Case IPR2022-00545
`U.S. Patent No. 9,689,161
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`CHANEL, INC.,
`Petitioner,
`v.
`MOLO DESIGN, LTD.,
`Patent Owner.
`
`
`Case IPR2022-00545
`U.S. Patent 9,689,161
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`
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`PATENT OWNER’S MOTION FOR
`PRO HAC VICE ADMISSION OF CONOR M. CIVINS
`UNDER 37 C.F.R. § 42.10(c)
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`U.S. Patent No. 9,689,161
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`CHANEL, INC.,
`Petitioner,
`v.
`MOLO DESIGN, LTD.,
`Patent Owner.
`
`
`Case IPR2022-00545
`U.S. Patent 9,689,161
`
`
`
`PATENT OWNER’S MOTION FOR
`PRO HAC VICE ADMISSION OF CONOR M. CIVINS
`UNDER 37 C.F.R. § 42.10(c)
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`-1-
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`Case IPR2022-00543
`Patent 7,866,366
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`I.
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`II.
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`TABLE OF CONTENTS
`INTRODUCTION ...............................................................................................................2
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`STATEMENT OF FACTS SHOWING THERE IS GOOD CAUSE FOR THE
`BOARD TO RECOGNIZE COUNSEL PRO HAC VICE DURING THIS
`PROCEEDING ....................................................................................................................2
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`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`7.
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`8.
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`9.
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`Bar Membership .......................................................................................................2
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`No Suspensions or Disbarments ..............................................................................3
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`No Denied Applications ...........................................................................................3
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`No Sanctions of Contempt Citations........................................................................3
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`Compliance with the TPG and the Board’s Rules ...................................................3
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`USPTO Rules of Professional Conduct and Disciplinary Jurisdiction ....................3
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`Applications for Pro Hac Vice Admission ...............................................................3
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`Familiarity with the Subject Matter .........................................................................4
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`Additional Facts .......................................................................................................5
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`III.
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`IV.
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`GOOD CAUSE EXISTS FOR PRO HAC VICE ADMISSION OF CONOR M.
`CIVINS ................................................................................................................................5
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`CONCLUSION ....................................................................................................................6
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`Case IPR2022-00545
`U.S. Patent No. 9,689,161
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`I.
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`INTRODUCTION
`Patent Owner respectfully submits this Motion for Pro Hac Vice Admission
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`of Conor M. Civins under 37 C.F.R. § 42.10(c) (“Motion”) in connection with
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`IPR2022-00545.
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`This Motion is filed as authorized by the Notice (Paper 3) and in accordance
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`with the Board’s representative Order in Unified Patents, Inc. v. Parallel Iron, LLC,
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`IPR2013-00639, Paper 7 (PTAB Oct. 15, 2013). This Motion is filed no sooner than
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`21 days after service of the petition in this proceeding.
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`Patent Owner has paid the requisite fees and the Office is authorized to charge
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`Deposit Account No. 50-0259 any other applicable fees for this Motion.
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`II.
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`STATEMENT OF FACTS
`Patent Owner respectfully submits that this Motion and the accompanying
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`Declaration of Conor M. Civins (“Civins Declaration”) establish good cause for
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`the Board to recognize Mr. Civins pro hac vice during this proceeding.
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`1. Bar Membership
`Mr. Civins is a member in good standing of the State Bar of Texas. Civins
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`Declaration at ¶4.
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`Case IPR2022-00545
`U.S. Patent No. 9,689,161
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`2.
`No Suspensions or Disbarments
`Mr. Civins has not been suspended or disbarred from practice before any court
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`or administrative body. Civins Declaration at ¶5.
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`3.
`No Denied Applications
`Mr. Civins has not had any applications for admission to practice before any
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`court or administrative body ever denied. Civins Declaration at ¶6.
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`4. No Sanctions of Contempt Citations
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`Mr. Civins has not had any sanctions or contempt citations imposed on him
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`by any court or administrative body. Civins Declaration at ¶7.
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`5. Compliance with the TPG and the Board’s Rules
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`Mr. Civins has read and will comply with the Office Patent Trial Practice
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`Guide (“TPG”) and the Board’s Rules of Practice for Trials set forth in part 42 of 37
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`C.F.R. Civins Declaration at ¶8.
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`6. USPTO Rules of Professional Conduct and Disciplinary Jurisdiction
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`Mr. Civins understands and agrees he will be subject to the USPTO Rules of
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`Professional Conduct set forth in 37 C.F.R. §§ 11.101 et. seq. and disciplinary
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`jurisdiction under 37 C.F.R. § 11.19(a). Civins Declaration at ¶9.
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`7. Applications for Pro Hac Vice Admission
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`Mr. Civins is seeking pro hac vice admission representing Patent Owner Molo
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`Design Ltd. in the following proceedings:
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`Case IPR2022-00545
`U.S. Patent No. 9,689,161
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` IPR2022-0543
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` IPR2022-0544
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` IPR2022-0545
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` IPR2022-0546
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`8. Familiarity with the Subject Matter
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`Mr. Civins is familiar with the subject matter at issue in this proceeding.
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`Civins Declaration at ¶11. Mr. Civins has reviewed the papers and accompanying
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`exhibits filed in this proceeding. Id. Mr. Civins is the lead litigation attorney for
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`Patent Owner Molo Design Ltd. in the related district court litigation, Molo Design,
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`Ltd. v. Chanel, Inc., Civil No. 21-CV-1578 (VEC) (S.D.N.Y.) (“S.D.N.Y.
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`Litigation”). Id. at ¶12. Mr. Civins also has an established familiarity with the
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`portfolio of patents assigned to Molo Design Ltd, including U.S. Patent Nos.
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`7,866,366, 8,561,666, 9,689,161 and 9,797,134 asserted in the S.D.N.Y. Litigation
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`and at issue in the proceedings listed infra in Paragraph 7. Id.
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`Mr. Civins is an experienced litigation attorney. Id. at ¶13. Mr. Civins has
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`been litigating intellectual property and patent cases for over 15 years. Id. Mr. Civins
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`has been practicing law since 2003 and has extensive experience litigating patent
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`infringement cases in many different district courts across the United States, as well
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`as at the Federal Circuit. Id. Mr. Civins’ experience in patent litigation matters
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`includes all aspects of patent litigation including patent jury trials, arguing Markman
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`Case IPR2022-00545
`U.S. Patent No. 9,689,161
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`hearings, patent summary judgment proceedings, and other patent-related hearings
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`and pleadings concerning, inter alia, patent validity and infringement issues. Id.
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`9. Additional Facts
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`Patent Owner’s lead counsel, Jared D. Schuettenhelm, Reg. No. 59,539, is a
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`registered practitioner in this proceeding. Patent Owner’s backup counsel, Michael
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`Chibib, Reg. No. 40,950, and Patrick Connolly, Reg. No. 69,570, are registered
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`practitioners in this proceeding. Mr. Schuettenhelm, Mr. Chibib, Mr. Connolly, and
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`Mr. Civins are attorneys at the same law firm, Bracewell LLP.
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`If this Motion is granted, Mr. Civins will represent Patent Owner only as an
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`additional backup counsel in this proceeding and Patent Owner will promptly file an
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`updated power of attorney and updated mandatory notices. See Civins Declaration
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`at ¶14.
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`III. GOOD CAUSE EXISTS FOR PRO HAC VICE ADMISSION OF
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`CONOR M. CIVINS
`The facts outlined above in the Statement of Facts, and contained in the
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`Declaration of Conor M. Civins, establish that there is good cause to admit Mr.
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`Civins pro hac vice in this proceeding under 37 C.F.R. § 42.10. Patent Owner’s lead
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`and backup counsel are registered practitioners. Mr. Civins has specific experience
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`in litigating patent matters and has an established familiarity with the subject matter
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`Case IPR2022-00545
`U.S. Patent No. 9,689,161
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`at issue in this, and the other related proceeding noted in Section III., Paragraph 8,
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`supra.
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`IV. CONCLUSION
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`Patent Owner respectfully requests that this Motion be granted and Mr. Civins
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`be recognized to appear pro hac vice in this proceeding.
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`Respectfully Submitted,
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`By: /s/ Michael Chibib
`Jared D. Schuettenhelm
`Registration No. 59,539
`Patrick Connolly
`Registration No. 69,570
`BRACEWELL LLP
`701 Fifth Avenue, Suite 6200
`Seattle, Washington 98104-7018
`(206) 204-6200 (t)
`(800) 404-3970 (f)
`jared.schuettenhelm@bracewell.com
`patrick.connolly@bracewelllaw.com
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`Michael Chibib
`Registration No. 40,950
`BRACEWELL LLP
`111 Congress Avenue, Suite 2300
`Austin, TX 78701
`(512) 472-7800 (t)
`(800) 404-3970 (f)
`michael.chibib@bracewell.com
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`Counsel for Patent Owner Molo
`Design, Ltd.
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`Case IPR2022-00545
`U.S. Patent No. 9,689,161
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`Dated: March 16, 2023
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