Paper 11
`Entered: December 10, 2013
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION
`Petitioner,
`
`v.
`
`B.E. TECHNOLOGY, LLC
`Patent Owner.
`____________
`
`Case IPR2014-00039 (Patent 6,628,314)
` Case IPR2014-00040 (Patent 6,771,290)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 two 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.
`
`

`

`
`
`Case IPR2014-00039 (Patent 6,628,314)
`Case IPR2014-00040 (Patent 6,771,290)
`
`Petitioner filed motions for pro hac vice admission of Mr. Scott M. Border
`
`in the above-identified cases on October 25, 2013. IPR2014-00039, Paper 72;
`IPR2014-00040, Paper 6. 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 4, Notice of Filing Date Accorded to Petition, 2-3 (incorporating
`requirements in the “Order – Authorizing Motion for Pro Hac Vice Admission” in
`IPR2013-00639).3
`
`In these proceedings, lead counsel for Petitioner is Mr. Jeffrey P. Kushan, a
`registered practitioner. In the motions, Petitioner states that there is good cause for
`the Board to recognize Mr. Border pro hac vice during these proceedings, because
`Mr. Border is an experienced litigation attorney and has been involved in complex
`intellectual property litigation, and has appeared as counsel for Petitioner in a
`number of litigation matters before the International Trade Commission and
`various district courts. Paper 7, 3. In addition, the motion states that Mr. Border is
`familiar with U.S. Patent No. 6,628,314 and U.S. Patent No. 6,771,290, the prior
`art relied upon by Petitioner, and the legal and factual arguments made by
`
`
`2 For expediency, IPR2014-00039 is representative and all subsequent citations are
`to IPR2014-00039 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
`
`
`

`

`
`
`Case IPR2014-00039 (Patent 6,628,314)
`Case IPR2014-00040 (Patent 6,771,290)
`
`Petitioner. Paper 7, 4. Mr. Border submits declarations attesting to, and
`explaining, these facts. Id., Border Declaration.4 The motions and declarations
`comply with the requirements set forth in the Notice.
`Upon consideration, Petitioner has demonstrated that Mr. Border 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 its
`litigation counsel involved. Accordingly, Petitioner has established good cause for
`Mr. Border’s admission. Mr. Border 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. Scott
`
`M. Border for these proceedings are granted;
`FURTHER ORDERED that Mr. Border 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. Border 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 Petitioner is reminded that each exhibit must be uniquely numbered sequentially
`and must be appropriately labeled. See 37 C.F.R. § 42.63.
`3
`
`
`

`

`
`
`Case IPR2014-00039 (Patent 6,628,314)
`Case IPR2014-00040 (Patent 6,771,290)
`
`FOR PETITIONER:
`Jeffrey P. Kushan
`Scott M. Border
`Sidley Austin LLP
`jkushan@sidley.com
`sborder@sidley.com
`
`FOR PATENT OWNER:
`
`Jason S. Angell
`Robert E. Freitas
`Freitas Tseng & Kaufman LLP
`jangell@ftklaw.com
`rfreitas@ftklaw.com
`
`
`
`
`4
`
`
`