`571-272-7822
`
`Paper 12
`Date: September 15, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BAYERISCHE MOTOREN WERKE AKTIENGESELLSCHAFT and
`BMW OF NORTH AMERICA, LLC,
`Petitioners,
`v.
`PAICE LLC and
`THE ABELL FOUNDATION, INC.,
`Patent Owners.
`
`IPR2020-00994
`Patent 7,104,347 B2
`
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`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`PESLAK, Administrative Patent Judge.
`
`DECISION
`Granting Petitioners’ Motion for
`Pro Hac Vice Admission of Jacob Z. Zambrzycki
`37 C.F.R. § 42.10
`
`
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`IPR2020-00994
`Patent 7,104,347 B2
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`
`Petitioner filed a motion for pro hac vice admission of Jacob Z.
`Zambrzycki (Paper 7 (“Motion” or “Mot.”)) in the above-identified
`proceeding. A supporting Declaration from Mr. Zambrzycki was included
`as part of the Motion. Ex. 1059 (“Declaration”). Petitioner represents that
`Patent Owner does not object to Mr. Zambrzycki being admitted pro hac
`vice in this proceeding. Mot. 2.
`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 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”)).
`In this proceeding, lead counsel for Petitioner, Jeffrey D. Sanok, a
`registered practitioner, filed the Motion. Mot. 4. In the Motion, Petitioner
`contends there is good cause for the Board to recognize Mr. Zambrzycki pro
`hac vice during this proceeding because he “is an experienced litigation
`attorney,” “is extremely familiar with the subject matter at issue in these
`proceedings,” and “has gained relevant technical knowledge and experience
`in the field of electric hybrid vehicles and the various prior art references
`cited in the Petition.” Id. at 2–3; see Ex. 1059 ¶ 7.
`Mr. Zambrzycki’s Declaration complies with the requirements for pro
`hac vice admission. Ex. 1059 ¶¶ 1–7; see Unified Patents, slip op. at 3–4.
`In particular, Mr. Zambrzycki states, inter alia, the he is a member in good
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`IPR2020-00994
`Patent 7,104,347 B2
`standing of the Bars of the States of New York and California, has never
`been suspended, disbarred, sanctioned, or cited for contempt by any court or
`administrative body, and has never had a court or administrative body deny
`his application for admission to practice. Ex. 1059 ¶¶ 1–3.
`Having reviewed the Motion and supporting Declaration, we
`determine good cause exists for granting admission pro hac vice to Mr.
`Zambrzycki.
`
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Motion is granted, and Jacob Z. Zambrzycki is
`authorized to represent Petitioner only as back-up counsel in the above-
`identified proceeding;
`FURTHER ORDERED that a registered practitioner will continue to
`represent Petitioner as lead counsel in the above-identified proceeding;
`FURTHER ORDERED that Mr. Zambrzycki shall comply with the
`November 2019 PTAB Consolidated Trial Practice Guide 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. Zambrzycki is subject to the
`USPTO’s Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et
`seq. and to the USPTO’s disciplinary jurisdiction under 37 C.F.R.
`§ 11.19(a).
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`IPR2020-00994
`Patent 7,104,347 B2
`FOR PETITIONER:
`
`Jeffrey D. Sanok
`Vincent J. Galluzzo
`Scott L. Bittman
`Jacob Z. Zambrzycki
`CROWELL & MORING LLP
`jsanok@crowell.com
`vgalluzzo@crowell.com
`sbittman@crowell.com
`jzambrzycki@crowell.com
`
`
`
`FOR PATENT OWNER:
`
`Ruffin B. Cordell
`Indranil Mukerji
`Brian J. Livedalen
`FISH & RICHARDSON P.C.
`cordell@fr.com
`mukerji@fr.com
`livedalen@fr.com
`IPR36351-0004IP1@fr.com
`PTABInbound@fr.com
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