`571-272-7822
`
`
`
`IPR2015-01201, Paper 32
`IPR2016-00209, Paper 19
`Entered: April 20, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORPORATION,
`Petitioner,
`
`v.
`
`RAYTHEON COMPANY,
`Patent Owner.
`____________
`
`Case IPR2015-01201
`Case IPR2016-002091
`Patent 5,591,678
`____________
`
`
`
`Before JENNIFER MEYER CHAGNON, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Petitioner’s Motion for Pro Hac Vice
`Admission of Jacob Zweig
`37 C.F.R. § 42.10
`
`
`
`
`
`
`
`1 This order addresses identical motions filed in both cases; therefore, we
`issue a single order to be entered in each case.
`
`
`
`IPR2015-01201, IPR2016-00209
`Patent 5,591,678
`
`
`For each of these proceedings, Petitioner filed a motion requesting pro
`hac vice admission of Mr. Jacob Zweig (Paper 28, “Mot.”),2 with a
`supporting declaration of Mr. Zweig (Ex. 1025, “Zweig Decl.”). Petitioner
`indicated that the Motion was unopposed (Mot. 2), and Patent Owner did not
`oppose the motion within the one-week period permitted for filing an
`opposition. For the reasons stated below, Petitioner’s motion is granted.
`The Board may recognize counsel pro hac vice during a proceeding
`“upon a showing of good cause, subject to the condition that lead counsel be
`a registered practitioner and to any other conditions as the Board may
`impose.” 37 C.F.R. § 42.10(c). For example, where the lead counsel is a
`registered practitioner, a non-registered practitioner may be permitted to
`appear pro hac vice “upon showing that counsel is an experienced litigating
`attorney and has an established familiarity with the subject matter at issue in
`the proceeding.” Id. In authorizing a motion for pro hac vice admission, the
`Board requires the moving party to provide a statement of facts showing
`there is good cause for the Board to recognize counsel pro hac vice and an
`affidavit or declaration of the individual seeking to appear. See Unified
`Patents, Inc. v. Parallel Iron, LLC, Case IPR2013-00639, slip op. at 3
`(PTAB Oct. 15, 2013) (Paper 7).
`Petitioner provides evidence that Mr. Zweig is an experienced
`intellectual property litigation attorney with an established familiarity with
`the subject matter at issue in these inter partes reviews. Mot. 2–3; Zweig
`Decl. ¶¶ 1, 3, 8. In particular, Petitioner asserts that “Mr. Zweig’s
`familiarity with the subject matter at issue in this proceeding is demonstrated
`
`
`2 For convenience, citations to the record herein are in reference to
`IPR2015-01201. The same papers may be found in IPR2016-00209.
`
`2
`
`
`
`IPR2015-01201, IPR2016-00209
`Patent 5,591,678
`
`by his review of the ’678 patent and the cited prior art and his assistance in
`drafting the petition for inter partes review.” Mot. 3; Zweig Decl. ¶ 8.
`Mr. Zweig attests that he is a member in good standing of the state bar of
`California, and has never been suspended or disbarred from practice, denied
`application to practice, sanctioned, or cited for contempt by any court or
`administrative body. Zweig Decl. ¶¶ 2, 4–5; see Mot. 2–3.
`Based on the facts set forth in support of the motion and Mr. Zweig’s
`supporting declaration, we conclude that Petitioner has established good
`cause for Mr. Zweig’s pro hac vice admission. Mr. Zweig shall be subject to
`the Office’s disciplinary jurisdiction under 37 C.F.R. § 11.19(a) and the
`Office’s Rules of Professional Conduct set forth in 37 C.F.R. § 11.101
`et seq. Furthermore, Mr. Zweig is directed to comply with the Office Patent
`Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012), and the Board’s
`Rules of Practice for Trials, as set forth in Title 37, Part 42 of the C.F.R.
`Mr. Zweig will be permitted to appear pro hac vice in the instant
`proceedings as back-up counsel only. See 37 C.F.R. § 42.10(c).
`ORDER
`In consideration of the foregoing, it is
`ORDERED that Petitioner’s motion for pro hac vice admission of
`Jacob Zweig is granted, and Mr. Zweig is authorized to represent Petitioner
`in the instant proceedings as back-up counsel only;
`FURTHER ORDERED that Petitioner is to continue to have a
`registered practitioner as lead counsel in the instant proceedings;
`FURTHER ORDERED that Mr. Zweig is to comply with the Office
`Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012), and the
`
`
`
`3
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`
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`IPR2015-01201, IPR2016-00209
`Patent 5,591,678
`
`Board’s Rules of Practice for Trials, as set forth in Title 37, Part 42 of the
`Code of Federal Regulations; and
`FURTHER ORDERED that Mr. Zweig is subject to the USPTO Rules
`of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and the
`Office’s disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
`
`4
`
`
`
`5
`
`IPR2015-01201, IPR2016-00209
`Patent 5,591,678
`
`PETITIONER:
`Matthew A. Smith
`Zhuanjia Gu
`TURNER BOYD LLP
`smith@turnerboyd.com
`gu@turnerboyd.com
`docketing@turnerboyd.com
`
`T. Cy Walker
`Robert Hails
`BAKER & HOSTETLER LLP
`cwalker@bakerlaw.com
`rhails@bakerlaw.com
`
`
`
`PATENT OWNER:
`Thomas J. Filarski
`Stanley A. Schlitter
`John L. Abramic
`Daniel S. Stringfield
`Brian Fahrenbach
`STEPTOE & JOHNSON, LLP
`tfilarski@steptoe.com
`sschlitter@steptoe.com
`jabramic@steptoe.com
`dstringfield@steptoe.com
`bfahrenbach@steptoe.com