.” Ex. 1081, ¶ 4. She has also represented Petitioner in an
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`ITC investigation and district court actions related to the patent at issue and been
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`involved with factual and technical developments in those matters. Id. In support
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`of the Motion, Ms. Schmidt attests to these facts in her Declaration. Ex. 1081. In
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`addition to the foregoing, Petitioner’s lead counsel J. Mitchell Jones, and back-up
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`counsel, Amanda J. Hollis, are registered practitioners. Ex. 1081, ¶ 1.
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`Based on the facts set forth above, we conclude that Ms. Schmidt has
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`sufficient legal and technical qualifications to represent Petitioner in this
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`proceeding and that the criteria for pro hac vice admission are satisfied. See
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`Unified Patents, Inc. v. Parallel Iron, LLC, Case IPR2013-00639 (PTAB Oct. 15,
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`2013) (Paper 7) (expanded panel), (superseding IPR2013-00010, Paper 7, dated
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`October 15, 2012, and setting forth the requirements for pro hac vice admission)
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`(copy available on the Board Web site under “Representative Orders, Decisions,
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`and Notices”). Accordingly, Petitioner has established good cause for Ms.
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`Schmidt’s pro hac vice admission. Ms. Schmidt will be permitted to appear pro
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`hac vice in the instant proceeding as back-up counsel only. See 37 C.F.R.
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`§ 42.10(c).
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`For the foregoing reasons, it is
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`ORDERED that Petitioner’s Motion for the Pro Hac Vice Admission of
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`Leslie M. Schmidt for the instant proceeding is granted; Ms. Schmidt is authorized
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`to represent Petitioner as back-up counsel in the instant proceeding;
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`FURTHER ORDERED that Petitioner is to continue to have a registered
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`practitioner as lead counsel in the instant proceeding;
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`Case IPR2014-00003
`Patent 8,278,351
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`FURTHER ORDRED that Ms. Schmidt is to comply with the Office Patent
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`Trial Practice Guide and the Board’s Rules of Practice for Trials, as set forth in
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`Title 37, Part 42 of the Code of Federal Regulations; and
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`FURTHER ORDERED that Ms. Schmidt is 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 of
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`Professional Conduct set forth in 37 C.F.R. §§ 11.101-11.901.
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`For PETITIONER:
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`John Jones
`jmjones@casimirjones.com
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`Amanda Hollis
`amanda.hollis@kirkland.com
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`For PATENT OWNER:
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`Stephen Altieri
`saltieri@cooley.com
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`J. Dean Farmer
`dfarmer@cooley.com
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