`571-272-7822
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` Paper No. 9
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`Entered: August 4, 2014
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`
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`McCLINTON ENERGY GROUP, LLC, JAYCAR ENERGY GROUP LLC,
`SURF FRAC WELLHEAD EQUIPMENT CO., MOTOR MILLS SNUBBING
`LLC, STAN KEELING, and TONY D. McCLINTON,
`Petitioner,
`
`v.
`
`MAGNUM OIL TOOLS INTERNATIONAL, LTD.,
`Patent Owner.
`____________
`
`Case IPR2014-00993
`Patent 8,459,346 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, MICHAEL R. ZECHER, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`
`MEDLEY, Administrative Patent Judge.
`
`
`DECISION
`Motion for Pro Hac Vice Admission
`37 C.F.R. § 42.10
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`On July 15, 2014, Petitioner filed a motion for pro hac vice admission of Mr.
`
`
`
`
`
`Case IPR2014-00993
`Patent 8,459,346 B2
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`Robert J. Barz. Paper 8. The motion is unopposed.1 For the reasons provided
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`below, Petitioner’s motion is granted.
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`Pursuant to 37 C.F.R. § 42.10(c), the Board may recognize counsel pro hac
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`vice during a proceeding upon a showing of good cause, subject to the condition
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`that lead counsel be a registered practitioner. In authorizing motions for pro hac
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`vice admission, the Board requires the moving party to provide a statement of facts
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`showing good cause for the Board to recognize counsel pro hac vice and an
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`affidavit or declaration of the individual seeking to appear in this proceeding.
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`Paper 4, Notice of Filing Date Accorded to Petition, 3 (incorporating requirements
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`in the “Order – Authorizing Motion for Pro Hac Vice Admission” in IPR2013-
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`00639).
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`In this proceeding, lead counsel for Petitioner, Mr. Jason Engel, is a
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`registered practitioner. Petitioner’s motion indicates that there is good cause for
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`the Board to recognize Mr. Barz pro hac vice during this proceeding, and is
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`supported by the declaration of Mr. Barz. Ex. 1028.
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`In particular, the motion explains that Mr. Barz is an experienced litigating
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`attorney, and Mr. Barz declares that he has an established familiarity with the
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`subject matter at issue in this proceeding, as he is counsel for Petitioner in a related
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`district case between the Petitioner and Patent Owner involving the same patent in
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`this proceeding. Paper 8, 1; Ex. 1028, ¶ 8.
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`Upon consideration, Petitioner has demonstrated that Mr. Barz possesses
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`
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`1 Patent Owner did not file an opposition within one week from the filing of
`Petitioner’s motion.
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`2
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`
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`Case IPR2014-00993
`Patent 8,459,346 B2
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`sufficient legal and technical qualifications to represent Petitioner in this
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`proceeding, and the Board recognizes that there is a need for Petitioner to have
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`related litigation counsel involved. Accordingly, Petitioner has established good
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`cause for Mr. Barz’s admission. Mr. Barz will be permitted to appear pro hac vice
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`in this proceeding as back-up counsel only. See 37 C.F.R. § 42.10(c).
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`For the foregoing reasons, it is
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`ORDERED that Petitioner’s motion for pro hac vice admission of Mr.
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`Robert J. Barz is granted;
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`FURTHER ORDERED that Mr. Robert J. Barz is authorized to represent
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`Petitioner as back-up counsel only;
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`FURTHER ORDERED that Petitioner is to continue to have a registered
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`practitioner represent Petitioner as lead counsel for this proceeding; and
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`FURTHER ORDERED that Mr. Robert J. Barz is to comply with the Office
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`Patent Trial Practice Guide and the Board’s Rules of Practice for Trials, as set forth
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`in Part 42 of Title 37, Code of Federal Regulations, and to be subject to the
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`Office’s disciplinary jurisdiction under 37 C.F.R. § 11.19(a) and the USPTO Rules
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`of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq.
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`3
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`Case IPR2014-00993
`Patent 8,459,346 B2
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`PETITIONERS:
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`Jason A. Engel
`K&L GATES LLP
`jason.engel@klgates.com
`
`PATENT OWNER:
`
`Robb D. Edmonds
`John D. Holman
`EDMONDS & NOLTE, PC
`redmonds@edmondsnolte.com
`jholman@edmondsnolte.com
`
`
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`
`
`4
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`