`571-272-7822
`
`
`
`
`Paper No. 26
`Entered: January 23, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., HTC CORPORATION, and HTC AMERICA, INC.,
`Petitioner,
`
`v.
`
`PARTHENON UNIFIED MEMORY ARCHITECTURE LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00923(Patent 5,812,789)1
`Case IPR2016-00924 (Patent 5,960,464)2,3
`
`____________
`
`Before MICHAEL R. ZECHER, JAMES B. ARPIN, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`DECISION
`Provisionally Granting Petitioner’s Unopposed Motions for Pro Hac Vice
`Admission of Mr. Yakov Zolotorev
`37 C.F.R. § 42.10(c)
`
`
`1 Case IPR2016-00847 has been joined with this proceeding.
`2 Case IPR2016-00848 has been joined with this proceeding.
`3 This Decision addresses an issue that is identical in both cases. We, therefore,
`exercise our discretion to issue one Decision to be filed in each case. The parties,
`however, are not authorized to use this style heading in any subsequent papers.
`
`
`
`IPR2016-00923(Patent 5,812,789)
`IPR2016-00924 (Patent 5,960,464)
`I. INTRODUCTION
`Petitioner entity, Apple Incorporated (“Apple”), filed a Motion for
`Admission Pro Hac Vice of Mr. Yakov Zolotorev in each of the proceedings
`identified above. Paper 25 (“Mot.”).4 Patent Owner, Parthenon Unified
`Memory Architecture Limited Liability Corporation, does not oppose these
`Motions. Mot. 2. For the reasons provided below, Apple’s Motions are
`provisionally granted.
`
`
`II. DISCUSSION
`In accordance with 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. The
`representative Order authorizing motions for pro hac vice admission requires
`a statement of facts showing there is good cause for us to recognize counsel
`pro hac vice, and an affidavit or declaration of the individual seeking to
`appear. See Paper 4, 2 (citing Unified Patents, Inc. v. Parallel Iron, LLC,
`Case IPR2013-00639 (PTAB Oct. 15, 2013) (Paper 7) (representative
`“Order – Authorizing Motion for Pro Hac Vice Admission”)).
`In these proceedings, lead counsel for Apple, Mr. Andrew S. Ehmke,
`is a registered practitioner. Mot. 2; Paper 2, 2. Apple asserts that there is
`good cause for us to recognize Mr. Zolotorev pro hac vice in these
`proceedings. Mot. 2–3. Apple’s assertions in this regard are supported by a
`Declaration of Mr. Zolotorev. Ex. 1042.
`Mr. Zolotorev declares that he is a member in good standing of the
`State Bar of California, and that he is admitted to practice before at least two
`
`4 For purposes of expediency, we refer to the papers filed in Case IPR2016-
`00923. Similar papers were filed in Case IPR2016-00924.
`
`
`
`2
`
`
`
`IPR2016-00923(Patent 5,812,789)
`IPR2016-00924 (Patent 5,960,464)
`district courts. Ex. 1042 ¶ 5. Mr. Zolotorev also declares that he is familiar
`with the subject matter at issue in these proceedings, particularly because he
`represents Apple in the related district court case. Id. ¶¶ 3, 4. With the
`exception of referring to the Office’s previous Rules of Professional
`Conduct set forth in 37 C.F.R. §§ 10.20 et seq., instead of referring to the
`Office’s current Rules of Professional Conduct set forth in 37 C.F.R.
`§§ 11.101 et seq. (Ex. 1042 ¶ 10), the facts alleged in Mr. Zolotorev’s
`Declaration comply with all the requirements set forth in our representative
`Order authorizing motions for pro hac vice admission. See Ex. 1042 ¶¶ 1, 2,
`6–9, 11; Mot. 2–3.
`On this record, we determine that Mr. Zolotorev has sufficient legal
`and technical qualifications to represent Apple in these proceedings.
`Accordingly, Apple has established that there is good cause for the pro hac
`vice admission of Mr. Zolotorev in these proceedings, subject to Mr.
`Zolotorev filing a corrected declaration in each case, separately as an
`exhibit, indicating that he will be subject to the Office’s Rules of
`Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq.
`
`
`III. ORDER
`
`Accordingly, it is
`ORDERED that Apple’s Motions for Admission Pro Hac Vice of Mr.
`Yakov Zolotorev are provisionally granted;
`FURTHER ORDERED that Mr. Zolotorev is authorized to represent
`Apple as back-up counsel in these proceedings only;
`FURTHER ORDERED that Apple is to continue to have a registered
`practitioner represent it as lead counsel in these proceedings;
`
`
`
`3
`
`
`
`IPR2016-00923(Patent 5,812,789)
`IPR2016-00924 (Patent 5,960,464)
`FURTHER ORDERED that Mr. Zolotorev shall comply with the
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012), and
`the Board’s Rules of Practice for Trials, as set forth in Part 42 of Title 37,
`Code of Federal Regulations; and
`FURTHER ORDERED that, upon filing a corrected declaration in
`each case, Mr. Zolotorev shall be subject to the Office’s disciplinary
`jurisdiction under 37 C.F.R. § 11.19(a), as well as the Office’s Rules of
`Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq., and shall be
`admitted pro hac vice in these proceedings, effective as of the date of this
`Decision, without further action by us.
`
`
`
`
`4
`
`
`
`IPR2016-00923(Patent 5,812,789)
`IPR2016-00924 (Patent 5,960,464)
`For PETITIONER:
`Andrew S. Ehmke
`David W. O’Brien
`Michael S. Parsons
`HAYNES AND BOONE, LLP
`andy.ehmke.ipr@haynesboone.com
`david.obrien.ipr@haynesboone.com
`michael.parsons.ipr@haynesboone.com
`
`David L. Alberti
`FEINBERG DAY ALBERTI & THOMPSON LLP
`dalberti@feinday.com
`
`Joseph A. Micallef
`Samuel A. Dillon
`SIDLEY AUSTIN LLP
`jmicallef@sidley.com
`samuel.dillon@sidley.com
`
`
`
`For PATENT OWNER:
`
`Massod Anjom
`Scott Clark
`AHMAD, ZAVITSANOS, ANAIPAKOS, ALAVI & MENSING P.C.
`manjom@azalaw.com
`sclark@azalaw.com
`
`
`
`
`
`
`5
`
`