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Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
` Paper 25
`Entered: November 17, 2015
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`AT HOME BONDHOLDERS’ LIQUIDATING TRUST,
`Patent Owner.
`____________
`
`Case IPR2015-00657 (Patent 6,286,045 B1)
`Case IPR2015-00662 (Patent 6,014,698)1
`____________
`
`Before KARL D. EASTHOM, JUSTIN T. ARBES, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`DECISION
`Petitioner’s Motions for Pro Hac Vice Admission of Matthias A. Kamber
`37 C.F.R. § 42.10
`
`
`1 Case IPR2015-00660 has been consolidated with Case IPR2015-00657,
`and Case IPR2015-00666 has been consolidated with Case IPR2015-00662.
`This Decision addresses an issue pertaining to both cases. Therefore, we
`exercise our discretion to issue a single Decision to be filed in each case.
`The parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`

`
`IPR2015-00657 (Patent 6,286,045 B1)
`IPR2015-00662 (Patent 6,014,698)
`
`
`Petitioner filed a Motion requesting pro hac vice admission of
`
`Matthias A. Kamber in each of the instant proceedings, and provided an
`
`Affidavit from Mr. Kamber in support of each request. See IPR2015-00657,
`
`Paper 23, Ex. 1029; IPR2015-00662, Paper 21, Ex. 1029. Petitioner’s lead
`
`counsel, Michelle K. Holoubek, is a registered practitioner. Patent Owner
`
`did not file an opposition to either Motion. Based on the facts set forth in
`
`the Motions and Affidavits, we conclude that Petitioner has established good
`
`cause for Mr. Kamber’s pro hac vice admission. See 37 C.F.R. § 42.10(c);
`
`Unified Patents, Inc. v. Parallel Iron, LLC, Case IPR2013-00639, slip op. at
`
`3–4 (PTAB Oct. 15, 2013) (Paper 7) (setting forth the requirements for pro
`
`hac vice admission). We note, however, that although the documents are
`
`each titled “Affidavit,” they are in the form of a declaration and lack the
`
`affirmation required by 37 C.F.R. §§ 1.68 and 42.2.
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that Petitioner’s Motions for pro hac vice admission of
`
`Matthias A. Kamber are conditionally granted, and Mr. Kamber will be
`
`authorized to represent Petitioner as back-up counsel in the instant
`
`proceedings once Petitioner files, within one week of this Decision,
`
`a corrected Affidavit in each proceeding containing the same content as the
`
`original document and the required statements under 37 C.F.R. § 1.68, with
`
`no other changes;
`
`FURTHER ORDERED that Petitioner is to continue to have a
`
`registered practitioner as lead counsel in the instant proceedings;
`
`FURTHER ORDERED that Mr. Kamber is to comply with the Office
`
`Patent Trial Practice Guide and the Board’s Rules of Practice for Trials, as
`
`set forth in Title 37, Part 42 of the Code of Federal Regulations; and
`
`
`
`2
`
`

`
`IPR2015-00657 (Patent 6,286,045 B1)
`IPR2015-00662 (Patent 6,014,698)
`
`
`FURTHER ORDERED that Mr. Kamber is subject to the USPTO
`
`Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101–11.901 and
`
`the Office’s disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
`
`
`
`3
`
`

`
`IPR2015-00657 (Patent 6,286,045 B1)
`IPR2015-00662 (Patent 6,014,698)
`
`PETITIONER:
`
`Michelle K. Holoubek
`Michael V. Messinger
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`mholoubek-PTAB@skgf.com
`mikem-PTAB@skgf.com
`
`
`
`PATENT OWNER:
`
`Garland Stephens
`Justin Constant
`WEIL, GOTSHAL & MANGES LLP
`garland.stephens@weil.com
`justin.constant@weil.com
`
`
`
`
`4

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