Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 17
`Date: September 25, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`GOOGLE INC., SAMSUNG TELECOMMUNICATIONS
`AMERICA, LLC, SAMSUNG ELECTRONICS AMERICA, INC.,
`and SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`MICROGRAFX, LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-00532 (Patent 5,959,633)
`Case IPR2014-00533 (Patent 6,057,854)
`Case IPR2014-00534 (Patent 6,552,732 B1)1
`
`_______________
`
`
`
`Before SALLY C. MEDLEY, RICHARD E. RICE, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`RICE, Administrative Patent Judge.
`
`
`
`DECISION
`Motion for Pro Hac Vice Admission
`37 C.F.R. § 42.10
`
`
`1 We exercise our discretion to issue one Order to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`571-272-7822
`
`
`
`
`
`
`Paper 17
`Date: September 25, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`GOOGLE INC., SAMSUNG TELECOMMUNICATIONS
`AMERICA, LLC, SAMSUNG ELECTRONICS AMERICA, INC.,
`and SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`MICROGRAFX, LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-00532 (Patent 5,959,633)
`Case IPR2014-00533 (Patent 6,057,854)
`Case IPR2014-00534 (Patent 6,552,732 B1)1
`
`_______________
`
`
`
`Before SALLY C. MEDLEY, RICHARD E. RICE, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`RICE, Administrative Patent Judge.
`
`
`
`DECISION
`Motion for Pro Hac Vice Admission
`37 C.F.R. § 42.10
`
`
`1 We exercise our discretion to issue one Order to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`Case IPR2014-00532 (Patent 5,959,633)
`Case IPR2014-00533 (Patent 6,057,854)
`Case IPR2014-00534 (Patent 6,552,732 B1)
`
`
`Petitioner filed a similar motion for pro hac vice admission of Mr.
`
`
`
`
`David S. Almeling in each of Cases IPR2014-00532, IPR2014-00533, and
`
`IPR2014-00534. See, e.g., IPR2014-00532, Paper 16. Patent Owner did not
`
`file an opposition to any of the motions. For the reasons provided below,
`
`each of Petitioner’s motions is conditionally 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). In the
`
`Notice of Filing Date Accorded to Petition filed in each of these
`
`proceedings, the Board previously authorized the parties to file a motion for
`
`pro hac vice admission, requiring that the moving party provide 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
`
`the proceeding, attesting to, inter alia, (i) familiarity with the subject matter
`
`at issue in the proceeding and (ii) all proceedings before the Office for which
`
`the individual has applied to appear pro hac vice in the last three years. See,
`
`e.g., IPR2014-00532, Paper 6, 2 (citing Unified Patents, Inc. v. Parallel
`
`Iron, LLC, IPR2013-00639 (PTAB October 15, 2013) (Paper 7)).
`
`In the motion filed in each of these proceedings, Petitioner states that
`
`there is good cause for the Board to recognize Mr. Almeling pro hac vice,
`
`because he represents Petitioner in the related district court litigations
`
`involving the same patent at issue in the inter partes review. See, e.g.,
`
`2
`
`
`
`
`Case IPR2014-00532 (Patent 5,959,633)
`Case IPR2014-00533 (Patent 6,057,854)
`Case IPR2014-00534 (Patent 6,552,732 B1)
`
`
`IPR2014-00532, Paper 16, 1–2. Petitioner argues that Mr. Almeling has a
`
`
`
`detailed understanding of the subject patent and the substantive and
`
`technical issues involved in the inter partes review, and wishes to have him
`
`represent Petitioner before the Board. Id. at 2–6.
`
`Mr. Almeling made a declaration attesting to, and explaining, these
`
`facts. See, e.g., IPR2014-00532, Ex. 1009. Mr. Almeling declares that 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 Title 37 of the
`
`Code of Federal Regulations, and agrees to be subject to the USPTO Code
`
`of Professional Responsibility set forth in 37 C.F.R. §§ 11.101 et seq. and
`
`disciplinary jurisdiction under 37 C.F.R. § 11.19(a). Id. ¶¶ 11–12. We are
`
`satisfied that Mr. Almeling is familiar with the subject matter at issue in
`
`these proceedings and otherwise qualified to appear pro hac vice, except that
`
`we are unclear whether Mr. Almeling’s declaration attests to all proceedings
`
`before the Office for which Mr. Almeling has applied to appear pro hac vice
`
`in the last three years.
`
`Upon consideration, the Board recognizes that there is a legitimate
`
`need for Petitioner to have related litigation counsel involved in these inter
`
`partes reviews. With the noted exception, Petitioner has demonstrated to us
`
`that Mr. Almeling has sufficient legal and technical qualifications to
`
`represent Petitioner in these proceedings, and has established that there is
`
`good cause for Mr. Almeling’s admission. On the presumption that Mr.
`
`Ameling files, within one week of the posting of this decision, a declaration
`
`attesting to all proceedings before the Office for which Mr. Almeling has
`
`applied to appear pro hac vice in the last three years, Mr. Almeling will be
`
`3
`
`
`
`
`Case IPR2014-00532 (Patent 5,959,633)
`Case IPR2014-00533 (Patent 6,057,854)
`Case IPR2014-00534 (Patent 6,552,732 B1)
`
`
`permitted to appear pro hac vice in each of these proceedings as back-up
`
`
`
`counsel only. See 37 C.F.R. § 42.10(c) and FAQ F12 on the Board’s
`
`website (http://www.uspto.gov/ip/boards/bpai/prps.jsp).
`
`
`
`For the foregoing reasons, it is
`
`ORDERED that each of Petitioner’s motions, in Cases IPR2014-
`
`00532, IPR2014-00533, and IPR2014-00534, for pro hac vice admission of
`
`Mr. Robert A. Almeling is granted conditionally, subject to filing, within
`
`one week of the posting of this decision, a declaration attesting to all
`
`proceedings before the Office for which Mr. Almeling has applied to appear
`
`pro hac vice in the last three years;
`
`FURTHER ORDERED that upon satisfaction of the above-specified
`
`condition, Mr. Almeling is authorized to represent Petitioner in each of these
`
`proceedings as back-up counsel only;
`
`FURTHER ORDERED that Petitioner is to continue to have a
`
`registered practitioner represent it as lead counsel for each of these
`
`proceedings; and
`
`
`
`FURTHER ORDERED that Mr. Almeling 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
`
`
`
`
`Case IPR2014-00532 (Patent 5,959,633)
`Case IPR2014-00533 (Patent 6,057,854)
`Case IPR2014-00534 (Patent 6,552,732 B1)
`
`
`For PETITIONER:
`
`
`
`5
`
`
`
`John Phillips
`phillips@fr.com
`
`Michael Hawkins
`Hawkins@fr.com
`IPR19473-0309IP1@fr.com
`
`
`
`For PATENT OWNER
`
`Douglas Wilson
`dwilson@hpcllp.com
`
`Michael Heim
`mheim@hpcllp.com
`
`Nathan Davis
`ndavis@hpcllp.com
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