`
` Paper 14
`Trials@uspto.gov
`571-272-7822 Entered: May 19, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`QUALCOMM INC.,
`Petitioner
`
`v.
`
`MONTEREY RESEARCH, LLC,
`Patent Owner.
`____________
`
`IPR2020-01492
`Patent 6,651,134 B1
`____________
`
`
`
`Before KRISTEN L. DROESCH, JOHN F. HORVATH, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`MELVIN, Administrative Patent Judge.
`
`
`ORDER
`Granting Patent Owner’s Unopposed Motion
`for Pro Hac Vice Admission of Michael A. Wueste
`37 C.F.R. § 42.10
`
`
`
`
`
`IPR2020-01492
`Patent 6,651,134 B1
`On May 13, 2021, Monterey Research, LLC (“Patent Owner”) filed a
`motion for pro hac vice admission of Michael A. Wueste in the
`above-identified proceeding. Paper 13 (“Motion” or “Mot.”). 1 Patent
`Owner states that “Petitioner has indicated that they do not oppose this
`motion.” Mot. 1. The Motion is 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 5, 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 its Motion, Patent Owner states that there is good cause for the
`Board to recognize Michael A. Wueste pro hac vice during this proceeding
`because he “is an experienced litigator and has an established familiarity
`with the subject matter at issue in the proceeding,” and because “Mr. Wueste
`also demonstrates that he has a detailed working knowledge of the relevant
`subject matter through his participation in a litigation involving the ’134
`Patent.” Mot. 2.
`The Motion is supported by a declaration of Mr. Wueste (Ex. 2005,
`“Decl.”) that attests to Patent Owner’s statements and complies with the
`requirements set forth in the Notice. See Decl. ¶¶ 1–11.
`
`
`1 We cite to Papers and Exhibits (“Ex.”) in IPR2020-01492.
`2
`
`
`
`
`
`IPR2020-01492
`Patent 6,651,134 B1
`Upon consideration, Patent Owner has demonstrated that Mr. Wueste
`has sufficient legal and technical qualifications and familiarity with the
`subject matter at issue, and that there is a need for Patent Owner to have
`counsel with his experience. See, e.g., Decl. ¶¶ 1–2, 9–10; Mot. 1–3. Patent
`Owner therefore has established good cause for admitting Mr. Wueste pro
`hac vice in this proceeding.
`Accordingly, it is
`ORDERED that Patent Owner’s Motion for pro hac vice admission of
`Michael A. Wueste for this proceeding is granted; Mr. Wueste is authorized
`to act as back-up counsel in this proceeding only;
`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. Wueste is to comply with the
`Consolidated 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
`FURTHER ORDERED that Mr. Wueste 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.
`
`
`
`
`
`3
`
`
`
`IPR2020-01492
`Patent 6,651,134 B1
`FOR PETITIONER:
`
`Eagle H. Robinson
`Daniel S. Leventhal
`Richard S. Zembek
`Hao Wu
`NORTON ROSE FULBRIGHT US LLP
`eagle.robinson@nortonrosefulbright.com
`daniel.leventhal@nortonrosefulbright.com
`richard.zembek@nortonrosefulbright.com
`hao.wu@nortonrosefulbright.com
`
`FOR PATENT OWNER:
`
`Theodoros Konstantakopoulos
`Yung-Hoon Ha
`Christian M. Dorman
`DESMARAIS LLP
`tkonstantakopoulos@desmaraisllp.com
`yha@desmaraisllp.com
`cdorman@desmaraisllp.com
`
`
`
`
`
`
`
`4
`
`
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