`571.272.7822
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` Paper No. 13
` Entered: March 2, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HYUNDAI MOTOR AMERICA,
`Petitioner,
`
`v.
`
`STRATOSAUDIO, INC.,
`Patent Owner.
`____________
`
`IPR2021-01267 (Patent 8,166,081 B2)
`IPR2021-01303 (Patent 8,688,028 B2)
`IPR2021-01305 (Patent 8,903,307 B2)1
`___________
`
`
`
`Before JUSTIN T. ARBES, HYUN J. JUNG, and KEVIN C. TROCK,
`Administrative Patent Judges.
`
`TROCK, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Patent Owner’s Motion for
`Admission Pro Hac Vice of Hallie Kiernan
`37 C.F.R. § 42.10
`
`
`1 This Order applies to each of the listed proceedings. The parties are not
`authorized to use this style heading for any subsequent papers.
`
`
`
`
`
`IPR2021-01267 (Patent 8,166,081 B2)
`IPR2021-01303 (Patent 8,688,028 B2)
`IPR2021-01305 (Patent 8,903,307 B2)
`
`Patent Owner filed a Motion for Admission Pro Hac Vice of Hallie
`Kiernan in each of the above-captioned proceedings. Paper 11 (“Motion”). 2
`Patent Owner also filed a Declaration of Ms. Kiernan in support of the
`Motion. Ex. 2013 (“Declaration”). Petitioner did not file an opposition to
`the Motion. For the reasons discussed below, Patent Owner’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,
`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 Ms. Kiernan has sufficient legal and technical
`qualifications to represent Patent Owner in this proceeding, that Ms. Kiernan
`has demonstrated sufficient familiarity with the subject matter of this
`proceeding, 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 Ms. Kiernan. Ms.
`Kiernan will be permitted to serve as back-up counsel only. See 37 C.F.R.
`
`
`2 For purposes of expediency, we cite to the Motion and Declaration filed in
`IPR2021-01267, unless otherwise indicated. Patent Owner filed a similar
`Motion and Declaration in IPR2021-01303 and IPR2021-01305.
`
`2
`
`
`
`IPR2021-01267 (Patent 8,166,081 B2)
`IPR2021-01303 (Patent 8,688,028 B2)
`IPR2021-01305 (Patent 8,903,307 B2)
`
`
`§ 42.10(c).
`We note that Patent Owner has submitted a Power of Attorney in
`accordance with 37 C.F.R. § 42.10(b) for Ms. Kiernan. Paper 7, 2. Patent
`Owner’s Mandatory Notices also identify Ms. Kiernan. Paper 6, 1.
`Accordingly, it is
`ORDERED that Patent Owner’s Motion for Pro Hac Vice Admission
`of Hallie Kiernan in each of the above-captioned proceedings is granted;
`FURTHER ORDERED that Ms. Kiernan is authorized to represent
`Patent Owner only as back-up counsel in the above-captioned proceedings;
`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 Ms. Kiernan is 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
`37 C.F.R.; and
`FURTHER ORDERED that Ms. Kiernan 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
`
`
`
`IPR2021-01267 (Patent 8,166,081 B2)
`IPR2021-01303 (Patent 8,688,028 B2)
`IPR2021-01305 (Patent 8,903,307 B2)
`
`
`PETITIONER:
`Ryan Yagura
`Nicholas J. Whilt
`Caitlin Hogan
`Clarence A. Rowland
`O’MELVENY & MYERS LLP
`ryagura@omm.com
`nwhilt@omm.com
`chogan@omm.com
`crowland@omm.com
`
`PATENT OWNER:
`John Scheibeler
`Jonathan Lamberson
`Ashley T. Brzezinski
`WHITE & CASE LLP
`jscheibeler@whitecase.com
`jonathan.lamberson@whitecase.com
`ashley.brzezinski@whitecase.com
`
`4
`
`