`Entered: June 17, 2014
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`MERCEDES-BENZ USA, LLC
`Petitioner,
`
`v.
`
`AMERICAN VEHICULAR SCIENCES LLC
`Patent Owner.
`____________
`
`Case IPR2014-00646
`Patent 6,772,057
`____________
`
`
`Before JAMESON LEE, MICHAEL W. KIM, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`DECISION
`Petitioner’s Motion for Pro Hac Vice Admission of Jonathan R. DeFosse
`37 C.F.R. § 42.10
`
`On June 3, 2014, Petitioner filed a motion for pro hac vice admission of
`
`
`
`Mr. Jonathan R. DeFosse (Paper 6). Patent Owner did not file an opposition.
`
`
`
`The Board may recognize counsel pro hac vice during a proceeding upon a
`
`showing of good cause, subject to the condition that lead counsel is a registered
`
`
`
`IPR2014-00646
`Patent 6,772,057
`
`
`
`
`
`
`practitioner. 37 C.F.R. § 42.10(c). If 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. Id.
`
`
`
`In this proceeding, lead counsel for Petitioner is Scott W. Doyle, a registered
`
`practitioner. Petitioner’s motion relies on a declaration of Jonathan R. DeFosse
`
`(Ex. 1019). Mr. DeFosse declares that he is a member in good standing of the Bar
`
`of Virginia and the Bar of the District of Columbia. Ex. 1019 ¶ 1. Mr. DeFosse
`
`also declares that he has never been suspended, disbarred, sanctioned or cited for
`
`contempt by any court or administrative body, and that he has never had an
`
`application for admission to practice denied by any court or administrative body.
`
`Ex. 1019 ¶¶ 2-4. Mr. DeFosse further declares that he is familiar with the subject
`
`matter at issue in this proceeding based on his work as counsel for Petitioner in the
`
`related district court litigation between the parties involving Patent 6,772,057:
`
`American Vehicular Sciences LLC v. Mercedes-Benz U.S. Int’l., Inc., et al., No.
`
`13-cv-00309 (E.D. Tex.). Ex. 1019 ¶ 8.
`
`
`
`Mr. DeFosse further states (1) that he has read and will comply with the
`
`Board’s Rules of Practice for Trials as set forth in Part 42 of Title 37, Code of
`
`Federal Regulations, as well as the Office Patent Trial Practice Guide, and (2) that
`
`he agrees to be subject to the United States Patent and Trademark Office 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). Ex. 1019 ¶¶ 5-6.
`
`
`
`Based on the foregoing, we determine that Petitioner has established good
`
`cause for admission, pro hac vice, of Mr. Jonathan R. DeFosse.
`
`
`
`2
`
`
`
`
`IPR2014-00646
`Patent 6,772,057
`
`It is
`
`
`
`
`
`ORDERED that Petitioner’s motion for pro hac vice admission of Jonathan
`
`
`
`
`
`
`
`R. DeFosse for these proceedings is granted;
`
`FURTHER ORDERED that Mr. DeFosse is authorized to represent
`
`Petitioner only as back-up counsel; and
`
`FURTHER ORDERED that Mr. DeFosse is subject to the USPTO’s Rules
`
`of Professional Conduct as set forth in 37 C.F.R. §§ 11.101 et seq. and to the
`
`USPTO’s disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
`
`
`
`3
`
`
`
`
`
`
`FOR PETITIONER:
`
`Scott W. Doyle
`Scott.Doyle@shearman.com
`
`
`
`FOR PATENT OWNER:
`
`Scott P. McBride
`Thomas J. Wimbiscus
`Christopher Scharff
`smcbride@mcandrews-ip.com
`twimbiscus@mcandrews-ip.com
`cscharff@mcandrews-ip.com