Paper No. 11
`
`Trials@uspto.gov
`Entered: March 23, 2020
`
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`LENOVO HOLDING COMPANY, INC., LENOVO (UNITED STATES)
`INC., AND MOTOROLA MOBILITY LLC,
`Petitioner,
`
`v.
`
`DODOTS LICENSING SOLUTIONS LLC,
`Patent Owner.
`_______________
`
`IPR2019-00988 (Patent 9,369,545 B2)
`IPR2019-01278 (Patent 8,020,083 B1)
` IPR2019-01279 (Patent 8,510,407 B1)1
`_______________
`
`
`Before GRACE KARAFFA OBERMANN, JAMES A. WORTH,
`AMBER L. HAGY, SHARON FENICK, and PAUL J. KORNICZKY,
`Administrative Patent Judges.2
`
`KORNICZKY, Administrative Patent Judge.
`
`
`ORDER
`Conditionally Granting Patent Owner’s Motions for Pro Hac Vice
`Admission of Perry M. Goldberg
`37 C.F.R. § 42.10
`
`
`1 This Order applies to each of the listed cases. The parties are not
`authorized to use this caption for subsequent papers.
`2 This is not an expanded panel. Rather, we exercise our discretion to issue a
`common paper in each proceeding, which have overlapping panel members,
`with a joint caption.
`
`
`
`Trials@uspto.gov
`Entered: March 23, 2020
`
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`LENOVO HOLDING COMPANY, INC., LENOVO (UNITED STATES)
`INC., AND MOTOROLA MOBILITY LLC,
`Petitioner,
`
`v.
`
`DODOTS LICENSING SOLUTIONS LLC,
`Patent Owner.
`_______________
`
`IPR2019-00988 (Patent 9,369,545 B2)
`IPR2019-01278 (Patent 8,020,083 B1)
` IPR2019-01279 (Patent 8,510,407 B1)1
`_______________
`
`
`Before GRACE KARAFFA OBERMANN, JAMES A. WORTH,
`AMBER L. HAGY, SHARON FENICK, and PAUL J. KORNICZKY,
`Administrative Patent Judges.2
`
`KORNICZKY, Administrative Patent Judge.
`
`
`ORDER
`Conditionally Granting Patent Owner’s Motions for Pro Hac Vice
`Admission of Perry M. Goldberg
`37 C.F.R. § 42.10
`
`
`1 This Order applies to each of the listed cases. The parties are not
`authorized to use this caption for subsequent papers.
`2 This is not an expanded panel. Rather, we exercise our discretion to issue a
`common paper in each proceeding, which have overlapping panel members,
`with a joint caption.
`
`
`
`IPR2019-00988 (Patent 9,369,545 B2)
`IPR2019-01278 (Patent 8,020,083 B1)
`IPR2019-01279 (Patent 8,510,407 B1)
`
`
`Patent Owner filed motions for pro hac vice admission of Perry M.
`Goldberg in each of the above-identified proceedings (IPR2019-00988,
`Paper 16; IPR2019-01278, Paper 10; IPR2019-01279, Paper 9 (“Motions”)),
`accompanied by declarations in support of the Motions (IPR2019-00988,
`Ex. 2004; IPR2019-01278, Ex. 2001; IPR2019-01279, Ex. 2001
`(“Declarations”)). Petitioner has not opposed the Motions.
`
`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
`motions 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. Unified Patents, Inc. v.
`Parallel Iron, LLC, IPR2013-00639 (PTAB Oct. 15, 2013, Paper 7)
`(representative “Order – Authorizing Motion for Pro Hac Vice Admission”).
`
`Lead Counsel for Patent Owner is Lewis E. Hudnell, III, a registered
`practitioner. Patent Owner states that there is good cause for the Board to
`recognize Mr. Goldberg pro hac vice during the above-identified
`proceedings because Mr. Goldberg represents Patent Owner in a related
`matter. See Motions.
`Mr. Goldberg’s Declarations attest to, and sufficiently explain, the
`required facts. See Declarations. The Declarations comply with the
`requirements for pro hac vice admission and show that Mr. Goldberg is an
`experienced attorney having established familiarity with the subject matter at
`issue in the above-identified proceedings. See id. The Declarations further
`
`2
`
`
`
`IPR2019-00988 (Patent 9,369,545 B2)
`IPR2019-01278 (Patent 8,020,083 B1)
`IPR2019-01279 (Patent 8,510,407 B1)
`
`acknowledge that Mr. Goldberg is subject to the USPTO Rules of
`Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and the
`Office’s disciplinary jurisdiction under 37 C.F.R. § 11.19(a). See id.
`Upon review of the record before us, we note that Mr. Goldberg’s
`Declarations do not include the date on which the Declarations were
`executed in accordance with 28 U.S.C. § 1746.3 In view thereof, and for the
`reasons set forth below, Patent Owner’s Motions are conditionally granted,
`and are to be effective after Patent Owner files Declarations that include a
`date on which the Declarations were executed.
`Patent Owner has demonstrated that Mr. Goldberg has sufficient legal
`and technical qualifications to represent Patent Owner in the above-
`identified proceedings. Accordingly, Patent Owner has established that
`there is good cause for admitting Mr. Goldberg. Mr. Goldberg may be
`designated as back-up counsel only.
`
`
`It is
`ORDERED that Patent Owner’s Motions for Pro Hac Vice Admission
`of Perry M. Goldberg are conditionally granted, provided that within ten
`(10) business days of the date of this order, Patent Owner must submit
`Declarations that include a date on which the Declarations were executed in
`accordance with 28 U.S.C. § 1746, and that Mr. Goldberg is authorized to
`
`
`3 28 U.S.C. § 1746 requires unsworn declarations executed within the U.S.
`to have substantially the following form: “I declare (or certify, verify, or
`state) under penalty of perjury that the foregoing is true and correct.
`Executed on (date). (Signature)” (emphasis added).
`
`3
`
`
`
`IPR2019-00988 (Patent 9,369,545 B2)
`IPR2019-01278 (Patent 8,020,083 B1)
`IPR2019-01279 (Patent 8,510,407 B1)
`
`represent Patent Owner as back-up counsel only in the above-identified
`proceedings;
`FURTHER ORDERED that Patent Owner should continue to have a
`registered practitioner as lead counsel in the above-identified proceedings;
`FURTHER ORDERED that Mr. Goldberg shall comply with the
`Consolidated Trial Practice Guide4, see 84 Fed. Reg. 64,280 (Nov. 21,
`2019), 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. Goldberg shall be subject to the
`USPTO Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et
`seq. and the Office’s disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
`
`
`
`
`
`
`4 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`4
`
`
`
`IPR2019-00988 (Patent 9,369,545 B2)
`IPR2019-01278 (Patent 8,020,083 B1)
`IPR2019-01279 (Patent 8,510,407 B1)
`
`For PETITIONER:
`Charanjit Brahma
`Dustin Weeks
`TROUTMAN SANDERS LLP
`charanjit.brahma@troutmansanders.com
`dustin.weeks@troutmansanders.com
`
`For PATENT OWNER:
`Lewis Hudnell, III
`HUDNELL LAW GROUP P.C.
`lewis@hudnelllaw.com
`
`
`5
`
`
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