`571.272.7822
`
`Paper 18
`Entered: February 25, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ANCESTRY.COM DNA, LLC,
`Petitioner,
`
`v.
`
`DNA GENOTEK INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00060
`Patent 8,221,381 B2
`____________
`
`
`
`Before WILLIAM V. SAINDON, HYUN J. JUNG, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`WORMMEESTER, Administrative Patent Judge.
`
`ORDER
`Decision Granting Motion for Pro Hac Vice Admission of
`Michael J. Sacksteder
`37 C.F.R. § 42.10
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2016-00060
`Patent 8,221,381 B2
`
`
`
`
`
`
`
`
`Petitioner has filed a motion for pro hac vice admission of Michael J.
`Sacksteder in this proceeding. Paper 14. The motion is supported by an
`affidavit of Mr. Sacksteder. Ex. 1020.
`The Board has reviewed the submissions and determined that the
`requirements of 37 C.F.R. § 42.10 have been met and there is good cause to
`admit Mr. Sacksteder pro hac vice.1
`
`
`ORDER
`
`
`
`It is therefore
`ORDERED that Petitioner’s motion for pro hac vice admission of
`Michael J. Sacksteder in this proceeding is granted;
`FURTHER ORDERED that Mr. Sacksteder is authorized to appear as
`back-up counsel for Petitioner in this proceeding, but Mr. Sacksteder may
`not act as lead counsel;
`FURTHER ORDERED that Petitioner is to continue to have a
`registered practitioner represent it as lead counsel for this proceeding;
`FURTHER ORDERED that Mr. Sacksteder is to comply with the
`Office Patent Trial Practice Guide and the Board’s Rules of Practice for
`Trials, as set forth in Part 42 of Title 37, Code of Federal Regulations;
`
`
`1 According to the “Order -- Authorizing Motion for Pro Hac Vice
`Admission” in Case IPR2013-00639, Paper 7, Mr. Sacksteder’s affidavit
`must provide a statement acknowledging that he 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. In his affidavit, Mr. Sacksteder
`incorrectly cites part 42 of “the C.F.R.” with respect to the Board’s Rules of
`Practice for Trials. Pursuant to this order, by appearing pro hac vice in this
`case Mr. Sacksteder agrees to comply with the Board’s Rules of Practice for
`Trials set forth in part 42 of 37 C.F.R.
`
`2
`
`
`
`Case IPR2016-00060
`Patent 8,221,381 B2
`
`
`
`
`
`
`
`
`FURTHER ORDERED that Mr. Sacksteder is subject to the Office’s
`disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and the USPTO Rules
`of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq.; and
`FURTHER ORDERED that Petitioner shall file updated mandatory
`notices, pursuant to 37 C.F.R. § 42.8(b)(3), providing updated information
`regarding back-up counsel.
`
`PETITIONER:
`Daniel M. Becker
`Jennifer R. Bush
`FENWICK & WEST LLP
`DBecker-PTAB@fenwick.com
`JBush-PTAB@fenwick.com
`
`
`
`PATENT OWNER:
`
`Brian M. Kramer
`Peng Chen
`Desmond P. O’Sullivan
`Chika Arakawa
`MORRISON & FOERSTER LLP
`bmkraner@mofo.com
`pchen@mofo.com
`dosullivan@mofo.com
`carakawa@mofo.com
`
`
`3
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