Trials@uspto.gov
`571-272-7822
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`
`
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`
`
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` Paper 11
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`
`
` Entered: May 3, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TOYOTA MOTOR CORPORATION,
`Petitioner
`
`v.
`
`BLITZSAFE TEXAS, LLC,
`Patent Owner
`____________
`
`Case IPR2016-00418
`Patent 8,155,342 B2
`____________
`
`
`
`Before JAMESON LEE, THOMAS L. GIANNETTI, and HUNG H. BUI,
`Administrative Patent Judges.
`
`BUI, Administrative Patent Judge.
`
`
`DECISION
`Patent Owner’s Motion for
`Pro Hac Vice Admission of Alfred R. Fabricant
`37 C.F.R. § 42.10
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
` Paper 11
`
`
`
` Entered: May 3, 2016
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TOYOTA MOTOR CORPORATION,
`Petitioner
`
`v.
`
`BLITZSAFE TEXAS, LLC,
`Patent Owner
`____________
`
`Case IPR2016-00418
`Patent 8,155,342 B2
`____________
`
`
`
`Before JAMESON LEE, THOMAS L. GIANNETTI, and HUNG H. BUI,
`Administrative Patent Judges.
`
`BUI, Administrative Patent Judge.
`
`
`DECISION
`Patent Owner’s Motion for
`Pro Hac Vice Admission of Alfred R. Fabricant
`37 C.F.R. § 42.10
`
`
`
`
`
`
`
`IPR2016-00418
`Patent 8,155,342 B2
`
`
`On January 21, 2016, Patent Owner filed a motion for pro hac vice
`admission of Alfred R. Fabricant. Paper 8 (“Motion”). Petitioner has not
`opposed the Motion. For the reasons provided below, the Motion is
`conditionally 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. 37 C.F.R. § 42.10(c). If 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 this proceeding, lead counsel for Patent Owner is Peter
`Lambrianakos, a registered practitioner. Patent Owner’s motion is supported
`by the declaration of Alfred R. Fabricant. Paper 9 (“Decl.”).
`Mr. Fabricant declares that he is a member in good standing of the Bar
`of the State of New York and the Bar of the State of Arizona. Decl. ¶ 2.
`Mr. Fabricant also declares that (1) he has been litigating patent cases for
`over 20 years and has been lead counsel in over 30 patent cases, (2) he has
`never been suspended, disbarred, sanctioned or cited for contempt by any
`court or administrative body; and (3) no court or administrative body has
`ever denied his application for admission to practice. Id. ¶¶ 1, 3–4.
`Mr. Fabricant further declares that he is familiar with the subject
`matter at issue in this proceeding, on the basis that he is lead counsel for
`Patent Owner in related district court litigations involving the same patent as
`that at issue in this proceeding, including: (1) Blitzsafe Texas, LLC v.
`2
`
`
`
`IPR2016-00418
`Patent 8,155,342 B2
`
`Hyundai Motor Company, et al., No. 15-cv-01275-JRG (E.D. Tex.); (2)
`Blitzsafe Texas, LLC v. Honda Motor Co., Ltd., et al., No. 15-cv-01274-JRG
`(E.D. Tex.); (3) Blitzsafe Texas, LLC v. Volkswagen Group of America, Inc.
`et al., No. 15-cv-01278-JRG (E.D. Tex.); (4) Blitzsafe Texas, LLC v. Nissan
`Motor Co., Ltd., et al., 15-cv-01276-JRG (E.D. Tex.); and (5) Blitzsafe
`Texas, LLC v. Toyota Motor Corporation et al., No. 15-cv-01277-JRG (E.D.
`Tex.). Id. ¶ 8.
`Mr. Fabricant further states that (1) he has read and will comply with
`the Office Patent Trial Practice Guide and the Board’s Rules of Practice for
`Trials, as set forth in Part 42 of the Code of Federal Regulations; (2) he
`agrees to be subject to the Office Code of Professional Responsibility set
`forth in 37 C.F.R. §§ 11.101, et seq., disciplinary jurisdiction under
`37 C.F.R. § 11.19(a), and the Office Rules of Professional Conduct set forth
`in “Changes to Representation of Others Before the United States Patent
`and Trademark Office;” Final Rule, 78 Fed. Reg. 20180 (Apr. 3, 2013); and
`(3) he has not appeared pro hac vice in any proceedings before the Office in
`the past three years. Id. ¶¶ 5–7.
`Mr. Fabricant has not identified the Title No. of the Code of Federal
`Regulations that is referred to in ¶ 5 of his declaration. In addition, Mr.
`Fabricant refers incorrectly to the Office Code of Professional
`Responsibility. The Office Code of Professional Responsibility was Part 10
`of Title 37, Code of Federal Regulations, but was removed and replaced by
`the Office’s new Rules of Professional Conduct set forth in 37 C.F.R.
`§§ 11.101, et seq. See “Changes to Representation of Others Before the
`United States Patent and Trademark Office;” Final Rule, 78 Fed. Reg.
`3
`
`
`
`IPR2016-00418
`Patent 8,155,342 B2
`
`20180 (Apr. 3, 2013). The Office’s Rules of Professional Conduct took
`effect on May 3, 2013. Id. at 20180–81.
`Accordingly, it is:
`ORDERED that Patent Owner’s Motion (Paper 8) for pro hac vice
`admission of Alfred R. Fabricant for this proceeding is conditionally
`granted, provided that within one week of the date of this Order, Patent
`Owner files supplemental declaration statements from Alfred R. Fabricant
`indicating that (1) he has read and will comply with the Board’s rules as set
`forth in Part 42 of Title 37 of the Code of Federal Regulations, and (2) he
`agrees to be subject to the USPTO’s Rules of Professional Conduct as set
`forth in 37 C.F.R. §§ 11.101 et seq.;
`FURTHER ORDERED that if the above-noted supplemental
`declaration statements are timely filed within one week of the date of this
`Order, then Mr. Fabricant is authorized to be designated as backup counsel,
`but not lead counsel, in this proceeding;
`FURTHER ORDERED that Mr. Fabricant will 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, and
`will be subject to the Office’s 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); and
`FURTHER ORDERED that Patent Owner is to continue to have a
`registered practitioner represent it as lead counsel in this proceeding.
`
`
`
`
`4
`
`
`
`5
`
`IPR2016-00418
`Patent 8,155,342 B2
`
`PETITIONER:
`
`William H. Mandir
`John F. Rabena
`Brian K. Shelton
`Sughrue Mion, PLLC
`wmandir@sughrue.com
`jrabena@sughrue.com
`bshelton@sughrue.com
`
`
`
`PATENT OWNER:
`
`Peter Lambrianakos
`Brown Rudnick LLP
`plambrianakos@brownrudnick.com
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