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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`
`ARTSANA USA, INC.
`Petitioner
`
`v.
`
`KOLCRAFT ENTERPRISES, INC.
`Patent Owner
`
`____________________
`
`
`Case IPR2014-01053
`Patent 8,388,501
`
`____________________
`
`
`
`
`Before JAMES T. MOORE, Administrative Patent Judge.
`
`
`
`KOLCRAFT ENTERPRISES, INC. MOTION FOR PRO HAC VICE
`ADMISSION OF RAYMOND P. NIRO, JR.
`
`
`
`
`I.
`
`
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`RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. § 42.10(c), Patent Owner Kolcraft Enterprises, Inc.
`
`(“Kolcraft”), by and through its attorneys, respectfully requests that the Board
`
`admit Raymond P. Niro, Jr. pro hac vice in this proceeding.
`
`II. GOVERNING LAW, RULES, AND PRECEDENT
`
`
`
`37 C.F.R. § 42.10(c) states as follows:
`
`The Board 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. For example, where the lead counsel is a
`registered practitioner, a motion to appear pro hac vice by counsel
`who is not a registered practitioner may be granted upon showing that
`counsel is an experienced litigating attorney and has an established
`familiarity with the subject matter at issue in the proceeding.
`
`Further, the Board requires that a motion for pro hac vice admission be filed
`
`in accordance with the “Order – Authorizing Motion for Pro Hac Vice Admission”
`
`in Case IPR2013-00639, Paper 7 (“Representative Order”). The Representative
`
`Order states that the motion must “[c]ontain a statement of facts showing there is
`
`good cause for the Board to recognize counsel pro hac vice during the
`
`proceedings,” and “[b]e accompanied by an affidavit or declaration of the
`
`individual seeking to appear attesting to the following:”
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`- 1 -
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`
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`i. Membership in good standing of the Bar of at least one State or
`
`the District of Columbia;
`
`ii. No suspensions or disbarments from practice before any court
`
`or administrative body;
`
`iii. No application for admission to practice before any court or
`
`administrative body ever denied;
`
`iv. No sanctions or contempt citations imposed by any court or
`
`administrative body;
`
`v.
`
`The individual seeking to appear 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.;
`
`vi. The individual will be subject to the USPTO 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);
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`vii. All other proceedings before the Office for which the individual
`
`has applied to appear pro hac vice in the last three (3) years;
`
`and
`
`viii. Familiarity with the subject matter at issue in the proceeding.
`
`
`
`
`
`- 2 -
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`
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`III. STATEMENT OF FACTS
`
`
`
`Based on the following statement of facts, and supported by the Declaration
`
`of Raymond P. Niro, Jr. submitted herewith, Kolcraft submits that a showing of
`
`good cause has been made and respectfully requests the pro hac vice admission of
`
`Raymond P. Niro, Jr. in this proceeding:
`
`1.
`
`Patent Owner’s lead counsel, Robert A. Conley, is a registered
`
`practitioner (Reg. No. 55,846).
`
`2.
`
`Patent Owner’s backup counsel, Brian E. Haan, is a registered
`
`practitioner (Reg. No. 62,567).
`
`3. Mr. Niro is a partner at the law firm of Niro, Haller & Niro, Ltd.
`
`Declaration of Raymond P. Niro, Jr. in Support of Motion for Pro
`
`Hac Vice Admission in IPR2014-01053.
`
`4. Mr. Niro is an experienced intellectual property litigation attorney,
`
`and particularly, patent litigation, with over twenty-two years of
`
`experience and has litigated over 100 intellectual property cases. Id.
`
`at ¶8.
`
`5. Mr. Niro is a member in good standing of the Illinois State Bar. Id. at
`
`¶1.
`
`6. Mr. Niro has never been suspended or disbarred from practice before
`
`any court or administrative body. Id. at ¶2.
`
`- 3 -
`
`
`
`7.
`
`No application filed by Mr. Niro for admission to practice before any
`
`court or administrative body has ever been denied. Id. at ¶3.
`
`8.
`
`No sanctions or contempt citations have been imposed against Mr.
`
`Niro by any court or administrative body. Id. at ¶4.
`
`9. Mr. Niro has read and agrees to 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 C.F.R. Id. at ¶5.
`
`10. Mr. Niro understands that he will be subject to the United States
`
`Patent and Trademark Office 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. at ¶6.
`
`11. Mr. Niro has sought pro hac vice admission in one other proceeding
`
`before the Board within the last three (3) years. Specifically, Mr. Niro
`
`sought to appear pro hac vice in Inter Partes Reexamination Control
`
`No. 95/000,514, on September 30, 2013, to represent Kolcraft
`
`Enterprises, Inc. in the oral hearing in that proceeding. Mr. Niro has
`
`not applied to appear pro hac vice in any other proceeding(s), other
`
`than the instant proceeding and Inter Partes Reexamination Control
`
`- 4 -
`
`
`
`No. 95/000,514, before the United States Patent and Trademark Office
`
`in the last three (3) years. Id. at ¶71.
`
`12.
`
` Mr. Niro has an established familiarity with the subject matter at
`
`issue in this proceeding. U.S. Patent No. 8,388,501, the patent at
`
`issue in this proceeding, is currently being asserted by Kolcraft
`
`against Petitioner Artsana in a co-pending litigation, Kolcraft
`
`Enterprises, Inc. v. Artsana USA, Inc. and Artsana, Civil Action No.
`
`1:13-cv-04863, (N.D. Ill., Filed July 8, 2013), and U.S. Patent No.
`
`7,376,993 (the parent patent) is being asserted by Kolcraft against
`
`Petitioner Artsana (d/b/a Chicco USA, Inc.) in another co-pending
`
`litigation, Kolcraft Enterprises, Inc. v. Graco Children’s Products Inc.
`
`and Chicco USA, Inc., Civil Action No. 1:09-cv-03339, (N.D. Ill.,
`
`Filed June 3, 2009) (collectively “the co-pending litigations”). Mr.
`
`Niro is counsel for Kolcraft in the co-pending litigations against
`
`Petitioner and has engaged closely in various aspects of the case for
`
`
`1 The petition for admission pro hac vice in Inter Partes Reexamination Control
`No. 95/000,514 was denied based on different standards used in Inter Partes
`Reexamination and because the petition was submitted after the written record had
`been developed without Mr. Niro’s participation and oral arguments in those
`proceedings were limited to the written record. See Decision on Petition in Inter
`Partes Reexamination Control No. 95/000,514, October 18, 2013 at 5.
`
`
`
`
`
`- 5 -
`
`
`
`several years including depositions, analysis and investigation of the
`
`prior art that defendants have asserted against U.S. Patent No.
`
`8,388,501. As a result, Mr. Niro has acquired substantial
`
`understanding of the underlying legal and technological issues at stake
`
`in this proceeding. Petitioner has raised similar invalidity arguments
`
`in the co-pending litigations as in this proceeding. Patent Owner
`
`Kolcraft has expended significant time and resources with Mr. Niro, a
`
`counsel in the co-pending litigations, and wishes to continue using
`
`Mr. Niro as counsel in this proceeding. Niro Dec., at ¶8.
`
`IV. GOOD CAUSE EXISTS FOR PRO HAC VICE ADMISSION OF
`RAYMOND P. NIRO, JR.
`
`The facts outlined in the Statement of Facts, and contained in the
`
`
`
`
`Declaration of Raymond P. Niro, Jr., establish that there is good cause to admit Mr.
`
`Niro pro hac vice in this proceeding under 37 C.F.R. § 42.10. Patent Owner’s lead
`
`counsel is a registered practitioner. As supported by Mr. Niro’s declaration, Mr.
`
`Niro is an experienced litigation attorney with twenty-two years of intellectual
`
`property litigation experience. Mr. Niro has an established familiarity with the
`
`subject matter at issue, being that he is a trial counsel for Patent Owner Kolcraft
`
`against Petitioner Artsana in the co-pending litigations, which involve U.S. Patent
`
`No. 8,388,501 and its parent patent, U.S. Patent No. 7,376,993, and similar
`
`invalidity arguments as in this proceeding.
`
`- 6 -
`
`
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`V. CONCLUSION
`
`
`
`In light of the foregoing, Patent Owner Kolcraft respectfully requests that
`
`the Board admit Raymond P. Niro, Jr. pro hac vice in this proceeding.
`
`
`
`
`
`
`
`Dated: July 30, 2014
`
`
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`
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`Respectfully submitted,
`
`
`/Robert A. Conley/
`
`Robert A. Conley (Reg. No. 55,846)
`Brian E. Haan (Reg. No. 62,567)
`NIRO, HALLER & NIRO
`181 West Madison, Suite 4600
`Chicago, IL 60602
`Phone: (312) 236-0733
`Fax: (312) 236-3137
`Email: RConley@nshn.com;
`BHaan@nshn.com
`
`Attorneys for Patent Owner
`
`- 7 -
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR § 42.6(e), the undersigned hereby certifies that on July 30,
`2014 the foregoing KOLCRAFT ENTERPRISES, INC. MOTION FOR PRO HAC
`VICE ADMISSION OF RAYMOND P. NIRO, JR. and DECLARATION OF
`RAYMOND P. NIRO, JR. were filed electronically via the Patent Review
`Processing System and served via electronic transmission on the following, as
`agreed to by Petitioner's Service Information Under 37 C.F.R. § 42.8(b)(4) in the
`June 27, 2014 Petition:
`
`Anthony S. Volpe, Reg. No. 28,377
`Ryan W. O'Donnell, Reg. No. 53,401
`Volpe and Koenig, P.C.
`30 South 17th Street, Suite 1800
`Philadelphia, PA 19103-4009
`Telephone: (215) 568-6400
`Facsimile: (215) 568-6499
`Email:
`patents@vklaw.com
`
`avolpe@vklaw.com
`
`rodonnell@vklaw.com
`
`Dated: July 30, 2014
`
`
`
`
`
`
`
`/Robert A. Conley/
`
`Robert A. Conley (Reg. No. 55,846)
`Brian E. Haan (Reg. No. 62,567)
`NIRO, HALLER & NIRO
`181 West Madison, Suite 4600
`Chicago, IL 60602
`Phone: (312) 236-0733
`Fax: (312) 236-3137
`Email: RConley@nshn.com;
`BHaan@nshn.com
`
`Attorneys for Patent Owner
`
`
`
`
`
`
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