`571.272.7822
`
`
` Paper No. 32
` Entered: December 3, 2019
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PANASONIC CORPORATION AND PANASONIC CORPORATION OF
`NORTH AMERICA, GOPRO, INC., GARMIN INTERNATIONAL, INC.,
`AND GARMIN USA, INC.,
`Petitioner,
`
`v.
`
`CELLSPIN SOFT, INC.,
`Patent Owner.
`____________
`
`Case IPR2019-001311
`Patent 9,258,698 B2
`____________
`
`
`
`Before GREGG I. ANDERSON, DANIEL J. GALLIGAN, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Petitioner’s Motion for Admission
`Pro Hac Vice — David Medina
`37 C.F.R. § 42.10
`
`
`
`
`1 GoPro, Inc., Garmin International, Inc. and Garmin USA, Inc. v. Cellspin
`Soft, Inc. were joined as parties to this proceeding. Paper 29.
`
`
`
`
`
`IPR2019-00131
`Patent 9,258,698 B2
`
`
`INTRODUCTION
`On November 5, 2019, Panasonic Corporation of North America and
`Panasonic Corporation (collectively “Petitioner”) moved for admission pro
`hac vice of David Medina in the above-referenced proceeding. Paper 26
`(“Motion”). Petitioner filed a supporting declaration of Mr. Medina as part
`of the Motion. Paper 27.2 Petitioner indicates that Cellspin Soft, Inc.
`(“Patent Owner”) does not opposed the Motion. Paper 26, 3.
`Pursuant to 37 C.F.R. § 42.10(c), 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. In authorizing
`motions for pro hac vice, we require the moving party to provide a statement
`of facts showing there is good cause for us to recognize counsel pro hac
`vice, and an affidavit or declaration of the individual seeking to appear in the
`proceeding.
`Upon review of the Motion and the supporting declaration, we
`determine that Petitioner has demonstrated that David Medina has sufficient
`legal and technical qualifications to represent Petitioner in this proceeding.
`We also recognize the need to have him involved as backup counsel.
`Accordingly, Petitioner has established good cause for admitting David
`Medina pro hac vice.
`
`
`
`
`
`2 Petitioner filed the Declaration as a separate paper (Paper 27) in the Patent
`Trial and Appeal Board End to End (PTAB E2E) system. The parties are
`reminded that affidavits and declarations must be filed as exhibits, so they
`may be referenced individually by exhibit number. See 37 C.F.R. § 42.63.
`
`2
`
`
`
`IPR2019-00131
`Patent 9,258,698 B2
`
`
`ORDER
`
`It is accordingly
`ORDERED that Petitioner’s Motion for Pro Hac Vice Admission of
`David Medina is granted, and Mr. Medina is authorized to represent
`Petitioner as back-up counsel in this proceeding only;
`FURTHER ORDERED that Petitioner is to continue to have a
`registered practitioner represent it as lead counsel for the proceeding;
`FURTHER ORDERED that David Medina is to comply with the
`Office Patent Trial Practice Guide, as updated by the July 2019 Update,
`84 Federal Register 33,925 (July 16, 2019), and the August 2018 Update,
`83 Federal Register 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;
`FURTHER ORDERED that David Medina 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.;
`
`FURTHER ORDERED that, within seven (7) business days of the
`date of this Order, Petitioner shall submit a Power of Attorney for David
`Medina in the instant proceeding in accordance with 37 C.F.R. § 42.10(b);
`and
`
`FURTHER ORDERED that Petitioner shall file updated mandatory
`notices in the instant proceeding, identifying David Medina as back-up
`counsel, in accordance with 37 C.F.R. § 42.8(b)(3).
`
`3
`
`
`
`IPR2019-00131
`Patent 9,258,698 B2
`
`PETITIONER:
`
`
`
`T. Vann Pearce, Jr.
`Christopher J. Higgins
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`TVPPTABDocket@orrick.com
`0CHPTABDocket@orrick.com
`
`
`PATENT OWNER:
`
`John Edmonds
`Eric Carr
`COLLINS EDMONDS & SCHLATHER, PLLC
`pto-edmonds@ip-lit.com
`ecarr@ip-lit.com
`
`4
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`