Trials@uspto.gov
`571-272-7822
`
`Paper: 42
` Entered: February 16, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG DISPLAY CO., LTD. and APPLE INC.,
`Petitioner,
`
`v.
`
`SOLAS OLED, LTD.,
`Patent Owner.
`____________
`
`IPR2020-001401
`Patent 6,072,450
`____________
`
`
`
`Before SALLY C. MEDLEY, JESSICA C. KAISER, and JULIA HEANEY,
`Administrative Patent Judges.
`
`HEANEY, Administrative Patent Judge.
`
`
`ORDER
`Granting Patent Owner’s Motion for Admission
`Pro Hac Vice of Marc A. Fenster
`37 C.F.R. § 42.10
`
`
`
`
`1 Apple Inc., who filed a petition in IPR2020-01059, has been joined as a petitioner
`in this proceeding.
`
`

`

`IPR2020-00140
`Patent 6,072,450
`
`
`On February 4, 2021, Patent Owner filed a Motion for Admission Pro Hac
`Vice of Marc A. Fenster. Paper 38 (“Motion”). Patent Owner also filed a
`Declaration of Mr. Fenster in support of the Motion. Paper 37 (“Declaration”).2
`Patent Owner attests that Petitioner does not oppose the Motion. Paper 38, 1–2.
`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 its notice authorizing motions for
`pro hac vice admission, the Board requires 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. See Paper 4, 2
`(citing Unified Patents, Inc. v. Parallel Iron, LLC, IPR2013-00639, Paper 7 (PTAB
`Oct. 15, 2013) (representative “Order – Authorizing Motion for Pro Hac Vice
`Admission”)).
`Based on the facts set forth in the Motion and the accompanying
`Declaration,3 we conclude that Mr. Fenster has sufficient legal and technical
`qualifications to represent Patent Owner in this proceeding, that Mr. Fenster has
`
`
`2 Patent Owner filed the Declaration as a Paper. Patent Owner is reminded that
`affidavits and declarations must be filed as exhibits so that they may be referenced
`individually by exhibit number. See 37 C.F.R. § 42.63.
`3 Unified Patents indicates that “A motion for pro hac vice admission must: . . . Be
`accompanied by an affidavit or declaration of the individual seeking to appear
`attesting to the following: . . . All other proceedings before the Office for which the
`individual has applied to appear pro hac vice in the last three (3) years.” See
`Unified Patents, Paper 7 at 3. The Declaration of Mr. Fenster fails to identify any
`other proceedings before the Office for which Mr. Fenster has applied to appear
`pro hac vice. See Paper 37. For the purposes of this Order, we deem this harmless
`error, and treat the omission as a representation that Mr. Fenster has not applied to
`appear pro hac vice in any proceedings before the Office in the last three years.
`2
`
`
`
`

`

`IPR2020-00140
`Patent 6,072,450
`
`demonstrated sufficient familiarity with the subject matter of this proceeding, that
`Mr. Fenster meets all other requirements for admission pro hac vice, and that
`Patent Owner’s intent to be represented by counsel with litigation experience is
`warranted. Accordingly, Patent Owner has established good cause for pro hac vice
`admission of Mr. Fenster. Mr. Fenster will be permitted to serve as back-up
`counsel only. See 37 C.F.R. § 42.10(c).
`We note that Patent Owner has filed a Power of Attorney including Mr.
`Fenster in accordance with 37 C.F.R. § 42.10(b). Paper 36. Patent Owner has also
`filed a Mandatory Notice identifying Mr. Fenster as back-up counsel in accordance
`with 37 C.F.R. § 42.8(b)(3). Paper 35.
`Accordingly, it is:
`ORDERED that Patent Owner’s Motion for pro hac vice admission of Mr.
`Marc A. Fenster is granted;
`FURTHER ORDERED that Patent Owner is to continue to have a registered
`practitioner represent it as lead counsel for this proceeding;
`FURTHER ORDERED that Mr. Fenster is authorized to represent Patent
`Owner only as back-up counsel in this proceeding;
`FURTHER ORDERED that Mr. Fenster is to comply with the Consolidated
`Trial Practice Guide4 (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
`FURTHER ORDERED that Mr. Fenster 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.
`
`
`4 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`3
`
`
`
`

`

`IPR2020-00140
`Patent 6,072,450
`
`For Petitioner:
`
`David A. Garr
`Peter P. Chen
`Grant Johnson
`COVINGTON & BURLING LLP
`dgarr@cov.com
`pchen@cov.com
`gjohnson@cov.com
`
`For Patent Owner:
`
`Neil A. Rubin
`Reza Mirzaie
`Kent N. Shum
`RUSS AUGUST & KABAT
`nrubin@raklaw.com
`rmirzaie@raklaw.com
`kshum@raklaw.com
`
`
`
`4
`
`