`571.272.7822
`
`
` Paper No. 16
` Entered: February 7, 2020
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`REALTIME ADAPTIVE STREAMING LLC,
`Patent Owner.
`____________
`
`IPR2019-01035
`Patent 9,769,477 B2
`____________
`
`
`
`Before GEORGIANNA W. BRADEN, KEVIN W. CHERRY, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Patent Owner’s Motion for Pro Hac Vice
`Admission of James S. Tsuei
`37 C.F.R. § 42.10(c)
`
`
`
`
`
`
`
`
`
`
`
`IPR2019-01035
`Patent 9,769,477 B2
`
`
`Patent Owner filed a motion for pro hac vice admission of
`James S. Tsuei (Paper 14; “Motion”). Petitioner has not opposed the
`Motion. Motion 2. A Declaration of James S. Tsuei in Support of Patent
`Owner’s Motion for Pro Hac Vice Admission (Ex. 2006; “Declaration”) was
`submitted with the Motion. For the reasons provided below, Patent Owner’s
`Motion is granted.
`Pursuant to 37 C.F.R. § 42.10(c), the Board 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 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 this proceeding.
`In this proceeding, lead counsel for Patent Owner, Phillip X. Wang, a
`registered practitioner, filed the Motion. Motion 3. In the Motion, Patent
`Owner states Mr. Tsuei is an experienced patent litigation attorney who has
`experience litigating numerous patent infringement litigation matters. Id.
`at 2. The Motion further asserts Mr. Tsuei is an attorney responsible for the
`representation of Patent Owner in a co-pending litigation against Petitioner,
`and through his role as an attorney in the co-pending litigation, Mr. Tsuei
`has an established familiarity with the subject matter at issue in this
`proceeding. Id. As asserted in the Motion, Patent Owner has expended
`significant resources in the co-pending litigation with Mr. Tsuei, and it
`wishes to continue using him as counsel in this proceeding. Id.
`In the Declaration, Mr. Tsuei attests that he is an experienced patent
`litigation attorney and has an established familiarity with the subject matter
`in this proceeding. Ex. 2006 ¶¶ 9–10. Mr. Tsuei further declares that he has
`
`2
`
`
`
`IPR2019-01035
`Patent 9,769,477 B2
`
`
`not been suspended or disbarred from practice before any court or
`administrative body (id. ¶ 3), has never had an application for admission to
`practice before any court or administrative body denied (id. ¶ 4), and has not
`had any sanction or contempt citation imposed by any court or
`administrative body (id. ¶ 5).
`Mr. Tsuei further states that he has read and will comply with the
`Office Patent Trial Practice Guide and the Board’s Rule of Practice for
`Trials as set forth in 37 C.F.R. § 42 (id. ¶ 6), and agrees to be subject to the
`USPTO Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et
`seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a) (id. ¶ 7).
`Patent Owner must update its mandatory notices as required by
`37 C.F.R. § 42.8(b)(3).
`
`It is
`ORDERED that Patent Owner’s Motion for pro hac vice admission of
`James S. Tsuei is granted;
`FURTHER ORDERED that Patent Owner must file an updated
`mandatory notice identifying Mr. Tsuei as back-up counsel in accordance
`with 37 C.F.R. § 42.8(b)(3);
`FURTHER ORDERED that Patent Owner is to continue to have a
`registered practitioner represent it as lead counsel for the instant proceeding;
`FURTHER ORDERED that Mr. Tsuei shall comply with the Office
`Patent Trial Practice Guide (84 Fed. Reg. 64,280 (Nov. 21, 2019)), and the
`Board’s Rules of Practice for Trials, as set forth in Part 42 of Title 37, Code
`of Federal Regulations; and
`
`3
`
`
`
`IPR2019-01035
`Patent 9,769,477 B2
`
`
`FURTHER ORDERED that Mr. Tsuei 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 seq.
`
`PETITIONER:
`
`Naveen Modi
`Joseph Palys
`Phillip Citroen
`PAUL HASTINGS LLP
`naveenmodi@paulhastings.com
`josephpalys@paulhastings.com
`phillipcitroen@paulhastings.com
`
`
`PATENT OWNER:
`Philip X. Wang
`Jay Chung
`Neil A. Rubin
`Kent Shum
`Reza Mirzaie
`RUSS AUGUST & KABAT
`pwang@raklaw.com
`jchung@raklaw.com
`nrubin@raklaw.com
`kshum@raklaw.com
`rmirzaie@raklaw.com
`
`4
`
`
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