`
`Paper 11
`Date: August 11, 2022
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE INC.,
`Petitioner
`
`v.
`
`BILLJCO LLC,
`Patent Owner.
`____________
`
`IPR2022-00129 (Patent 8,566,839 B2)
`IPR2022-00131 (Patent 8,639,267 B2)1
`____________
`
`
`
`Before THU A. DANG, ROBERT J. WEINSCHENK, and
`GARTH D. BAER, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`DECISION
`Conditionally Granting Patent Owner’s Motions for Admission
`Pro Hac Vice of Courtland C. Merrill
`37 C.F.R. § 42.10
`
`
`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.
`
`
`
`IPR2022-00129 (Patent 8,566,839 B2)
`IPR2022-00131 (Patent 8,639,267 B2)
`
`
`BillJCo, LLC (“Patent Owner”) filed motions for admission pro hac
`vice of Courtland C. Merrill (Paper 102) in the above-captioned proceedings
`(collectively, “Motions”). The Motions are supported by Affidavits of Mr.
`Merrill (Ex. 2007). Petitioner did not file an opposition to the Motions. The
`Motions are conditionally 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. In
`authorizing a motion 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 in the proceeding. See Paper 3 (citing
`Unified Patents, Inc. v. Parallel Iron, LLC, IPR2013-00639, Paper 7 (PTAB
`Oct. 15, 2013) (setting forth requirements for admission pro hac vice)).
`Based on the facts set forth in the Motions and the accompanying
`Affidavits, we conclude that Mr. Merrill has sufficient legal and technical
`qualifications to represent Patent Owner in these proceedings and that
`Mr. Merrill has demonstrated sufficient litigation experience and familiarity
`with the subject matter of these proceedings. See Ex. 2007 ¶¶ 12–14.
`Accordingly, Patent Owner has established good cause for pro hac vice
`admission of Mr. Merrill.
`Upon review of the record before us, we note that Patent Owner has
`not submitted a Power of Attorney in accordance with 37 C.F.R. § 42.10(b)
`for Mr. Merrill, and has not filed updated Mandatory Notices identifying Mr.
`
`
`2 Paper and exhibit numbers refer to Proceeding IPR2022-00129.
`Corresponding papers and exhibits were filed in IPR2022-00131.
`2
`
`
`
`
`
`IPR2022-00129 (Patent 8,566,839 B2)
`IPR2022-00131 (Patent 8,639,267 B2)
`
`Merrill as back-up counsel in accordance with 37 C.F.R. § 42.8(b)(3). In
`view thereof, and for the reasons set forth below, Patent Owner’s Motion is
`conditionally granted, and is to be effective after Patent Owner files the
`aforementioned Power of Attorney and updated Mandatory Notices.
`
`Accordingly, it is
`ORDERED that Patent Owner’s Motions for pro hac vice admission
`of Mr. Courtland C. Merrill are conditionally granted, provided that within
`ten (10) business days of the date of this order, Patent Owner must submit a
`Power of Attorney for Mr. Merrill in accordance with 37 C.F.R. § 42.10(b),
`and updated Mandatory Notices in accordance with 37 C.F.R. § 42.8(b)(3)
`listing Mr. Merrill as back-up counsel;
`FURTHER ORDERED that Patent Owner is to continue to have a
`registered practitioner represent it as lead counsel for these proceedings;
`FURTHER ORDERED that Mr. Merrill shall comply with the
`Consolidated Trial Practice Guide,3 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. Merrill is 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
`
`
`
`
`
`IPR2022-00129 (Patent 8,566,839 B2)
`IPR2022-00131 (Patent 8,639,267 B2)
`
`PETITIONER:
`
`Larissa S. Bifano
`Jonathan Hicks
`Zachary Conrad
`DLA PIPER LLP
`larissa.bifano@dlapiper.com
`jonathan.hicks@dlapiper.com
`zack.conrad@us.dlapiper.com
`
`
`PATENT OWNER:
`
`Brian R. Michalek
`Joseph M. Kuo
`Brian R. Landry
`SAUL EWING ARNSTEIN & LEHR LLP
`brian.michalek@saul.com
`joseph.kuo@saul.com
`brian.landry@saul.com
`
`
`
`4
`
`
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