`Trials@uspto.gov
`Entered: June 7, 2018
`Tel: 571.272.7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RIOT GAMES, INC.,
`Petitioner,
`
`v.
`
`PALTALK HOLDINGS, INC.,
`Patent Owner.
`____________
`
`Cases IPR2018-00129 & IPR2018-00130
`Patent 5,822,523 & 5,822,523 C1
`Cases IPR2018-00131 & IPR2018-00132
`Patent 6,226,686 & 6,226,686 C11
`
`Before THU A. DANG, KARL D. EASTHOM, and
`NEIL T. POWELL, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Granting Petitioner’s Motions for
`Pro Hac Vice Admission of Scott M. Border
`37 C.F.R. § 42.10(c)
`
`
`1 This Decision addresses an issue that is identical in all four 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 heading style in
`any subsequent papers.
`
`
`
`IPR2018-00129 & IPR2018-00130
`Patent 5,822,523 & 5,822,523 C1
`IPR2018-00131 & IPR2018-00132
`Patent 6,226,686 & 6,226,686 C1
`
`
`On May 15, 2018, Petitioner filed a motion for pro hac vice admission
`of Scott M. Border, Esq., in each proceeding identified above. Paper 12
`(“Motion”).2 Patent Owner has not opposed the Motions. For the reasons
`provided below, the Motions are granted. See 37 C.F.R. § 42.10(c); see also
`Case IPR2013-00639, Paper 7 (setting forth requirements for pro hac vice
`admission).3
`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. 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 these proceedings, lead counsel for Petitioner is Joseph A. Micallef,
`a registered practitioner. Petitioner’s Motions are supported by the
`Declarations of Scott M. Border. Exhibit 1037 (“Decl.”).
`In its Motions, Petitioner asserts that there is good cause for Mr.
`Border’s pro hac vice admission because (1) Mr. Border is an experienced
`litigator and has been involved in numerous patent litigation cases in federal
`courts and maters before the Board; and (2) Mr. Border has reviewed and is
`
`
`2 For purposes of expediency, we refer to the papers and exhibits filed in
`Case IPR2018-00129. Petitioner filed similar papers and exhibits in Cases
`IPR2018-00130, IPR2018-00131 and IPR2018-00132.
`3 Available at http://www.uspto.gov/ip/boards/bpai/ptab_trials.jsp,
` “Representative Orders, Decisions, and Notices,” “Other Representative
`Orders and Decisions”).
`
`2
`
`
`
`IPR2018-00129 & IPR2018-00130
`Patent 5,822,523 & 5,822,523 C1
`IPR2018-00131 & IPR2018-00132
`Patent 6,226,686 & 6,226,686 C1
`
`familiar with U.S. Patent Nos. 5,822,523 and 6,226,686, and thus, has
`established familiarity with the subject matter at issue in these proceedings
`and the conduct of these proceedings to date. Paper 12, 3. In support of the
`Motions, Mr. Border attests to these facts in his Declarations with sufficient
`explanations. Ex. 1037, 1–3. Additionally, the Motions and Mr. Border’s
`Declarations comply with the requirements set forth in the Board’s order
`authorizing Petitioner’s motion for pro hac vice admission.
`Based on the record before us, we find that Mr. Border has sufficient
`legal and technical qualifications to represent Petitioner in these
`proceedings. Accordingly, Petitioner has established that there is good
`cause for Mr. Border’s admission. Mr. Border will be permitted to appear
`pro hac vice in these proceedings as back-up counsel only. See 37 C.F.R.
`§ 42.10(c).
`For the foregoing reasons, it is
`ORDERED that Petitioner’s Motions for pro hac vice admission of
`Mr. Border are granted; Mr. Border is authorized to represent Petitioner as
`back-up counsel in these proceedings only;
`FURTHER ORDERED that Petitioner is to continue to have a
`registered practitioner as lead counsel in these proceedings; and
`FURTHER ORDERED that Mr. Border 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 C.F.R., and to be subject to the Office’s
`disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and the USPTO Rules
`of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq.
`
`3
`
`
`
`IPR2018-00129 & IPR2018-00130
`Patent 5,822,523 & 5,822,523 C1
`IPR2018-00131 & IPR2018-00132
`Patent 6,226,686 & 6,226,686 C1
`
`
`
`PETITIONER:
`Joseph A. Micallef
`Samuel A. Dillon
`SIDLEY AUSTIN LLP
`jmicallef@sidley.com
`samuel.dillon@sidley.com
`
`PATENT OWNER:
`Gregory M. Howison
`Keith D. Harden
`Brian D. Walker
`MUNCK, WILSON, MANDALA, LLP
`ghowison@munckwilson.com
`kharden@munckwilson.com
`bwalker@munckwilson.com
`
`
`
`4
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
