`571-272-7822
`
`
`Paper No. 15
`Date Entered: June 19, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.
`Petitioner
`
`v.
`
`EVOLUTIONARY INTELLIGENCE, LLC
`Patent Owner
`____________
`
`Case IPR2014-00086
`Patent 7,010,536
`____________
`
`
`
`
`BRIAN J. McNAMARA, Administrative Patent Judge.
`
`
`ORDER GRANTING MOTION FOR ADMISSION PRO HAC VICE OF
`TODD KENNEDY
`
`37 C.F.R. § 42.10
`
`
`
`
`Case IPR2014-00086
`Patent 7,010,536
`
`
`
`Evolutionary Intelligence LLC (“Patent Owner”) moves for the pro hac vice
`admission of attorney Todd Kennedy in accordance with 37 CFR § 42.10. Paper 7
`(“Motion”). Apple Inc. (“Petitioner”) has not opposed the Motion. We grant the
`Motion.
`I. Discussion
`As set forth in 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 be a registered practitioner. For example, where the
`lead counsel is a registered practitioner, a non-registered practitioner may be
`permitted to appear pro hac vice “upon showing that counsel is an experienced
`litigating attorney and has an established familiarity with the subject matter at issue
`in the proceeding.” 37 C.F.R. § 42.10(c). In authorizing motions for pro hac vice
`admission, the Board also requires a statement of facts showing there is 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. (See, Paper 7, “Order –
`Authorizing Motion for Pro Hac Vice Admission” in IPR2013-00639, entered
`October 15, 2013).
`Todd Kennedy provides uncontroverted testimony that he
`i.
`is a membership in good standing of the Bar of California;
`ii.
`has not been subject to any suspensions or disbarments from practice
`before any court or administrative body;
`has never been denied any application for admission to practice before
`any court or administrative body;
`has not been subject to sanctions or contempt citations imposed by
`any court or administrative body;
`
`iii.
`
`iv.
`
`
`
`2
`
`
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`Case IPR2014-00086
`Patent 7,010,536
`
`
`
`v.
`
`has read and will comply with the Office Patent Trial Practice Guide
`and the Board’s Rules of Practice for Trials set forth in part 42 of
`37 C.F.R.;
`vi. will be subject to the USPTO 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);
`has listed all other proceedings before the Office for which he has
`applied to appear pro hac vice in the last three (3) years; and
`viii.
`has familiarity with the subject matter at issue in the proceeding.
`Lead counsel for Patent Owner, Anthony Patek, who is registered to practice
`at the USPTO, has provided a statement of facts that Mr. Kennedy is an
`experienced litigator who is counsel for Patent Owner in co-pending litigation
`involving the patent that is the subject of this proceeding and has an established
`familiarity with the relevant claim construction and other issues in this proceeding.
`Thus, Patent Owner has shown good cause why Todd Kennedy should be
`recognized pro hac vice for purposes of this proceeding. Mr. Kennedy has
`provided the requisite affidavit or declaration. Therefore, Todd Kennedy has
`complied with the requirements for admission pro hac vice in this proceeding.
`II. Order
`It is
`ORDERED that the Motion seeking admission pro hac vice for Todd
`Kennedy is GRANTED;
`FURTHER ORDERED that Todd Kennedy may not act as lead counsel in
`the proceeding;
`
`vii.
`
`
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`3
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`Case IPR2014-00086
`Patent 7,010,536
`
`
`
`FURTHER ORDERED that a registered practitioner must remain as lead
`counsel throughout the proceeding; and
`FURTHER ORDERED that Todd Kennedy 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 the C.F.R.; and
`FURTHER ORDERED that Todd Kennedy is 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., which took effect on
`May 3, 2013.
`
`
`
`
`PETITIONER: (via electronic transmission)
`
`Jeffrey Kushan
`Douglas I. Lewis
`SIDLEY AUSTIN LLP
`jkushan@sidley.com
`dilewis@sidley.com
`
`PATENT OWNER: (via electronic transmission)
`
`Anthony Patek
`Todd Kennedy
`GUTRIDE SAFIER LLP
`pto@gutridesafier.com
`todd@guttridesafier.com
`
`
`
`4
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`