Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NETFLIX, INC.
`Petitioners
`
`v.
`
`OPENTV, INC.
`Patent Owner
`____________
`
`Case IPR2014-00252 (Patent 8,107,786)
`Case IPR2014-00267 (Patent 7,409,437)
`Case IPR2014-00269 (Patent 6,233,736)
` Case IPR2014-00274 (Patent 6,018,768)1
`____________
`
`Before SALLY C. MEDLEY, JAMES T. MOORE, and
`JUSTIN BUSCH, Administrative Patent Judges.
`
`BUSCH, Administrative Patent Judge.
`
`
`Paper 8
`Entered: February 27, 2014
`
`DECISION
`Motions for Pro Hac Vice Admission
`37 C.F.R. § 42.10
`
`1 This decision addresses issues that are identical in the four cases. Therefore, we
`exercise our discretion to issue one decision to be entered in each of the four cases.
`The parties, however, are not authorized to use this style heading in their papers.
`
`
`571-272-7822
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NETFLIX, INC.
`Petitioners
`
`v.
`
`OPENTV, INC.
`Patent Owner
`____________
`
`Case IPR2014-00252 (Patent 8,107,786)
`Case IPR2014-00267 (Patent 7,409,437)
`Case IPR2014-00269 (Patent 6,233,736)
` Case IPR2014-00274 (Patent 6,018,768)1
`____________
`
`Before SALLY C. MEDLEY, JAMES T. MOORE, and
`JUSTIN BUSCH, Administrative Patent Judges.
`
`BUSCH, Administrative Patent Judge.
`
`
`Paper 8
`Entered: February 27, 2014
`
`DECISION
`Motions for Pro Hac Vice Admission
`37 C.F.R. § 42.10
`
`1 This decision addresses issues that are identical in the four cases. Therefore, we
`exercise our discretion to issue one decision to be entered in each of the four cases.
`The parties, however, are not authorized to use this style heading in their papers.
`
`
`
`
`
`IPR2014-00252 (Patent 8,107,786)
`IPR2014-00267 (Patent 7,409,437)
`IPR2014-00269 (Patent 6,233,736)
`IPR2014-00274 (Patent 6,018,768)
`
`
`Patent Owner OpenTV, Inc. (“OpenTV”) filed motions for pro hac vice
`
`admission of Mr. Matthew V. Topic in the above-identified cases on February 14,
`2014. IPR2014-00252, Paper 7; IPR2014-00267, Paper 7; IPR2014-00269, Paper
`7; IPR2014-00274, Paper 6.2 The motions are unopposed. For the reasons
`discussed below, 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. 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). The Board previously authorized the parties to file motions
`for pro hac vice, requiring that the moving party 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).
`
`In this proceeding, lead counsel for OpenTV is Mr. Russell E. Levine, a
`registered practitioner. In the motions, OpenTV states that there is good cause for
`the Board to recognize Mr. Topic pro hac vice during this proceeding, because he
`is an experienced litigating attorney with an established familiarity with the subject
`matter at issue in the proceeding. Paper 7, 2-3. In particular, the motion states that
`Mr. Topic is counsel in related litigation involving the same patents, including
`
`2 For expediency, IPR2014-00252 is representative and all subsequent citations are
`to IPR2014-00252 unless otherwise noted.
`2
`
`
`
`
`
`
`IPR2014-00252 (Patent 8,107,786)
`IPR2014-00267 (Patent 7,409,437)
`IPR2014-00269 (Patent 6,233,736)
`IPR2014-00274 (Patent 6,018,768)
`
`
`being actively involved in issues of invalidity and claim construction. Id. Mr.
`Topic submits declarations attesting to, and explaining, these facts. IPR2014-
`00252, Ex. 2001; IPR2014-00267, Ex. 2001; IPR2014-00269, Ex. 2001; IPR2014-
`00274, Ex. 2001. The motions and declarations comply with the requirements set
`forth in the Notice, and contains Mr. Topic’s agreement to be 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). Id.
`Upon consideration, OpenTV has demonstrated that Mr. Topic possesses
`sufficient legal and technical qualifications to represent OpenTV in this
`proceeding, and the Board recognizes a need for OpenTV to have related litigation
`counsel involved. Accordingly, OpenTV has established good cause for Mr.
`Topic’s admission. Mr. Topic 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 OpenTV’s motions for pro hac vice admission of Mr.
`
`Matthew V. Topic for these proceedings are granted;
`FURTHER ORDERED that OpenTV is to continue to have a registered
`practitioner represent it as lead counsel for these proceedings;
`FURTHER ORDERED that Mr. Topic 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
`FURTHER ORDERED that Mr. Topic is 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.
`
`
`
`
`3
`
`
`
`
`
`
`
`
`IPR2014-00252 (Patent 8,107,786)
`IPR2014-00267 (Patent 7,409,437)
`IPR2014-00269 (Patent 6,233,736)
`IPR2014-00274 (Patent 6,018,768)
`
`FOR PETITIONERS:
`Andrew S. Ehmke
`andy.ehmke.ipr@haynesboone.com
`
`Dustin Johnson
`dustin.johnson@haynesboone.com
`
`Scott Jarratt
`scott.jarratt.ipr@haynesboone.com
`
`
`
`FOR PATENT OWNER:
`
`Russell E. Levine
`russell.levine@kirkland.com
`
`Eugene Goryunov
`eugene.goryunov@kirkland.com
`
`
`4
`
`
`
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