`Entered: December 10, 2013
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`Trials@uspto.gov
`571-272-7822
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`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
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`
`
`
`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