`571-272-7822
`
` Paper 16
`
`
`Entered: August 9, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORPORATION,
`Petitioner,
`
`v.
`
`DSS TECHNOLOGY MANAGEMENT, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00287 (Patent 6,784,552)
`Case IPR2016-00288 (Patent 6,784,552)
`Case IPR2016-00289 (Patent 5,965,924)
`Case IPR2016-00290 (Patent 5,965,924)1
`
`
`
`Before BRYAN F. MOORE, BRIAN J. McNAMARA, and
`MINN CHUNG, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`DECISION
`Granting Petitioner’s Motion for Admission Pro Hac Vice of Cosmin Maier
`37 C.F.R. § 42.10
`
`
`
`
`
`
`1 This Order will be entered in each case. The parties are not authorized to
`use this caption style.
`
`
`
`IPR2016-00287 (Patent 6,784,552)
`IPR2016-00288 (Patent 6,784,552)
`IPR2016-00289 (Patent 5,965,924)
`IPR2016-00290 (Patent 5,965,924)
`
`
`Intel Corporation (“Petitioner”) filed a Motion requesting pro hac vice
`admission of Cosmin Maier in these proceedings in accordance with 37
`C.F.R. § 42.10, and provided a Declaration from Mr. Maier in support of its
`request. See Paper 13; Ex. 1029.2 DSS Technology Management, Inc.
`(“Patent Owner”) does not oppose the Motion. For the reasons provided
`below, Petitioner’s Motion is granted.
`
`I. DISCUSSION
`As set forth in 37 C.F.R. § 42.10(c), 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. 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.” 37 C.F.R.
`§ 42.10(c). In authorizing motions for pro hac vice admission, the Board
`also requires 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 in these proceedings. See 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).
`Cosmin Maier provides uncontroverted testimony that he:
`
`
`2 Unless otherwise indicated, we refer to Papers and Exhibits filed in
`IPR2016-00287.
`
`2
`
`
`
`ii.
`
`iv.
`
`v.
`
`IPR2016-00287 (Patent 6,784,552)
`IPR2016-00288 (Patent 6,784,552)
`IPR2016-00289 (Patent 5,965,924)
`IPR2016-00290 (Patent 5,965,924)
`
`
`i.
`
`iii.
`
`is a member in good standing of the Bar of the State of New
`York;
`has not been subject to any suspensions or disbarments from
`practice before any court or administrative body;
`has never had any application for admission to practice before
`any court or administrative body denied;
`has not been subject to sanctions or contempt citations imposed
`by any court or administrative body;
`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.;
`vi. will be subject to the USPTO Rules of Professional Conduct set
`forth in 37 C.F.R. §§ 11.101 et. seq. and disciplinary
`jurisdiction under 37 C.F.R. § 11.19(a);
`vii. has listed all other proceedings before the Office for which he
`has applied to appear pro hac vice in the last three (3) years;
`and
`viii. has familiarity with the subject matter at issue in these
`proceedings.
`Lead counsel for Petitioner, Grant Rowan, who is registered to
`practice at the USPTO has provided a statement of facts that Cosmin Maier
`is counsel for Petitioner in related co-pending litigation and is familiar with
`the subject matter at issue in these proceedings. Thus, Petitioner has shown
`good cause why Cosmin Maier should be recognized pro hac vice for
`purposes of these proceedings. Cosmin Maier has provided the requisite
`
`3
`
`
`
`IPR2016-00287 (Patent 6,784,552)
`IPR2016-00288 (Patent 6,784,552)
`IPR2016-00289 (Patent 5,965,924)
`IPR2016-00290 (Patent 5,965,924)
`
`affidavit or declaration. Therefore, Cosmin Maier has complied with the
`requirements for admission pro hac vice in these proceedings.
`
`II. ORDER
`In consideration of the foregoing, it is hereby
`ORDERED that Petitioner’s Motion for pro hac vice admission of
`Cosmin Maier is granted;
`FURTHER ORDERED that Cosmin Maier may not act as lead
`counsel in these proceedings;
`FURTHER ORDERED that Petitioner is to continue to have a
`registered practitioner represent it as lead counsel in these proceedings;
`FURTHER ORDERED that Cosmin Maier 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
`
`FURTHER ORDERED that Cosmin Maier is to be 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., which took effect on May 3, 2013.
`
`
`
`4
`
`
`
`
`
`IPR2016-00287 (Patent 6,784,552)
`IPR2016-00288 (Patent 6,784,552)
`IPR2016-00289 (Patent 5,965,924)
`IPR2016-00290 (Patent 5,965,924)
`
`PETITIONER:
`Grant K. Rowan
`Yung-Hoon Ha
`WILMER, CUTLER, PICKERING, HALE AND DORR, LLP
`Grant.Rowan@wilmerhale.com
`Yung-Hoon.Ha@wilmerhale.com
`
`PATENT OWNER:
`Andriy Lytvyn
`Anton J. Hopen
`Nicholas Pfeifer
`SMITH & HOPEN, P.A.
`andriy.lytvyn@smithhopen.com
`anton.hopen@smithhopen.com
`nicholas.pfeifer@smithhopen.com
`
`
`5