`Trials@uspto.gov
`571-272-7822
`
`
`Paper 26
`Date: January 6, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`Petitioner,
`
`v.
`
`STRATOSAUDIO, INC.,
`Patent Owner.
`____________
`
`IPR2021-00712 (Patent 8,903,307 B2)
`IPR2021-00716 (Patent 8,688,028 B2)
`IPR2021-00720 (Patent 9,355,405 B2)
` IPR2021-00721 (Patent 8,166,081 B2)1
`____________
`
`Before JUSTIN T. ARBES and HYUN J. JUNG, Administrative Patent
`Judges.
`
`ARBES, Administrative Patent Judge.
`
`ORDER
`Granting Petitioner’s Motions for Pro Hac Vice Admission
`of Mark Hannemann and Thomas Makin
`37 C.F.R. § 42.10(c)
`
`
`1 This Order addresses issues pertaining to all four cases. Therefore, we
`exercise our discretion to issue a single Order to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`
`
`IPR2021-00712 (Patent 8,903,307 B2)
`IPR2021-00716 (Patent 8,688,028 B2)
`IPR2021-00720 (Patent 9,355,405 B2)
`IPR2021-00721 (Patent 8,166,081 B2)
`
`In each of the instant proceedings, Petitioner filed motions requesting
`pro hac vice admission of Mark Hannemann and Thomas Makin, along with
`supporting declarations from Mr. Hannemann and Mr. Makin. 2 Petitioner
`states that Patent Owner does not oppose the motions. See Paper 23, 1;
`Paper 24, 1. For the reasons stated below, Petitioner’s motions are granted.
`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 and to any other conditions as the Board may
`impose.” 37 C.F.R. § 42.10(c). For example, where the lead counsel is a
`registered practitioner, a non-registered practitioner may be permitted to
`appear pro hac vice “upon showing that counsel is an experienced litigating
`attorney and has an established familiarity with the subject matter at issue in
`the proceeding.” Id. In authorizing motions 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. Paper 3, 2
`(citing Unified Patents, Inc. v. Parallel Iron, LLC, IPR2013-00639, Paper 7
`(PTAB Oct. 15, 2013) (“Order – Authorizing Motion for Pro Hac Vice
`Admission”)).
`In the motions, Petitioner asserts that there is good cause for pro hac
`vice admission because Mr. Hannemann and Mr. Makin (1) are “experienced
`
`
`2 Petitioner filed similar papers and exhibits in each of the instant
`proceedings. See IPR2021-00712, Papers 23, 24, Exs. 1016, 1017;
`IPR2021-00716, Papers 23, 24, Exs. 1010, 1011; IPR2021-00720,
`Papers 24, 25, Exs. 1015, 1016; IPR2021-00721, Papers 22, 23, Exs. 1013,
`1014. We refer to those filed in Case IPR2021-00712 for convenience.
`
`2
`
`
`
`IPR2021-00712 (Patent 8,903,307 B2)
`IPR2021-00716 (Patent 8,688,028 B2)
`IPR2021-00720 (Patent 9,355,405 B2)
`IPR2021-00721 (Patent 8,166,081 B2)
`
`litigating attorney[s],” and (2) have “an established familiarity with the
`subject matter at issue in th[ese] proceeding[s], having represented Petitioner
`. . . as a defendant in [the] related litigation” involving the challenged
`patents. See Paper 23, 1–3; Paper 24, 1–3. Mr. Hannemann and Mr. Makin
`attest to these facts in their declarations with sufficient explanation. See
`Exs. 1016, 1017.
`Based on the facts set forth above, we conclude that Mr. Hannemann
`and Mr. Makin have sufficient legal and technical qualifications to represent
`Petitioner in these proceedings and that there is a need for Petitioner to have
`its counsel in the related litigation involved in these proceedings. See
`IPR2013-00639, Paper 7 (setting forth the requirements for pro hac vice
`admission). Accordingly, Petitioner has established good cause for the pro
`hac vice admission of Mr. Hannemann and Mr. Makin. Mr. Hannemann and
`Mr. Makin will be permitted to appear pro hac vice in the instant
`proceedings as back-up counsel only. See 37 C.F.R. § 42.10(c).
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s motions for pro hac vice admission of
`Mr. Hannemann and Mr. Makin in the instant proceedings are granted, and
`Mr. Hannemann and Mr. Makin are authorized to represent Petitioner as
`back-up counsel only in the instant proceedings;
`FURTHER ORDERED that Petitioner is to continue to have a
`registered practitioner as lead counsel in the instant proceedings;
`FURTHER ORDERED that Mr. Hannemann and Mr. Makin are to
`comply with the Patent Trial and Appeal Board’s Consolidated Trial
`Practice Guide (November 2019), available at https://www.uspto.gov/
`
`3
`
`
`
`IPR2021-00712 (Patent 8,903,307 B2)
`IPR2021-00716 (Patent 8,688,028 B2)
`IPR2021-00720 (Patent 9,355,405 B2)
`IPR2021-00721 (Patent 8,166,081 B2)
`
`TrialPracticeGuideConsolidated, 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. Hannemann and Mr. Makin 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 at 37 C.F.R.
`§§ 11.101–11.901.
`
`4
`
`
`
`IPR2021-00712 (Patent 8,903,307 B2)
`IPR2021-00716 (Patent 8,688,028 B2)
`IPR2021-00720 (Patent 9,355,405 B2)
`IPR2021-00721 (Patent 8,166,081 B2)
`
`
`FOR PETITIONER:
`Eric S. Lucas
`David J. Cooperberg
`SHEARMAN & STERLING LLP
`eric.lucas@shearman.com
`david.cooperberg@shearman.com
`
`
`FOR PATENT OWNER:
`
`John Scheibeler
`Jonathan Lamberson
`Ashley T. Brzezinski
`WHITE & CASE LLP
`jscheibeler@whitecase.com
`jonathan.lamberson@whitecase.com
`ashley.brzezinski@whitecase.com
`
`
`5
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
