`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
`
`