Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
` Paper No. 58
` Entered: May 10, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`QUALCOMM INCORPORATED and
`ZYXEL COMMUNICATIONS CORPORATION,1
`Petitioner,
`
`v.
`
`UNM RAINFOREST INNOVATIONS,
`Patent Owner.
`____________
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)2
`___________
`
`
`
`Before KRISTEN L. DROESCH, BARBARA A. PARVIS, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Patent Owner’s Motions for Pro Hac Vice
`Admission of Henning Schmidt and Cecil E. Key
`37 C.F.R. § 42.10
`
`
`1 ZyXEL Communications Corporation was joined as a petitioner in these
`proceedings based on petitions and motions for joinder filed in IPR2021-
`00734, IPR2021-00739, and IPR2021-00741, respectively.
`2 This Order addresses overlapping issues in the cases listed above.
`Therefore, we issue one Order to be filed in each case. The parties,
`however, are not authorized to use this style of filing.
`
`
`
`
`571.272.7822
`
`
`
`
`
`
` Paper No. 58
` Entered: May 10, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`QUALCOMM INCORPORATED and
`ZYXEL COMMUNICATIONS CORPORATION,1
`Petitioner,
`
`v.
`
`UNM RAINFOREST INNOVATIONS,
`Patent Owner.
`____________
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)2
`___________
`
`
`
`Before KRISTEN L. DROESCH, BARBARA A. PARVIS, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Patent Owner’s Motions for Pro Hac Vice
`Admission of Henning Schmidt and Cecil E. Key
`37 C.F.R. § 42.10
`
`
`1 ZyXEL Communications Corporation was joined as a petitioner in these
`proceedings based on petitions and motions for joinder filed in IPR2021-
`00734, IPR2021-00739, and IPR2021-00741, respectively.
`2 This Order addresses overlapping issues in the cases listed above.
`Therefore, we issue one Order to be filed in each case. The parties,
`however, are not authorized to use this style of filing.
`
`
`
`
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)
`
`On April 28, 2022, Patent Owner filed Motions for Pro Hac Vice
`Admission of Henning Schmidt (Paper 52)3 and Cecil E. Key (Paper 53) in
`the above-captioned proceedings (collectively, “Motions”). Additionally,
`Patent Owner filed Declarations of Mr. Schmidt (Ex. 2016) and Mr. Key
`(Ex. 2017)4 in support of the Motions (collectively, “Declarations”). The
`Motions do not state if they are opposed, but Petitioner did not file an
`opposition to the Motions.
`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, subject to
`the condition that lead counsel be a registered practitioner. The
`representative Order authorizing motions for pro hac vice admission requires
`a statement of facts showing there is good cause for us to recognize counsel
`pro hac vice, and an affidavit or declaration of the individual seeking to
`appear. See Paper 5, 2 (citing Unified Patents, Inc. v. Parallel Iron, LLC,
`IPR2013-00639 (PTAB Oct. 15, 2013) (Paper 7) (representative “Order –
`Authorizing Motion for Pro Hac Vice Admission”)).
`Based on the facts set forth in the Motions and the accompanying
`Declarations, we conclude that Mr. Schmidt and Mr. Key have sufficient
`legal and technical qualifications to represent Patent Owner in the above-
`captioned proceedings, that Mr. Schmidt and Mr. Key have demonstrated
`sufficient familiarity with the subject matter of the proceedings, and that Mr.
`Schmidt and Mr. Key meet all other requirements for admission pro hac
`
`
`3 Unless otherwise noted, we cite to the papers and exhibits filed in
`IPR2021-00375. Similar papers and exhibits were filed in IPR2021-00377
`and IPR2021-00582.
`4 Citations to Exhibit 2017 refer to the corrected version filed May 2, 2022.
`
`2
`
`
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)
`
`vice. We further conclude that Patent Owner’s interest in being represented
`in the above-captioned proceedings by counsel with litigation experience
`weighs in favor of granting the Motions. Accordingly, Patent Owner has
`established good cause for pro hac vice admission of Mr. Schmidt and Mr.
`Key. Mr. Schmidt and Mr. Key will be permitted to serve as back-up
`counsel only. See 37 C.F.R. § 42.10(c).
`We note that Patent Owner’s Power of Attorney does not include Mr.
`Schmidt and Mr. Key. See Paper 7. Therefore, Patent Owner must submit a
`Power of Attorney for Mr. Schmidt and Mr. Key in accordance with
`37 C.F.R. § 42.10(b). Patent Owner also must update its Mandatory Notices
`to identify Mr. Schmidt and Mr. Key in accordance with 37 C.F.R.
`§ 42.8(b)(3). See Paper 6.
`Accordingly, it is:
`ORDERED that Patent Owner’s Motions for Pro Hac Vice Admission
`of Henning Schmidt (IPR2021-00375, Paper 52; IPR2021-00377, Paper 50;
`IPR2021-00582, Paper 48) and Cecil E. Key (IPR2021-00375, Paper 53;
`IPR2021-00377, Paper 51; IPR2021-00582, Paper 49) are granted;
`FURTHER ORDERED that, within one (1) business day of the date
`of this Order, Patent Owner must submit a Power of Attorney for
`Mr. Schmidt and Mr. Key in accordance with 37 C.F.R. § 42.10(b);
`FURTHER ORDERED that Patent Owner must file updated
`Mandatory Notices identifying Mr. Schmidt and Mr. Key as back-up counsel
`in accordance with 37 C.F.R. § 42.8(b)(3);
`FURTHER ORDERED that Mr. Schmidt and Mr. Key are authorized
`to represent Patent Owner only as back-up counsel in the above-captioned
`proceedings;
`
`3
`
`
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)
`
`FURTHER ORDERED that Patent Owner is to continue to have a
`registered practitioner represent it as lead counsel in the above-captioned
`proceedings;
`FURTHER ORDERED that Mr. Schmidt and Mr. Key are to comply
`with the Consolidated Trial Practice Guide5 (84 Fed. Reg. 64,280 (Nov. 21,
`2019)), and the Board’s Rules of Practice for Trials, as set forth in Part 42 of
`37 C.F.R.;6 and
`FURTHER ORDERED that Mr. Schmidt and Mr. Key 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.
`
`
`
`
`
`5 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`6 Each of the Declarations states “I have read and will comply with the
`Office Patent Trial Practice Guide and the Board’s Rules of Practice for
`Trials, as set forth in Part 42 of the C.F.R..” Ex. 2016 ¶ 9; Ex. 2017 ¶ 9.
`The Office Patent Trial Practice Guide and the Board’s Rules of Practice for
`Trials are set forth in Part 42 of Title 37, Code of Federal Regulations. We
`deem this harmless error.
`
`4
`
`
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)
`
`
`PETITIONER:
`Jonathan Detrixhe
`Peter Chassman
`REED SMITH LLP
`jdetrixhe@reedsmith.com
`pchassman@reedsmith.com
`
`PATENT OWNER:
`Jay Kesan
`DIMUROGINSBERG, PC
`DGKEYIP GROUP
`jay@jaykesan.com
`
`Alfonso Chan
`SHORE CHAN LLP
`achan@shorechan.com
`
`5
`
`
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