`571-272-7822
`
`Paper 11
`Entered: October 19, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD,
`Petitioner,
`
`v.
`
`UUSI, LLC d/b/a NARTRON,
`Patent Owner.
`____________
`
`Case IPR2016-00908
`Patent 5,796,183
`____________
`
`
`
`Before CARL M. DEFRANCO and KAMRAN JIVANI,
`Administrative Patent Judges.
`
`JIVANI, Administrative Patent Judge.
`
`ORDER
`Granting Patent Owner’s Motion for Pro Hac Vice Admission of
`Ms. Teresa M. Summers
`37 C.F.R. § 42.10
`
`
`
`
`
`
`
`IPR2016-00908
`Patent 5,796,183
`
`
`Patent Owner, UUSI, LLC d/b/a NARTRON, filed a motion for pro
`hac vice admission of Ms. Teresa M. Summers. Paper 9 (“Mot.”). Patent
`Owner also filed an affidavit from Ms. Summers in support of its motion.
`Ex. 2000.1 Petition did not file an opposition to the motion.
`Pursuant to 37 C.F.R. § 42.10(c), we 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. Good cause may be
`shown, for example, by establishing 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). A motion for pro hac vice admission
`must contain a statement of facts establishing good cause and must be
`accompanied by an affidavit or declaration of the individual seeking to
`appear. See Unified Patents, Inc. v. Parallel Iron, LLC, IPR2013-00639,
`slip op. at 3–4 (PTAB Oct. 15, 2013) (Paper 7) (setting forth the
`requirements for pro hac vice admission).
`In her affidavit, Ms. Summers identifies Mr. Jay P. Kesan, a registered
`practitioner, as lead counsel. Ex. 2000 ¶ 15. Regarding the required
`showing of good cause, Patent Owner asserts that Ms. Summers is an
`experienced litigating attorney and has an established familiarity with the
`subject matter at issue in the proceeding. Mot. 3. More specifically, Ms.
`Summers states she has familiarity with the subject matter at issue in this
`
`
`1 Patent Owner filed a request for authorization to file the present motion for
`pro hac vice admission. Paper 8. Patent Owner’s request is moot because
`we previously provided the requested authorization in the Notice of Filing
`Date Accorded to Petition. Paper 3 at 3 (“The parties are authorized to file
`motions for pro hac vice admission under 37 C.F.R. § 42.10(c).”).
`
`2
`
`
`
`IPR2016-00908
`Patent 5,796,183
`
`proceeding because she has “analyzed and studied” the ’183 patent, has
`litigated other patent infringement matters related to touch sensors patent,
`and currently represents Patent Owner in an intellectual property dispute
`pending at the Court of Federal Claims, UUSI, LLC, et al. v. The United
`States, et al., Case No. 12-216 C, Ct. Fed. Cl. Ex. 2000 ¶ 13. Ms.
`Summers’s affidavit also complies with the other requirements for pro hac
`vice admission. Id. ¶¶ 1–15; see Unified Patents, slip op. at 3–4. Having
`reviewed Ms. Summers’s affidavit, we determine that Ms. Summers has
`sufficient qualifications to represent Patent Owner in this proceeding.
`For the foregoing reasons, Patent Owner has shown good cause for
`Ms. Summers’s pro hac vice admission in this proceeding.
`
`ORDER
`ORDERED that Patent Owner’s motion for pro hac vice admission of
`Teresa M. Summers is granted, and Ms. Summers is authorized to represent
`Patent Owner only as back-up counsel in this proceeding;
`FURTHER ORDERED that Patent Owner is to continue to have a
`registered practitioner as lead counsel in this proceeding;
`FURTHER ORDERED that Ms. Summers 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 Ms. Summers is subject to the USPTO’s
`disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and the USPTO’s Rules
`of Professional Conduct set forth at 37 C.F.R. §§ 11.101–11.901.
`
`3
`
`
`
`
`
`4
`
`IPR2016-00908
`Patent 5,796,183
`
`
`PETITIONER:
`Naveen Modi
`Joseph Palys
`PAUL HASTINGS LLP
`naveenmodi@paulhastings.com
`josephpalys@paulhastings.com
`
`
`
`PATENT OWNER:
`Jay P. Kesan
`Teresa M. Summers
`DIMURO GINSBERG PC
`jay@keyiplaw.com
`teresa@keyiplaw.com