`Tel: 571-272-7822
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`Paper 25
`Entered: October 2, 2015
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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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`NORMAN INTERNATIONAL, INC.
`Petitioner
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`v.
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`HUNTER DOUGLAS, INC.
`Patent Owner
`_______________
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`Case IPR2014-01175
`Patent 6,968,884
`_______________
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`GAUDETTE, Administrative Patent Judge.
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`DECISION
` Petitioner’s Unopposed Motion for
`Pro Hac Vice Admission of Douglas L. Sawyer
`37 C.F.R. § 42.10
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`Case IPR2014-01175
`Patent 6,968,884 B2
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`On September 28, 2015, Norman International, Inc. (“Petitioner”) filed an
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`Unopposed Motion for Pro Hac Vice Admission of Douglas L. Sawyer (Paper 24,
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`“Motion”), together with Mr. Sawyer’s Declaration in support thereof (Ex. 10151).
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`For the reasons provided below, the Motion is granted.
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`Before discussing the merits of Petitioner’s Motion, it is noted that the
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`Motion includes an updated exhibit list which was not filed as a separate
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`document. See Paper 24, 1–2. “[C]ombined documents are not permitted.” 37
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`C.F.R. §42.6(a)(3). Petitioner must file the updated exhibit list as a separate paper
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`in accordance with the requirements of 37 C.F.R. §42.6.
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`As set forth in 37 C.F.R. § 42.10(c), the Board may recognize counsel pro
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`hac vice during a proceeding upon a showing of good cause, subject to the
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`condition that lead counsel is a registered practitioner. For example, where the
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`lead counsel is a registered practitioner, a non-registered practitioner may be
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`permitted to appear pro hac vice “upon showing that counsel is an experienced
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`litigating attorney and has an established familiarity with the subject matter at issue
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`in the proceeding.” 37 C.F.R. § 42.10(c). In authorizing motions for pro hac vice
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`admission, we also require a statement of facts showing there is good cause for us
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`to recognize counsel pro hac vice and an affidavit or declaration of the individual
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`seeking to appear in this proceeding. See Paper 5 at 2 (referencing the “Order—
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`Authorizing Motion for Pro Hac Vice Admission” in Unified Patents).
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`Petitioner’s lead counsel, Bing Ai, is a registered practitioner. Paper 2.
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`Petitioner states that there is good cause for the Board to recognize Mr. Sawyer pro
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`1 Exhibit 1015 is titled “Affidavit of Douglas L. Sawyer,” but is in the form of a
`declaration. See 37 C.F.R. § 1.68.
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` 2
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`Case IPR2014-01175
`Patent 6,968,884 B2
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`hac vice, because Mr. Sawyer is: (1) experienced in litigating patent cases; and (2)
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`familiar with the subject matter at issue in this proceeding by virtue of the fact that
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`he is lead counsel for Petitioner in the co-pending litigation, Hunter Douglas, Inc.
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`v. Nien Made Enterprise Co., Ltd., Case No. 1:13-cv-01412-MSK-MJW (D.
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`Colo.), involving the challenged patent in this proceeding. Paper 24, 3–4.
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`Petitioner provides facts in support of these contentions (see id.), and Mr. Sawyer
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`attests to these facts in his Declaration (see Ex. 1015).
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`Mr. Sawyer testifies that he has more than thirteen years of experience
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`representing clients in patent cases, and has “represented clients in many phases of
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`litigation including discovery, Markman hearings, jury trials, and appeals.” Ex.
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`1015 ¶ 8. Mr. Sawyer testifies that , by virtue of his involvement as lead counsel
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`in the co-pending litigation, he is “familiar with the technologies, specific designs
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`and issued claims in the 884 Patent.” Id. at ¶ 10. Mr. Sawyer further testifies that
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`“he is familiar with the prior art references cited” in the present inter partes
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`review. Id. Mr. Sawyer also testifies that he previously applied for and was
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`granted pro hac vice admission to appear before the Board in IPR2014-00283. Id.
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`at ¶ 7.
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`Based on the facts set forth above, we conclude Mr. Sawyer has sufficient
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`legal and technical qualifications to represent Petitioner in this proceeding.
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`Accordingly, Petitioner has established good cause for Mr. Sawyer’s pro hac vice
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`admission. Mr. Sawyer will be permitted to appear pro hac vice in the instant
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`proceeding as back-up counsel only. See 37 C.F.R. § 42.10(c).
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`For the forgoing reasons, it is
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`ORDERED that Petitioner’s Unopposed Motion for Pro Hac Vice
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`Case IPR2014-01175
`Patent 6,968,884 B2
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`Admission of Mr. Sawyer for this proceeding is GRANTED;
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`FURTHER ORDERED that Petitioner is to continue to have a registered
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`practitioner represent it as lead counsel for this proceeding;
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`FURTHER ORDERED that Mr. Sawyer is to comply with the Office Patent
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`Trial Practice Guide and the Board’s Rules of Practice for Trials, as set forth in
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`Part 42 of Section 37 of the C.F.R., and to be subject to the Office’s Code of
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`Professional Responsibility set forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary
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`jurisdiction under 37 C.F.R. § 11.19(a); and
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`FURTHER ORDERED that Petitioner file its updated exhibit list as a
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`separate paper in accordance with the requirements of 37 C.F.R. §42.6.
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`PETITIONER:
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`Bing Ai
`Ai-ptab@perkinscoie.com
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`Kourtney Mueller Merrill
`KMerrill@perkinscoie.com
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`PATENT OWNER:
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`Kristopher Reed
`HD-Norman-IPR@kilpatricktownsend.com
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`Darin Gibby
`dgibby@kilpatricktownsend.com
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