`571-272-7822
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` Paper 11
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` Entered: March 8, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`DSS TECHNOLOGY MANAGEMENT, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00782
`Patent 6,784,552 B2
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`
`
`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 Jared Bobrow
`37 C.F.R. § 42.10
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`
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`IPR2016-00782
`Patent 6,784,552 B2
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`Samsung Electronics Co., Ltd. (“Petitioner”) filed a Motion
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`requesting pro hac vice admission of Jared Bobrow in this proceeding in
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`accordance with 37 C.F.R. § 42.10, and provided a Declaration from
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`Mr. Bobrow in support of its request. See Paper 8; Ex. 1013. DSS
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`Technology Management, Inc. (“Patent Owner”) does not oppose the
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`Motion. For the reasons provided below, Petitioner’s Motion is granted.
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`I. DISCUSSION
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`As set forth in 37 C.F.R. § 42.10(c), the Board may recognize counsel
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`pro hac vice during a proceeding upon a showing of good cause, subject to
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`the condition that lead counsel be a registered practitioner. For example,
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`where the lead counsel is a registered practitioner, a non-registered
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`practitioner may be permitted to appear pro hac vice “upon showing that
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`counsel is an experienced litigating attorney and has an established
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`familiarity with the subject matter at issue in the proceeding.” 37 C.F.R.
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`§ 42.10(c). In authorizing motions for pro hac vice admission, the Board
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`also requires a statement of facts showing there is good cause for the Board
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`to recognize counsel pro hac vice and an affidavit or declaration of the
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`individual seeking to appear in this proceeding. See Unified Patents, Inc
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`. v. Parallel Iron, LLC, Case IPR2013-00639, slip op. at 3–4 (PTAB
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`Oct. 15, 2013) (Paper 7) (setting forth the requirements for pro hac vice
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`admission).
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`Jared Bobrow provides uncontroverted testimony that he:
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`i.
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`ii.
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`is a member in good standing of the State Bar of California;
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`has not been subject to any suspensions or disbarments from
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`practice before any court or administrative body;
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`2
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`IPR2016-00782
`Patent 6,784,552 B2
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`iii.
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`has never had any application for admission to practice before
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`any court or administrative body denied;
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`iv.
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`has not been subject to sanctions or contempt citations imposed
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`by any court or administrative body;
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`v.
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`has read and will comply with the Office Patent Trial Practice
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`Guide and the Board’s Rules of Practice for Trials set forth in
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`part 42 of 37 C.F.R.;
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`vi. will be subject to the USPTO Rules of Professional Conduct set
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`forth in 37 C.F.R. §§ 11.101 et. seq. and disciplinary
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`jurisdiction under 37 C.F.R. § 11.19(a);
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`vii. has listed all other proceedings before the Office for which he
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`has applied to appear pro hac vice in the last three (3) years;
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`and
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`viii. has familiarity with the subject matter at issue in this
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`proceeding.
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`Lead counsel for Petitioner, Jeremy Jason Lang, who is registered to
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`practice at the USPTO has provided a statement of facts that Jared Bobrow
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`is counsel for Petitioner in the related co-pending litigation and is familiar
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`with the subject matter at issue in this proceeding. Thus, Petitioner has
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`shown good cause why Jared Bobrow should be recognized pro hac vice for
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`purposes of this proceeding. Jared Bobrow has provided the requisite
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`affidavit or declaration. Therefore, Jared Bobrow has complied with the
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`requirements for admission pro hac vice in this proceeding.
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`3
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`IPR2016-00782
`Patent 6,784,552 B2
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`In consideration of the foregoing, it is hereby
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`II. ORDER
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`ORDERED that Petitioner’s Motion for pro hac vice admission of
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`Jared Bobrow is granted;
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`FURTHER ORDERED that Jared Bobrow may not act as lead
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`counsel in this proceeding;
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`FURTHER ORDERED that Petitioner is to continue to have a
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`registered practitioner represent it as lead counsel in this proceeding;
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`FURTHER ORDERED that Jared Bobrow is to comply with the
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`Office Patent Trial Practice Guide and the Board’s Rules of Practice for
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`Trials, as set forth in Title 37, Part 42 of the Code of Federal Regulations;
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`and
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`FURTHER ORDERED that Jared Bobrow is to be subject to the
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`Office’s disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and the
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`USPTO Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et.
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`seq., which took effect on May 3, 2013.
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`4
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`5
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`IPR2016-00782
`Patent 6,784,552 B2
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`PETITIONER:
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`Jeremy Lang
`Jason.lang@weil.com
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`Robert Magee
`Robert.magee@weil.com
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`PATENT OWNER:
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`James Gumina
`gumina@mbhb.com
`
`Michael Clifford
`clifford@mbhb.com
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`
`