`571-272-7822
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` Paper 10
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` Entered: May 19, 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 IPR2016-00422
`Patent 7,489,786 B2
`____________
`
`
`
`Before JAMESON LEE, THOMAS L. GIANNETTI, and HUNG H. BUI,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`DECISION
`Patent Owner’s Motion for
`Pro Hac Vice Admission of Alfred R. Fabricant
`37 C.F.R. § 42.10
`
`
`
`
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`
`
`IPR2016-00422
`Patent 7,489,786 B2
`
`
`On January 21, 2016, Patent Owner filed a motion for pro hac vice
`admission of Alfred R. Fabricant. Paper 7 (“Motion”). Petitioner has not
`opposed the Motion. 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. Lead counsel for Patent Owner is Peter Lambrianakos, a
`registered practitioner.
`Patent Owner’s motion relies on the Declaration of Alfred R.
`Fabricant. Paper 8 (“Decl.”). Mr. Fabricant declares that he has never been
`suspended, disbarred, sanctioned or cited for contempt by any court or
`administrative body, and that no court or administrative body has ever
`denied his application for admission to practice. Id. ¶¶ 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 several district court actions involving U.S. Patent
`7,489,786 B2, the same patent as that involved in this proceeding. 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 United States Patent and Trademark Office Code
`
`2
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`IPR2016-00422
`Patent 7,489,786 B2
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`of Professional Responsibility set forth in 37 C.F.R. §§ 11.101, et seq.” Id.
`¶¶ 5–6.
`Mr. Fabricant has not identified the Title No. of the Code of Federal
`Regulations that is referred to in ¶ 5 of his Declaration. Mr. Fabricant also
`refers incorrectly to the Office Code of Professional Responsibility which
`was Part 10 of Title 37, Code of Federal Regulations, and has been replaced
`by the 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. 20180 (Apr. 3,
`2013). The Office’s Rules of Professional Conduct took effect on May 3,
`2013. Id. at 20180–81.
`It is
`ORDERED that Patent Owner’s Motion for pro hac vice admission of
`Alfred R. Fabricant is conditionally granted, provided that within one week
`of the date of this Order, Patent Owner files a Supplemental Declaration
`from Alfred R. Fabricant indicating that (1) he has read and will comply
`with the Board’s rules of practice for trials 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 is timely filed, 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
`3
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`IPR2016-00422
`Patent 7,489,786 B2
`
`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.
`
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`COUNSEL FOR PETITIONER:
`
`William Mandir
`John Rabena
`Brian Shelton
`Sughrue Mion, PLLC
`wmandir@sughrue.com
`jrabena@sughrue.com
`bshelton@sughrue.com
`
`COUNSEL FOR PATENT OWNER:
`
`Peter Lambrianakos
`Brown Rudnick LLP
`plambrianakos@brownrudnick.com
`
`4