Paper: 19
`Trials@uspto.gov
`571-272-7822 Entered: April 22 , 2021
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`BAYERISCHE MOTOREN WERKE AKTIENGESELLSCHAFT &
`BMW OF NORTH AMERICA, LLC,
`Petitioner,
`
`v.
`
`PAICE LLC & THE ABELL FOUNDATION, INC.,
`Patent Owner.
`____________
`
`IPR2020-01299 (Patent 8,630,761 B2)
`IPR2020-01386 (Patent 7,237,634 B2)
`__________
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`ARTHUR M. PESLAK, Administrative Patent Judges.1
`
`PESLAK, Administrative Patent Judge.
`
`
`ORDER
`Granting Petitioner’s Motions
`for Pro Hac Vice Admission of Jacob Z. Zambrzycki
`37 C.F.R. § 42.10
`
`
`1 This Order addresses issues that are identical in each of the
`above-captioned proceedings. We therefore exercise our discretion to issue
`one Order to be filed in each proceeding. The proceedings have not been
`consolidated, and the Parties are not authorized to use this style heading in
`any subsequent papers.
`
`
`Trials@uspto.gov
`571-272-7822 Entered: April 22 , 2021
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`BAYERISCHE MOTOREN WERKE AKTIENGESELLSCHAFT &
`BMW OF NORTH AMERICA, LLC,
`Petitioner,
`
`v.
`
`PAICE LLC & THE ABELL FOUNDATION, INC.,
`Patent Owner.
`____________
`
`IPR2020-01299 (Patent 8,630,761 B2)
`IPR2020-01386 (Patent 7,237,634 B2)
`__________
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`ARTHUR M. PESLAK, Administrative Patent Judges.1
`
`PESLAK, Administrative Patent Judge.
`
`
`ORDER
`Granting Petitioner’s Motions
`for Pro Hac Vice Admission of Jacob Z. Zambrzycki
`37 C.F.R. § 42.10
`
`
`1 This Order addresses issues that are identical in each of the
`above-captioned proceedings. We therefore exercise our discretion to issue
`one Order to be filed in each proceeding. The proceedings have not been
`consolidated, and the Parties are not authorized to use this style heading in
`any subsequent papers.
`
`
`
`IPR2020-01299 (Patent 8,630,761 B2)
`IPR2020-01386 (Patent 7,237,634 B2)
`
`
`Bayerische Motoren Werke Aktiengesellschaft and BMW of North
`America, LLC (collectively “Petitioner”) filed a motion for pro hac vice
`admission of Jacob Z. Zambrzycki in each of the above-captioned
`proceedings. Paper 16 (“Mot.”, “Motion”).2 Petitioner states in each
`Motion that “Patent Owners have indicated that they do not oppose this
`motion.” Mot. 2. The Motions are granted.
`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”)) (“Notice”).
`In each Motion, Petitioner states that there is good cause for the Board
`to recognize Jacob Z. Zambrzycki pro hac vice during these proceedings
`because “Mr. Zambrzycki is an experienced litigation attorney,” “has been
`involved in numerous litigations involving patent infringement in U.S.
`District Courts across the country, the U.S. Court of Appeals for the Federal
`Circuit, and the International Trade Commission,” and “has been a litigation
`attorney for over 10 years, and has represented a wide range of clients in
`patent litigation matters.” Mot. 2. Petitioner further states that “Mr.
`
`
`2 We cite to Papers in IPR2020-01299. Similar items were filed in
`IPR2020-01386.
`
`2
`
`
`
`
`
`IPR2020-01299 (Patent 8,630,761 B2)
`IPR2020-01386 (Patent 7,237,634 B2)
`
`Zambrzycki is extremely familiar with the subject matter at issue in this
`proceeding” because he “was involved in preparing the Petition in this
`proceeding[] and in the related [IPRs],” in which he is applying for or has
`been granted permission to appear pro hac vice, and, “[t]hroughout this
`process, Mr. Zambrzycki 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 3.
`Each Motion is supported by a Declaration (including a biography) of
`Mr. Zambrzycki (Ex. 1087, “Decl.”) that attests to the statements above and
`complies with the requirements set forth in the Notice. See Decl. ¶¶ 1–9.
`Upon consideration, Petitioner has demonstrated that Mr. Zambrzycki
`has sufficient legal and technical qualifications and familiarity with the
`subject matter at issue, and that there is a need for Petitioner to have counsel
`with his experience. See, e.g., Decl. ¶¶ 1, 7, 9; Mot. 2–4. Petitioner
`therefore has established good cause for admitting Mr. Zambrzycki pro hac
`vice in each of the above-captioned proceedings.
`Accordingly, it is
`ORDERED that Petitioner’s Motions for pro hac vice admission of
`Jacob Z. Zambrzycki in the above-captioned proceedings are granted;
`Mr. Zambrzycki is authorized to act as back-up counsel in these proceedings
`only;
`
`FURTHER ORDERED that Petitioner is to continue to have a
`registered practitioner represent it as lead counsel for these proceedings;
`FURTHER ORDERED that Mr. Zambrzycki shall comply with the
`Consolidated Trial Practice Guide, 84 Fed. Reg. 64,280 (Nov. 21, 2019), and
`
`
`
`3
`
`
`
`IPR2020-01299 (Patent 8,630,761 B2)
`IPR2020-01386 (Patent 7,237,634 B2)
`
`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 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
`
`
`
`IPR2020-01299 (Patent 8,630,761 B2)
`IPR2020-01386 (Patent 7,237,634 B2)
`
`FOR PETITIONER:
`
`Jeffrey D. Sanok
`Vincent J. Galluzzo
`Scott L. Bittman
`CROWELL & MORING LLP
`jsanok@crowell.com
`vgalluzzo@crowell.com
`sbittman@crowell.com
`
`FOR PATENT OWNER:
`
`Ruffin B. Cordell
`Brian J. Livedalen
`Timothy W. Riffe
`FISH & RICHARDSON P.C.
`cordell@fr.com
`bvl@fr.com
`riffe@fr.com
`
`
`
`
`
`
`5
`
`
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