`Date: September 22, 2016
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`
`
`
`
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________
`
`Case IPR2015-01979
`Patent 8,141,154 B2
`____________
`
`
`Before, THOMAS L. GIANNETTI, RICHARD E. RICE, and
`MIRIAM L. QUINN Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Denying Petitioner’s Motion for Admission Pro Hac Vice
`37 C.F.R. § 42.10
`
`
`
`
`
`
`
`IPR2015-01979
`Patent 8,141,154 B2
`
`
`Petitioner filed a motion for pro hac vice admission of Mr. Peter Sauer.
`
`Paper 24. We require that a party seeking admission pro hac vice proffer a
`
`statement of facts showing good cause. See Unified Patents v. Parallel Iron,
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`Case IPR2013-00639 (PTAB Oct. 15, 2013) (setting forth the requirements for pro
`
`hac vice admission) (Paper 7). The present motion and attached affidavit,
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`however, do not satisfy that requirement.
`
`Pro hac vice admission is necessary for Back-Up counsel who will conduct
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`business with the Office on behalf of Lead Counsel when Lead Counsel is not
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`available. 77 Fed. Reg. 48758. Also, pro hac vice admission is necessary for an
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`attorney who is neither Lead nor Back-Up Counsel, but who desires to take or
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`defend a deposition of a witness in AIA proceedings. Id.; see also Frequently
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`Asked Questions (FAQs), Question G11, accessible at
`
`http://www.uspto.gov/patents-application-process/appealing-patent-
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`decisions/trials/patent-review-processing-system-prps-0. There are many other
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`reasons additional counsel may be desired, such as, for example, complexity of the
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`proceeding, schedule conflicts, or prior experience in the underlying patent
`
`litigation.
`
`Petitioner alludes to good cause being met merely by experience in litigation
`
`and familiarity with the proceeding. Paper 24, 1. These are attestations required in
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`the affidavit. But they do not constitute, alone, a statement of facts showing good
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`cause. See Unified Patents (listing separately the statement of facts requirement
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`from the affidavit requirement). At best, Petitioner shows Mr. Sauer may be
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`qualified. We find, however, that neither Mr. Sauer’s affidavit nor the motion
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`shows either a general or specific need for Petitioner to have this particular counsel
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`admitted. We also consider that, in addition to the Lead Counsel, there are a total
`
`of three Back-Up Counsel already enlisted in this proceeding.
`
`2
`
`
`
`
`IPR2015-01979
`Patent 8,141,154 B2
`
`
`The Motion is hereby denied without prejudice to refiling.
`
`It is
`
`Order
`
`ORDERED that Petitioner’s Motion for pro hac vice admission of Mr. Peter
`
`Sauer is denied.
`
`
`
`
`
`
`
`3
`
`
`
`
`IPR2015-01979
`Patent 8,141,154 B2
`
`
`
`
`
`PETITIONER:
`Orion Armon (Lead Counsel)
`Christopher Max Colice (Back-up Counsel)
`Jennifer Volk (Back-up Counsel)
`Brian Eutermoser (Back-up Counsel)
`oarmon@cooley.com
`mcolice@cooley.com
`jvolkfortier@cooley.com
`beutermoser@cooley.com
`
`
`
`PATENT OWNER:
`
`James Hannah (Lead Counsel)
`Jeffrey H. Price (Back-up Counsel)
`Michael Kim (Back-up Counsel)
`jhannah@kramerlevin.com
`jprice@kramerlevin.com
`mkim@finjan.com
`
`
`
`4
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