`571-272-7822
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` Paper No. 6
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`Entered: August 6, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`UNIVERSAL REMOTE CONTROL, INC.,
`Petitioner,
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`v.
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`UNIVERSAL ELECTRONICS, INC.,
`Patent Owner.
`____________
`
`Cases IPR2014-01104
`Patent 5,414,761
`____________
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`
`
`Before SALLY C. MEDLEY, Administrative Patent Judge.
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`
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`DECISION
`Motion for Pro Hac Vice Admission
`37 C.F.R. § 42.10
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`On July 22, 2014, Patent Owner filed a motion for pro hac vice admission of
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`Mr. Matthew J. Levinstein. Paper 5. The motion is unopposed.1 For the reasons
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`provided below, Patent Owner’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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`
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`1 Petitioner did not file an opposition within one week from the filing of Patent
`Owner’s motion.
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`Case IPR2014-01104
`Patent 5,414,761
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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 3, 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 Patent Owner, Mr. Eric J. Maiers, is a
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`registered practitioner. Patent Owner’s motion indicates that there is good cause
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`for the Board to recognize Mr. Levinstein pro hac vice during this proceeding, and
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`is supported by the declaration of Mr. Levinstein. Ex. 2001.
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`In particular, the motion explains that Mr. Levinstein is an experienced
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`litigating attorney, and Mr. Levinstein declares that he has an established
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`familiarity with the subject matter at issue in this proceeding, as he was counsel for
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`Patent Owner in a related district case between the Petitioner and Patent Owner
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`involving many of the same patents involved in this, or other related, inter partes
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`reviews. Paper 5, 3-5; Ex. 2001, ¶ 13.
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`Upon consideration, Patent Owner has demonstrated that Mr. Levinstein
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`possesses sufficient legal and technical qualifications to represent Patent Owner in
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`this proceeding, and the Board recognizes that there is a need for Patent Owner to
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`have related litigation counsel involved. Accordingly, Patent Owner has
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`established good cause for Mr. Levinstein’s admission. Mr. Levinstein will be
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`permitted to appear pro hac vice in this proceeding as back-up counsel only. See
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`2
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`Case IPR2014-01104
`Patent 5,414,761
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`37 C.F.R. § 42.10(c).
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`For the foregoing reasons, it is
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`ORDERED that Patent Owner’s motion for pro hac vice admission of
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`Mr. Matthew J. Levinstein is granted;
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`FURTHER ORDERED that Mr. Matthew J. Levinstein is authorized to
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`represent Patent Owner as back-up counsel only;
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`FURTHER ORDERED that Patent Owner is to continue to have a registered
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`practitioner represent Patent Owner as lead counsel for this proceeding; and
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`FURTHER ORDERED that Mr. Matthew J. Levinstein is to comply with
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`the Office Patent Trial Practice Guide and the Board’s Rules of Practice for Trials,
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`as set forth in Part 42 of Title 37, Code of Federal Regulations, and to be subject to
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`the Office’s disciplinary jurisdiction under 37 C.F.R. § 11.19(a) and the USPTO
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`Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq.
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`3
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`4
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`Case IPR2014-01104
`Patent 5,414,761
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`FOR PETITIONER:
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`Douglas Miro
`dmiro@ostrolenk.com
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`Peter Kang
`pkang@sidley.com
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`FOR PATENT OWNER:
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`Eric Maiers
`maierse@gtlaw.com
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`Michael Nicodema
`nicodema@gtlaw.com
`
`James Lukas
`lukasj@gtlaw.com
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`Robbie Harmer
`harmer@gtlaw.com
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