`Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 23
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` Entered: August 15, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
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`NETFLIX, INC.,
`Petitioner,
`
`v.
`
`OPENTV, INC.,
`Patent Owner.
`_______________
`
`Cases IPR2014-00252 (Patent 8,107,786 B2)
`IPR2014-00267 (Patent 7,409,437 B2)
`IPR2014-00269 (Patent 6,233,736 B1)
`_______________
`
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`Before SALLY C. MEDLEY, Administrative Patent Judge.
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`DECISION
`Motion for Pro Hac Vice Admission
`37 C.F.R. § 42.10
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`On August 6, 2014, Petitioner filed motions for pro hac vice admission of
`Mr. Clement S. Roberts. The motions are unopposed.1 For the reasons provided
`below, Petitioner’s motions are granted.
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`1 Patent Owner did not file an opposition within one week from the filing of
`Petitioner’s motions.
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`IPR2014-00252 (Patent 8,107,786 B2)
`IPR2014-00267 (Patent 7,409,437 B2)
`IPR2014-00269 (Patent 6,233,736 B1)
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`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 be 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-
`00639). 2
`In this proceeding, lead counsel for Petitioner, Mr. Andrew Ehmke, is a
`registered practitioner. Petitioner’s motions indicate that there is good cause for
`the Board to recognize Mr. Roberts pro hac vice during these proceedings, and is
`supported by the affidavit of Mr. Roberts. Ex. 1006.
`In particular, the motions explain that Mr. Roberts is an experienced
`litigating attorney, and Mr. Roberts declares that he has an established familiarity
`with the subject matter at issue in this proceeding, as he is counsel in a related
`district case involving the same patents involved in these proceedings. Paper 21,
`1–2; Ex. 1006.
`Upon consideration, Petitioner has demonstrated that Mr. Roberts 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
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`2 Citations are to IPR2014-00252.
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`2
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`IPR2014-00252 (Patent 8,107,786 B2)
`IPR2014-00267 (Patent 7,409,437 B2)
`IPR2014-00269 (Patent 6,233,736 B1)
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`Mr. Roberts involved. Accordingly, Petitioner has established good cause for Mr.
`Roberts’s admission. Mr. Roberts will be permitted to appear pro hac vice in this
`proceeding 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.
`Clement S. Roberts are granted;
`FURTHER ORDERED that Mr. Clement S. Roberts is authorized to
`represent Petitioner as back-up counsel only;
`FURTHER ORDERED that Petitioner is to continue to have a registered
`practitioner represent Petitioner as lead counsel for these proceedings; and
`FURTHER ORDERED that Mr. Clement S. Roberts 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.
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`3
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`IPR2014-00252 (Patent 8,107,786 B2)
`IPR2014-00267 (Patent 7,409,437 B2)
`IPR2014-00269 (Patent 6,233,736 B1)
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`PETITIONER:
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`Andrew S. Ehmke
`Dustin Johnson
`HAYNES AND BOONE, LLP
`andy.ehmke.ipr@haynesboone.com
`dustin.johnson.ipr@haynesboone.com
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`PATENT OWNER:
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`Erika H. Arner
`Joshua L. Goldberg
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT AND DUNNER, LLP
`erika.arner@finnegan.com
`joshua.goldberg@finnegan.com
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`Russell Levine
`Eugene Goryunov
`KIRKLAND & ELLIS LLP
`russell.levine@kirkland.com
`eugene.goryunov@kirkland.com
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`4
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