`Tel: 571-272-7822
`
`
`
`Paper 21
`Entered: October 15, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`QUALCOMM INCORPORATED,
`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)1
`
`_______________
`
`
`
`Before KRISTEN L. DROESCH, BARBARA A. PARVIS, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Petitioner’s Motions for Admission Pro Hac Vice
`of Jonah D. Mitchell and Christine M. Morgan
`37 C.F.R. § 42.10(c)
`
`
`1 This Order addresses issues that are the same in all above-captioned
`proceedings. We exercise our discretion to issue one Order to be filed in
`each proceeding. The parties are not authorized to use this style heading in
`subsequent papers.
`
`
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)
`
`
`Petitioner filed motions for admission pro hac vice of Mr. Jonah D.
`Mitchell (Paper 162) and Ms. Christine M. Morgan (Paper 17) in each of the
`above-captioned proceedings (collectively, “Motions”). The Motions are
`supported by Declarations of Mr. Mitchell (Ex. 1030) and Ms. Morgan
`(Ex. 1031). Petitioner represents that Patent Owner does not object to
`Mr. Mitchell (Paper 16, 5) and Mr. Kahn (Paper 17, 5) being admitted pro
`hac vice in the above-captioned proceedings.
`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 these proceedings. See Paper 5, 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 Motions and the accompanying
`Declarations, we conclude that Mr. Mitchell and Ms. Morgan have sufficient
`legal and technical qualifications to represent Petitioner in these
`proceedings, that Mr. Mitchell and Ms. Morgan have demonstrated
`sufficient familiarity with the subject matter of these proceedings, that Mr.
`
`
`2 Paper and exhibit numbers refer to Proceeding IPR2021-00375.
`Corresponding papers and exhibits were filed in IPR2021-00377 and
`IPR2021-00582.
`
`2
`
`
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)
`
`Mitchell and Ms. Morgan meet all other requirements for admission pro hac
`vice, and that Petitioner’s intent to be represented by counsel with litigation
`experience is warranted. Accordingly, Petitioner has established good cause
`for pro hac vice admission of Mr. Mitchell and Ms. Morgan. Mr. Mitchell
`and Ms. Morgan will be permitted to serve as back-up counsel only. See
`37 C.F.R. § 42.10(c).
`Accordingly, it is:
`ORDERED that Petitioner’s Motions for pro hac vice admission of
`Mr. Mitchell and Ms. Morgan are granted;
`FURTHER ORDERED that Petitioner is to continue to have a
`registered practitioner represent it as lead counsel for these proceedings;
`FURTHER ORDERED that Mr. Mitchell and Ms. Morgan are
`authorized to represent Petitioner as back-up counsel only in these
`proceedings;
`FURTHER ORDERED that Mr. Mitchell and Ms. Morgan are to
`comply with the Consolidated Trial Practice Guide3 (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. Mitchell and Ms. Morgan 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.
`
`
`
`
`3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`3
`
`
`
`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
`jdetrixhe@reedsmith.com
`pchassman@reedsmith.com
`
`PATENT OWNER:
`
`Jay Kesan
`jay@jaykesan.com
`
`Alfonso Chan
`achan@shorechan.com
`
`
`4
`
`
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