Paper 8
`Entered: December 10, 2013
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC.
`Petitioner,
`
`v.
`
`B.E. TECHNOLOGY, LLC.
`Patent Owner.
`____________
`
`Case IPR2014-00031 (Patent 6,771,290)
`Case IPR2014-00033 (Patent 6,771,290)
` Case IPR2014-00038 (Patent 6,628,314)1
`____________
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`DESHPANDE, 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 three cases. We exercise our discretion to issue one decision to be entered in
`each case. The parties are not authorized to use this heading style without
`authorization from the Board.
`
`
`Entered: December 10, 2013
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC.
`Petitioner,
`
`v.
`
`B.E. TECHNOLOGY, LLC.
`Patent Owner.
`____________
`
`Case IPR2014-00031 (Patent 6,771,290)
`Case IPR2014-00033 (Patent 6,771,290)
` Case IPR2014-00038 (Patent 6,628,314)1
`____________
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`DESHPANDE, 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 three cases. We exercise our discretion to issue one decision to be entered in
`each case. The parties are not authorized to use this heading style without
`authorization from the Board.
`
`
`
`
`
`IPR2014-00031 (Patent 6,771,290)
`IPR2014-00033 (Patent 6,771,290)
`IPR2014-00038 (Patent 6,628,314)
`
`Petitioner filed motions for pro hac vice admission of Mr. Brian A.
`
`Rosenthal in the above-identified cases on November 18, 2013. IPR2014-00031,
`Paper 72; IPR2014-00033, Paper 7; IPR2014-00038, Paper 7. 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 3, 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 these proceedings, lead counsel for Petitioner is Mr. Clinton H. Brannon,
`a registered practitioner. In the motions, Petitioner states that there is good cause
`for the Board to recognize Mr. Rosenthal pro hac vice during these proceedings,
`because Mr. Rosenthal is an experienced litigation attorney and has been involved
`in numerous patent infringement cases in federal District Courts. Paper 7. Mr.
`Rosenthal is also counsel for Petitioner in a co-pending litigation, B.E.
`Technology, L.L.C. v. Google, Inc., No. 12-cv-02830-JMP-TMP, which involves
`
`
`2 For expediency, IPR2014-00031 is representative and all subsequent citations are
`to IPR2014-00031 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
`
`
`
`
`IPR2014-00031 (Patent 6,771,290)
`IPR2014-00033 (Patent 6,771,290)
`IPR2014-00038 (Patent 6,628,314)
`
`
`U.S. Patent No. 6,628,314 and U.S. Patent No. 6,771,290. Paper 7. Mr. Rosenthal
`submits declarations attesting to, and explaining, these facts. Id., Rosenthal
`Declaration.4 The motions and declarations 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, Petitioner has demonstrated that Mr. Rosenthal
`possesses sufficient legal and technical qualifications to represent Petitioner in
`these proceedings, and the Board recognizes that there is a need for Petitioner to
`have related litigation counsel involved. Accordingly, Petitioner has established
`good cause for Mr. Rosenthal’s admission. Mr. Rosenthal will be permitted to
`appear pro hac vice in these proceedings as back-up counsel only. See 37 C.F.R.
`§ 42.10(c).
`
`For the foregoing reasons, it is
`ORDERED that Petitioner’s motions for pro hac vice admission of Mr.
`
`Brian A. Rosenthal for these proceedings are granted;
`FURTHER ORDERED that Mr. Rosenthal is authorized to represent
`Petitioner as back-up counsel;
`FURTHER ORDERED that Petitioner is to continue to have a registered
`practitioner represent them as lead counsel for these proceedings; and
`FURTHER ORDERED that Mr. Rosenthal 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
`
`
`4 Petitioner is reminded that each exhibit must be uniquely numbered sequentially
`and must be appropriately labeled. See 37 C.F.R. § 42.63.
`3
`
`
`
`
`IPR2014-00031 (Patent 6,771,290)
`IPR2014-00033 (Patent 6,771,290)
`IPR2014-00038 (Patent 6,628,314)
`
`
`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
`
`
`
`
`
`
`IPR2014-00031 (Patent 6,771,290)
`IPR2014-00033 (Patent 6,771,290)
`IPR2014-00038 (Patent 6,628,314)
`
`FOR PETITIONERS:
`Clinton H. Brannon
`Brian A. Rosenthal
`Mayer Brown, LLP
`cbrannon@mayerbrown.com
`brosenthal@mayerbrown.com
`
`FOR PATENT OWNER:
`
`Jason S. Angell
`Robert E. Freitas
`Freitas Tseng & Kaufman LLP
`jangell@ftklaw.com
`rfreitas@ftklaw.com
`
`
`
`
`5
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
