Paper 9
`Entered: December 10, 2013
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC.
`Petitioner,
`
`v.
`
`B.E. TECHNOLOGY, L.L.C.
`Patent Owner.
`____________
`
`Case IPR2014-00052 (Patent 6,628,314)
` Case IPR2014-00053 (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 two cases. We exercise our discretion to issue one decision to be entered in
`each case. The parties are not authorized to use this style heading without
`authorization from the Board.
`
`

`

`
`
`IPR2014-00052 (Patent 6,628,314)
`IPR2014-00053 (Patent 6,628,314)
`
`Petitioner filed motions for pro hac vice admission of Mr. Mark R.
`
`Weinstein in the above-identified cases on November 21, 2013. IPR2014-00052,
`Paper 82; IPR2014-00053, Paper 8. 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 (incorporating requirements
`in the “Order – Authorizing Motion for Pro Hac Vice Admission” in IPR2013-
`00010).3
`
`In these proceedings, lead counsel for Petitioner is Ms. Heidi L. Keefe, a
`registered practitioner. In the motions, Petitioner states that there is good cause for
`the Board to recognize Mr. Weinstein pro hac vice during these proceedings,
`because Mr. Weinstein is an experienced litigation attorney and has been involved
`in numerous complex litigations in state and federal courts. Paper 8, 1. In
`addition, the motion states that Mr. Weinstein is familiar with U.S. Patent No.
`6,628,314 and the petitions filed in these proceedings, and is counsel of record in
`related litigation involving the same patent, B.E. Technology, L.L.C. v. Facebook,
`Inc., No. 2:12-cv-2769 (WDTN 2012). Id. Mr. Weinstein submits affidavits
`
`
`2 For expediency, IPR2014-00052 is representative and all subsequent citations are
`to IPR2014-00052 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
`
`
`

`

`
`
`IPR2014-00052 (Patent 6,628,314)
`IPR2014-00053 (Patent 6,628,314)
`
`attesting to, and explaining, these facts. Id., Ex. A.4 The motions and affidavits
`comply with the requirements set forth in the Notice.
`Upon consideration, Petitioner has demonstrated that Mr. Weinstein
`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. Weinstein’s admission. Mr. Weinstein will be permitted to
`appear pro hac vice in these proceedings as back-up counsel only. See 37 C.F.R.
`§ 42.10(c).
`
`We direct Mr. Weinstein’s attention to the Office’s Final Rule that took
`effect on May 3, 2013 adopting new Rules of Professional Conduct. See Changes
`to Representation of Others Before the United States Patent and Trademark Office;
`Final Rule, 78 Fed. Reg. 20179 (Apr. 3, 2013). The Final Rule also removes Part
`10 of Title 37, Code of Federal Regulations. The motion is granted with the
`understanding that Mr. Weinstein is subject to the Office’s Rules of Professional
`Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction under
`37 C.F.R. § 11.19(a).
`
`For the foregoing reasons, it is
`ORDERED that Petitioner’s motions for pro hac vice admission of Mr.
`
`Mark R. Weinstein for these proceedings are granted;
`FURTHER ORDERED that Mr. Weinstein 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
`
`
`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
`
`
`

`

`IPR2014-00052 (Patent 6,628,314)
`IPR2014-00053 (Patent 6,628,314)
`
`
`FURTHER ORDERED that Mr. Weinstein 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
`
`
`

`

`
`
`IPR2014-00052 (Patent 6,628,314)
`IPR2014-00053 (Patent 6,628,314)
`
`FOR PETITIONER:
`Heidi L. Keefe
`Mark R. Weinstein
`COOLEY, LLP
`hkeefe@cooley.com
`mweinstein@cooley.com
`
`FOR PATENT OWNER:
`
`Jason S. Angell
`Robert E. Freitas
`Freitas Tseng & Kaufman LLP
`jangell@ftklaw.com
`rfreitas@ftklaw.com
`
`
`
`
`5
`
`
`