`
`
`Trials@uspto.gov
`571-272-782 Entered: October 12, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MERRILL COMMUNICATIONS LLC d/b/a MERRILL CORPORATION,
`Petitioner,
`
`v.
`
`E-NUMERATE SOLUTIONS, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-01392
`Patent 8,185,816 B2
`____________
`
`
`Before KEN B. BARRETT, JONI Y. CHANG, and
`ALEX S. YAP, Administrative Patent Judges.
`
`YAP, Administrative Patent Judge.
`
`ORDER
`Granting Petitioner’s Motion for
`Pro Hac Vice Admission of Adam R. Steinert
`37 C.F.R. § 42.10
`
`
`
`
`
`
`
`IPR2018-01392
`Patent 8,185,816 B2
`
`
`Merrill Communications LLC d/b/a Merrill Corporation (“Petitioner”)
`filed a Motion for Pro Hac Vice Admission of Adam R. Steinert (“Motion”).
`Paper 6.1 Petitioner provided a Declaration of Mr. Steinert in support of its
`Motion.2 Patent Owner did not file an opposition.
`Having reviewed the Motion and the Declaration of Mr. Steinert, we
`conclude that Mr. Steinert has sufficient qualifications to represent Petitioner
`in this proceeding and that Petitioner has shown good cause for
`Mr. Steinert’s pro hac vice admission. See Unified Patents, Inc. v. Parallel
`Iron, LLC, IPR2013-00639, Order Authorizing Motion for Pro Hac Vice
`Admission, Paper 7 (PTAB October 15, 2013) (setting forth requirements
`for pro hac vice admission). Mr. Steinert is permitted to appear pro hac vice
`in this proceeding as back-up counsel only. See 37 C.F.R. § 42.10(c).
`
`
`
`
`
`
`
`1 For future filings, the Parties shall conform the caption pages of their
`filings to that of this Order.
`2 For future filings, evidence in support of any motions or briefs must be
`filed as an exhibit rather than appended to the end of the motions or briefs.
`2
`
`
`
`IPR2018-01392
`Patent 8,185,816 B2
`
`
`ORDER
`
`
`
`It is
`ORDERED that Petitioner’s Motion for Pro Hac Vice Admission of
`Adam R. Steinert is granted, and Mr. Steinert is authorized to represent
`Petitioner only as back-up counsel in this proceeding;
`FURTHER ORDERED that Petitioner must file a power of attorney
`within 3 business days designating Mr. Steinert in accordance with
`37 C.F.R. § 42.10(b), if he is not already included in a previously filed
`power of attorney;
`FURTHER ORDERED that Petitioner must file an updated
`mandatory notice identifying Mr. Steinert as back-up counsel in accordance
`with 37 C.F.R. § 42.8(b)(3) ), if he is not already identified as back-up
`counsel in a previous filing;
`FURTHER ORDERED that Petitioner is to continue to have a
`registered practitioner as lead counsel in this proceeding;
`FURTHER ORDERED that Mr. Steinert 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. Steinert 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 et seq.
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2018-01392
`Patent 8,185,816 B2
`
`FOR PETITIONER:
`
`Katherine Rahlin
`krahlin@fredlaw.com
`
`FOR PATENT OWNER:
`
`Gregory Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`George Gordon
`andrew@agordonlawfirm.com
`
`
`
`4
`
`