`571-272-7822
`
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`
`
`
`
`
`
`
` Paper No. 8
`
`
` Date: October 22, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CONFIGIT A/S,
`Petitioner,
`v.
`VERSATA DEVELOPMENT GROUP, INC.,
`Patent Owner.
`____________
`IPR2021-01055
`Patent 6,836,766 B1
`____________
`
`
`Before SALLY C. MEDLEY, KEVIN F. TURNER, and
`DEBRA K. STEPHENS, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`ORDER
`Granting Petitioner’s Unopposed Motion for
`Pro Hac Vice Admission of Dr. Jeffrey Schneidman
`37 C.F.R. § 42.10
`
`
`
`
`
`
`
`
`
`
`IPR2021-01055
`Patent 6,836,766 B1
`
`
`Petitioner filed an Unopposed Motion for Pro Hac Vice Admission of
`Dr. Jeffrey Schneidman. Paper 7 (“Motion” or “Mot.”). Petitioner also filed
`a Declaration of Dr. Schneidman in support of the Motion. Ex. 1052
`(“Declaration”). Petitioner represents that Patent Owner does not oppose the
`Motion. Mot. 1. For the reasons discussed below, Petitioner’s 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, 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 3, 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”)).
`Based on the facts set forth in the Motion and the accompanying
`Declaration, we conclude that Dr. Schneidman has sufficient legal and
`technical qualifications to represent Petitioner in this proceeding, that Dr.
`Schneidman has demonstrated sufficient familiarity with the subject matter
`of this proceeding, 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 Dr. Schneidman. Dr.
`Schneidman will be permitted to serve as back-up counsel only. See 37
`C.F.R. § 42.10(c).
`We note that Petitioner submitted a Power of Attorney in accordance
`with 37 C.F.R. § 42.10(b) for Dr. Schneidman. Paper 1. Petitioner’s
`
`
`
`2
`
`
`
`IPR2021-01055
`Patent 6,836,766 B1
`
`Mandatory Notices also identify Dr. Schneidman. Paper 2, 75.
`Accordingly, it is
`ORDERED that Petitioner’s Unopposed Motion for Pro Hac Vice
`Admission of Dr. Jeffrey Schneidman (Paper 7) is granted;
`FURTHER ORDERED that Dr. Schneidman is authorized to
`represent Petitioner only as back-up counsel in this proceeding;
`FURTHER ORDERED that Petitioner is to continue to have a
`registered practitioner represent it as lead counsel in this proceeding;
`FURTHER ORDERED that Dr. Schneidman is to comply with the
`Consolidated Trial Practice Guide1 (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 Regulations2; and
`FURTHER ORDERED that Dr. Schneidman is to 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.
`
`
`
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`2 Dr. Schneidman indicates that he “will comply with the Office Patent Trial
`Practice Guide and the Board’s Rules of Practice for Trials set forth in part
`42 of the Code of Federal Regulations 32.” Declaration ¶ 6. The Office
`Patent Trial Practice Guide and the Board’s Rules are set forth in part 42 of
`37 C.F.R. We deem this as harmless error.
`3
`
`
`
`
`
`IPR2021-01055
`Patent 6,836,766 B1
`
`PETITIONER:
`David Hoffman
`Kenneth Darby
`hoffman@fr.com
`kdarby@fr.com
`
`PATENT OWNER:
`
`Robert G. Sterne
`James R. Hietala
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`rsterne-PTAB@sternekessler.com
`jhietala-PTAB@sternekessler.com
`
`Kent B. Chambers
`TERRILE, CANNATTI & CHAMBERS LLP
`Chamberskchambers@tcciplaw.com
`
`
`
`4
`
`
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