Trials@uspto.gov
`571-272-7822
`
` Paper 9
` Entered: May 6, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EIZO CORPORATION
`Petitioner
`
`v.
`
`BARCO N.V.
`Patent Owner
`____________
`
`Case IPR2014-00358
`Patent RE43,707 E
`
`Before KALYAN K.DESHPANDE, JAMES B. ARPIN, and
`DAVID C. McKONE, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`DECISION
`Granting Patent Owner’s Motion for Pro Hac Vice Admission
`of Jeffrey C. Morgan
`37 C.F.R. § 42.10
`
`Patent Owner, Barco N.V., moves for pro hac vice admission of
`Mr. Jeffrey C. Morgan. Paper 7. Patent Owner provides an affidavit from
`Mr. Morgan in support of its motion. Paper 7, 7-10. Petitioner, Eizo
`Corporation, did not file an opposition to Patent Owner’s motion.
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`

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`Case IPR2014-00358
`Patent RE43,707 E
`
`See IPR2013-00639, Paper 7, 3 (parties seeking to oppose a motion for
`admission must file their opposition no later than one week after the filing of
`the motion). For the reasons stated below, Patent Owner’s motion is
`granted.
`We 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 and to any other conditions as the Board may
`impose.” 37 C.F.R. § 42.10(c). For example, where the lead counsel is a
`registered practitioner, a non-registered practitioner, such as Mr. Morgan,
`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.” Id. In authorizing motions for
`pro hac vice admission, we require the moving party to provide a statement
`of facts showing that there is good cause for us to recognize counsel pro hac
`vice and an affidavit or declaration of the individual seeking to appear.
`Paper 3, 3 (referencing IPR2013-00639, Paper 7).
`In its motion, Patent Owner argues that there is good cause for
`Mr. Morgan’s pro hac vice admission because he is an experienced patent
`litigation attorney and has an established familiarity with the subject matter
`at issue in this proceeding. Paper 7, 2-4. Specifically, Mr. Morgan
`represents Patent Owner in a related proceeding, Barco, N.V., et al. v. Eizo
`Nanao Corporation, et al., Case No. 1:11-cv-02964-RLV (N.D. Georgia),
`concerning Patent No. US RE43,707 E (Ex. 1001; “the ’707 Patent”) and its
`predecessor, Patent No. US 7,639,849 B2. Id. at 4. The ’707 Patent is
`challenged in the present petition. In his affidavit, Mr. Morgan attests that:
`
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`Case IPR2014-00358
`Patent RE43,707 E
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`(1)
`
`he is “a member in good standing of the State Bar of Georgia
`and the Commonwealth of Massachusetts” and is admitted to
`practice before the U.S. District Court for the District of
`Massachusetts, U.S. District Court for the Western District of
`Wisconsin, U.S. District Court for the Northern District of
`Georgia, U.S. District Court for the Middle District of Georgia,
`U.S. District Court for the Eastern District of Texas, U.S. Court
`of Appeals for the First Circuit, U.S. Court of Appeals for the
`Ninth Circuit, U.S. Court of Appeals for the Eleventh Circuit,
`U.S. Court of Appeals for the Federal Circuit, and U.S.
`Supreme Court;
`he has “not been suspended or disbarred from practice before
`any court or administrative body” and “never had an application
`for admission to practice before any court or administrative
`body denied,” and “[n]o sanction or contempt citation has been
`imposed against [him] by any court or administrative body”;
`(3) he 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.,” and acknowledges that he “will
`be subject to the USPTO Rules of Professional Conduct, as set
`forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction
`under 37 C.F.R. § 11.19(a)”;
`
`(2)
`
`
`(4)
`
`
`(5)
`
`he has “not applied to appear pro hac vice before the Office in
`any other proceeding in the last three (3) years”; and
`
`he [is] “a partner with the law firm of Barnes & Thornburg
`LLP[, and he is] an experienced patent litigation attorney, [who
`has] litigated patent cases for [his] entire career—over
`seventeen (17) years,” and has “at all times been the Patent
`Owner’s lead trial counsel in its copending district court
`litigation against Petitioner, Barco, N.V., et al. v. Eizo Nanao
`Corporation, et al., Case No. 1:11-cv-02964-RLV (N.D.
`Georgia), which concerns the [’707 Patent], its predecessor
`patent . . . , and the subject matter at issue in this proceeding.
`As trial counsel, [he has] been actively involved in all aspects
`of the district court litigation, including (1) Patent Owner’s
`factual investigation and development of its infringement
`
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`Case IPR2014-00358
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`positions; (2) Patent Owner’s factual investigation and
`development of its validity positions; (3) motion practice in the
`district court; and (4) overall strategy regarding litigation of the
`infringement and validity issues relating to the ’707 Patent. As
`trial counsel in this litigation, [and has] reviewed numerous
`treatises, articles, documents, and other information regarding
`the subject matter of the ’707 Patent.”
`
`Affidavit of Declaration of Jeffrey C. Morgan, Paper 7, 7-10. We also note
`that Patent Owner’s lead counsel in this proceeding, Kerry T. Hartman, is a
`registered practitioner. Paper 7, 2.
`Based on the facts set forth above, we conclude that Mr. Morgan has
`sufficient legal and technical qualifications to represent Patent Owner in this
`proceeding and that there is a need for Patent Owner to have counsel with
`experience as a litigation attorney in patent matters involved in this
`proceeding. Accordingly, Patent Owner has established good cause for
`Mr. Morgan’s pro hac vice admission. Mr. Morgan will be permitted to
`appear pro hac vice in this proceeding as back-up counsel only. See
`37 C.F.R. § 42.10(c).
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner’s motion for pro hac vice admission of
`Mr. Jeffrey C. Morgan is granted, and Mr. Morgan is authorized to represent
`Patent Owner as back-up counsel in the instant proceeding;
`FURTHER ORDERED that Patent Owner is to continue to have a
`registered practitioner as lead counsel in the instant proceeding;
`FURTHER ORDERED that Mr. Morgan comply with the Office
`Patent Trial Practice Guide and the Board’s Rules of Practice for Trials, as
`set forth in Title 37, Part 42, of the Code of Federal Regulations; and
`
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`Case IPR2014-00358
`Patent RE43,707 E
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`FURTHER ORDERED that Mr. Morgan is subject to the Office’s
`disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and to the USPTO
`Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq.
`
`PETITIONER:
`
`Marc K. Weinstein
`QUINN EMANUEL URQUHART & SULLIVAN LLP
`marcweinstein@quinnemanual.com
`
`
`PATENT OWNER:
`
`Kerry T. Hartman
`HARTMAN PATENTS PLLC
`khartman@hartmanpatents.com
`
`
`
`
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