throbber
Trials@uspto.gov
`571-272-7822
`
`
`
`
`
` Paper: 17
`Entered: March 4, 2022
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`ALIVECOR, INC.,
`Patent Owner.
`____________
`
`IPR2021-00970 (Patent 9,572,499 B2)
` IPR2021-00971 (Patent 10,595,731 B2)
` IPR2021-00972 (Patent 10,638,941 B2)
`___________
`
`
`
`Before ROBERT A. POLLOCK, ERIC C. JESCHKE, and
`DAVID COTTA, Administrative Patent Judges.
`
`POLLOCK, Administrative Patent Judge.
`
`
`
`DECISION1
`Conditionally Granting Patent Owner’s Motions for
`Admission Pro Hac Vice of Sean S. Pak
`37 C.F.R. § 42.10
`
`
`1 This Decision addresses overlapping issues in the cases listed above.
`Therefore, we issue one Decision to be filed in each case. The parties,
`however, are not authorized to use this style of filing.
`
`
`

`

`IPR2021-00970 (Patent 9,572,499 B2)
`IPR2021-00971 (Patent 10,595,731 B2)
`IPR2021-00972 (Patent 10,638,941 B2)
`
`
`On February 21, 2022, AliveCor, Inc. (“Patent Owner”) filed a
`Motion for admission Pro Hac Vice of Sean S. Pak in each of the above-
`identified proceedings. Paper 13 (“Motion”). 2 Patent Owner also filed a
`Declaration of Sean Pak in support of the Motion in each case. Paper 14
`(“Declaration”). 3 Petitioner has not filed an opposition to the Motions.
`Upon a review of the record before us, we note that Powers of
`Attorney in accordance with 37 C.F.R. § 42.10(b) have not been submitted
`for Mr. Pak in these proceedings. For the reasons provided below, Patent
`Owner’s Motions are conditionally granted, subject to the filing of Powers
`of Attorney for Mr. Pak.
`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 this proceeding. See 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”)).
`
`
`2 For purposes of expediency, we cite to Papers filed in IPR2021-00970.
`Patent Owner filed similar Motions in IPR2021-00971 and IPR2021-00972.
`3 Patent Owner filed the Declarations as Papers. We deem this to be
`harmless error, however, Patent Owner is reminded that affidavits and
`declarations must be filed as exhibits. See 37 C.F.R. § 42.63(a) (“Evidence
`consists of affidavits, transcripts of depositions, documents, and things. All
`evidence must be filed in the form of an exhibit.”).
`
`2
`
`

`

`IPR2021-00970 (Patent 9,572,499 B2)
`IPR2021-00971 (Patent 10,595,731 B2)
`IPR2021-00972 (Patent 10,638,941 B2)
`
`
`Based on the facts set forth in the Motions and the accompanying
`Declarations, we conclude that Mr. Pak has sufficient legal and technical
`qualifications to represent Patent Owner in the above-identified proceedings,
`that Mr. Pak has demonstrated sufficient familiarity with the subject matter
`of these proceedings, that Mr. Pak meets all other requirements for
`admission pro hac vice, and that Patent Owner’s intent to be represented by
`counsel with litigation experience is warranted. Accordingly, Patent Owner
`has established good cause for pro hac vice admission of Mr. Pak. Mr. Pak
`will be permitted to serve as back-up counsel only. See 37 C.F.R.
`§ 42.10(c).
`We note that Patent Owner has filed Updated Mandatory Notices
`identifying Mr. Pak as back-up counsel in accordance with
`37 C.F.R. § 42.8(b)(3). Paper 15. However, Powers of Attorney in
`accordance with 37 C.F.R. § 42.10(b) have not been submitted for Mr. Pak.
`Mr. Pak will not be admitted until Patent Owner files Powers of Attorney
`identifying Mr. Pak.
`
`
`ORDER
`
`It is:
`ORDERED that Patent Owner’s Motions for Admission Pro Hac Vice
`of Sean Pak are conditionally granted provided that within ten (10) days of
`the date of this Order, Patent Owner submits Powers of Attorney for Mr. Pak
`in each proceeding, in accordance with 37 C.F.R. § 42.10(b);
`
`3
`
`

`

`IPR2021-00970 (Patent 9,572,499 B2)
`IPR2021-00971 (Patent 10,595,731 B2)
`IPR2021-00972 (Patent 10,638,941 B2)
`
`
`FURTHER ORDERED that Patent Owner is to continue to have a
`registered practitioner represent it as lead counsel for the above-identified
`proceedings;
`FURTHER ORDERED that Mr. Pak will be authorized to represent
`Patent Owner only as back-up counsel in the above-identified proceedings;
`FURTHER ORDERED that Mr. Pak shall be familiar with the
`Consolidated Trial Practice Guide4 (84 Fed. Reg. 64,280 (Nov. 21, 2019)),
`and comply with 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. Pak 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.
`
`
`
`
`
`
`
`
`4 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`4
`
`

`

`IPR2021-00970 (Patent 9,572,499 B2)
`IPR2021-00971 (Patent 10,595,731 B2)
`IPR2021-00972 (Patent 10,638,941 B2)
`
`FOR PETITIONER:
`
`Walter Renner
`Jeremy Monaldo
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`jjm@fr.com
`
`FOR PATENT OWNER:
`
`James M. Glass
`Andrew M. Holmes
`John W. McCauley
`Quinn Emanuel Urquhart & Sullivan LLP
`jimglass@quinnemanuel.com
`drewholmes@quinnemanuel.com
`johnmccauley@quinnemanuel.com
`
`5
`
`

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