`571-272-7822
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` Paper 20
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` Entered: June 18, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`COREPHOTONICS, LTD.,
`Patent Owner.
`____________
`
`Case IPR2018-01133
`Patent 9,538,152 B2
`____________
`
`ORDER
`Patent Owner’s Motion for Admission Pro Hac Vice of
`Marc A. Fenster and Bahrad A. Sokhansanj
`37 C.F.R. § 42.10
`
`
`
`
`
`Before MARC S. HOFF, BRYAN F. MOORE, and
`MONICA S. ULLAGADDI, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`
`
`
`IPR2018-01133
`Patent 9,538,152 B2
`
`On January 17, 2019, Patent Owner filed a Motion for Pro Hac Vice
`Admission of Marc A. Fenster and Bahrad A. Sokhansanj (Paper 10) and
`accompanying declarations in support thereof (Exs. 2001 and 2002).
`Petitioner did not file an opposition to this motion. Patent Owner has
`indicated, via email to the Board, that it no longer needs to admit Bahrad A.
`Sokhansanj, thus, that portion of the motion is dismissed as moot.
`Upon consideration of the papers presented, Patent Owner has
`demonstrated sufficiently that Mr. Fenster has sufficient legal and technical
`qualifications to represent Patent Owner in this proceeding. See IPR2013-
`00639, Paper 7, “Order – Authorizing Motion for Pro Hac Vice Admission.”
`Accordingly, Patent Owner has established that there is good cause for
`admitting Mr. Fenster. Mr. Fenster may only be designated as backup
`counsel.
`We note that a Power of Attorney in accordance with 37 C.F.R.
`§ 42.10(b) has been submitted for Mr. Fenster (Paper 7) but the Power of
`Attorney also lists Mr. Sokhansanj. Because Patent Owner indicated that it
`no longer needs to admit Mr. Sokhansanj, Patent Owner shall file an updated
`Power of Attorney to remove him.
`We note that Petitioner’s Updated Mandatory Notice (Paper 6)
`identifies Mr. Sokhansanj as back-up counsel. Because Patent Owner
`indicated that it no longer needs to admit Mr. Sokhansanj as back-up
`counsel, Patent Owner shall file an updated mandatory notice to remove him
`as back-up counsel.
`In consideration of the foregoing, it is
`ORDERED that Patent Owner’s unopposed motion for pro hac vice
`admission of Mr. Fenster is GRANTED;
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`2
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`IPR2018-01133
`Patent 9,538,152 B2
`
`FURTHER ORDERED that Patent Owner is to continue to have a
`registered practitioner represent it as lead counsel for the instant proceeding;
`Mr. Fenster is authorized to represent Patent Owner only as back-up counsel
`in the instant proceeding;
`FURTHER ORDERED that Patent Owner must submit a Power of
`Attorney that removes Mr. Sokhansanj to correctly designate counsel in
`accordance with 37 C.F.R. § 42.10(b);
`FURTHER ORDERED that Patent Owner must file an updated
`mandatory notice that removes Mr. Sokhansanj to correctly identify back-up
`counsel in accordance with 37 C.F.R. § 42.8(b)(3);
`FURTHER ORDERED that Mr. Fenster is to comply with the Office
`Patent Trial Practice Guide, including the August 2018 Update, 83 Fed. Reg.
`39,989 (Aug. 13, 2018), 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 Mr. Fenster is 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.
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`3
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`IPR2018-01133
`Patent 9,538,152 B2
`
`For PETITIONER:
`
`David O’Brien
`Andrew Ehmke
`Hong Shi
`HAYNES & BOONE, LLP
`david.obrien.ipr@haynesboone.com
`andy.ehmke.ipr@haynesboone.com
`hong.shi.ipr@haynesboone.com
`
`For PATENT OWNER:
`
`Neil Rubin
`C. Jay Chung
`Reza Mirzaie
`RUSS AUGUST & KABAT
`nrubin@raklaw.com
`jchung@raklaw.com
`rmirzaie@raklaw.com
`
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`4
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