`571-272-7822
`
`
`Paper No. 22
`Entered: November 14, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`GUEST TEK INTERACTIVE ENTERTAINMENT LTD.,
`Petitioner,
`
`v.
`
`NOMADIX, INC.,
`Patent Owner.
`_______________
`
`Case IPR2019-00211 (Patent 7,953,857 B2)
`Case IPR2019-00253 (Patent 8,626,922 B2)1
`_______________
`
`
`Before SALLY C. MEDLEY, DANIEL J. GALLIGAN, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`MELVIN, Administrative Patent Judge.
`
`
`
`
`
`
`
`ORDER
`Granting Patent Owner’s Motion for Pro Hac Vice
`Admission of Mark Lezama
`37 C.F.R. § 42.10
`
`
`
`1 This Order is being entered in each of the above-identified proceedings.
`The proceedings have not been consolidated and the parties are not
`authorized to use a consolidated caption.
`
`
`
`
`
`Case IPR2019-00211 (Patent 7,953,857 B2)
`Case IPR2019-00253 (Patent 8,626,922 B2)
`
`
`Patent Owner filed a motion in each of the above-captioned
`
`proceedings requesting pro hac vice admission of Mark Lezama. Paper 20.2
`
`The motion is supported by a declaration of Mr. Lezama. Ex. 2007. Patent
`
`Owner attests that Petitioner does not oppose the motion. Paper 20, 1.
`
`In accordance with 37 C.F.R. § 42.10(c), we may recognize counsel
`
`pro hac vice during a proceeding upon a showing of good cause. In
`
`authorizing a motion for pro hac vice admission, the Board requires the
`
`moving party to provide a statement of facts showing there is good cause for
`
`the Board to recognize counsel pro hac vice and an affidavit or declaration
`
`of the individual seeking to appear in the proceeding. See Paper 4, 2 (citing
`
`Unified Patents, Inc. v. Parallel Iron, LLC, Case IPR2013-00639 (PTAB
`
`Oct. 15, 2013) (Paper 7) (representative “Order – Authorizing Motion for
`
`Pro Hac Vice Admission”)).
`
`Based on the facts set forth in the motion and accompanying
`
`declaration, we conclude that Mr. Lezama has sufficient legal and technical
`
`qualifications to represent Patent Owner in these proceedings, that
`
`Mr. Lezama has demonstrated sufficient familiarity with the subject matter
`
`of these proceedings, and that there is a need for Patent Owner to be
`
`represented by counsel with litigation experience. See Ex. 2007 ¶¶ 2–5.3,4
`
`
`2 All citations are to IPR2019-00211 unless otherwise noted. Patent Owner
`filed a similar motion and declaration in IPR2019-00253.
`3 Mr. Lezama declares that he will comply with “part 42 of the C.F.R.,”
`rather than part 42 of 37 C.F.R. Ex. 2007 ¶ 10. We deem this harmless
`error.
`4 Mr. Lezama declares that he agrees to be subject to the USPTO “Code of
`Professional Responsibility set forth in 37 C.F.R. §§ 11.101 et seq.,” rather
`than the USPTO “Rules of Professional Conduct set forth in 37 C.F.R.
`§§ 11.101 et seq.” Ex. 2007 ¶ 11. We deem this harmless error.
`
` 2
`
`
`
`
`
`
`
`Case IPR2019-00211 (Patent 7,953,857 B2)
`Case IPR2019-00253 (Patent 8,626,922 B2)
`
`
`Accordingly, Patent Owner has established good cause for pro hac vice
`
`admission of Mr. Lezama in these proceedings. Mr. Lezama will be
`
`permitted to serve as back-up counsel only. See 37 C.F.R. § 42.10(c).
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that Patent Owner’s motion for pro hac vice admission of
`
`Mark Lezama is granted;
`
`FURTHER ORDERED that Patent Owner shall continue to have a
`
`registered practitioner represent it as lead counsel for the instant
`
`proceedings, but that Mr. Lezama is authorized to act as back-up counsel;
`
` FURTHER ORDERED that Patent Owner must file, within ten (10)
`
`business days, a Power of Attorney for Mr. Lezama in accordance with
`
`37 C.F.R. § 42.10(b);
`
`FURTHER ORDERED that Patent Owner must file, within ten (10)
`
`business days, updated mandatory notices identifying Mr. Lezama as back-
`
`up counsel in accordance with 37 C.F.R. § 42.8(b)(3);
`
`FURTHER ORDERED that Mr. Lezama shall comply with the Office
`
`Patent Trial Practice Guide, including the August 2018 Update (83 Fed. Reg.
`
`39,989 (Aug. 13, 2018)) and the July 2019 Update (84 Fed. Reg. 33,925
`
`(July 16, 2019)), 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. Lezama shall 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
`
` 3
`
`
`
`
`
`seq.
`
`
`
`
`
`
`
`
`Case IPR2019-00211 (Patent 7,953,857 B2)
`Case IPR2019-00253 (Patent 8,626,922 B2)
`
`
`PETITIONER:
`
`Jeffrey W. Lesovitz
`Steven J. Rocci
`Daniel J. Goettle
`BAKER & HOSTETLER LLP
`jlesovitz@bakerlaw.com
`srocci@bakerlaw.com
`dgoettle@bakerlaw.com
`
`PATENT OWNER:
`
`Douglas G. Muehlhauser
`William H. Shreve
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2dgm@knobbe.com
`2whs@knobbe.com
`boxnomadix@knobbe.com
`
`
`
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` 4
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