`Trials@uspto.gov
`571-272-7822 Entered: August 22, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NICHIA CORPORATION,
`Petitioner,
`v.
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Cases1
`IPR2018-01165 (Patent 7,524,087 B1)
`IPR2018-01167 (Patent 6,949,771 B2)
`____________
`
`
`
`Before BARBARA A. BENOIT, SCOTT C. MOORE, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`DECISION
`Petitioner’s Motion for Pro Hac Vice Admission of
`Mr. Thomas R. Makin
`37 C.F.R. § 42.10
`
`
`1 This Order addresses issues that are substantially similar in the
`proceedings. We exercise our discretion to issue one order to be entered in
`each case.
`
`
`
`IPR2018-01165 (Patent 7,524,087 B1)
`IPR2018-01167 (Patent 6,949,771 B2)
`
`
`Petitioner filed motions for pro hac vice admission of Mr. Thomas R.
`Makin in each of these proceedings. Paper 7.2 Each motion was
`accompanied by a declaration from Mr. Makin in support of the motion. Id.
`at 2–3; Paper 8 (“Declaration of Thomas R. Makin in Support of Petitioner’s
`Unopposed Motion for Admission Pro Hac Vice”).3 Each motion indicates
`that Patent Owner does not oppose the motion. Paper 7, 2.
`Having reviewed the motions and the declarations of Mr. Makin, we
`conclude that Mr. Makin has sufficient qualifications to represent Petitioner
`in these proceedings and that Petitioner has shown good cause for pro hac
`vice admission of Mr. Makin. See Unified Patents, Inc. v. Parallel Iron,
`LLC, IPR2013-00639 (PTAB Oct. 15, 2013) (setting forth the requirements
`for pro hac vice admission) (Paper 7). Mr. Makin will be permitted to
`appear pro hac vice in these proceedings as back-up counsel only. See
`37 C.F.R. § 42.10(c).
`
`ORDER
`
`It is:
`ORDERED that Petitioner’s motions for pro hac vice admission of
`Mr. Thomas R. Makin are granted, and Mr. Makin is authorized to represent
`Petitioner only as back-up counsel in these proceedings;
`FURTHER ORDERED that Petitioner is to continue to have a
`registered practitioner as lead counsel in these proceedings;
`
`
`2 Paper numbers refer to IPR2018-01165.
`3 Petitioner filed the declaration as a Paper. Petitioner is reminded that
`affidavits and declarations must be filed as exhibits so that they may be
`referenced individually by exhibit number. See 37 C.F.R. § 42.63.
`
`
`2
`
`
`
`IPR2018-01165 (Patent 7,524,087 B1)
`IPR2018-01167 (Patent 6,949,771 B2)
`
`
`FURTHER ORDERED that Mr. Makin 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 Mr. Makin 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.
`
`
`
`FOR PETITIONER:
`Patick Colsher
`Matt Berkowitz
`Eric Lucas
`Patrick.colsher@shearman.com
`Matt.berkowitz@shearman.com
`Eric.lucas@shearman.com
`
`FOR PATENT OWNER:
`Wayne M. Helge
`James T. Wilson
`Aldo Noto
`whelge@dbjg.com
`jwilson@dbjg.com
`anoto@dbjg.com
`
`
`3
`
`
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
