Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
` Paper No. 31
` Entered: April 4, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CHANEL, INC.,
`Petitioner,
`
`v.
`
`MOLO DESIGN, LTD.,
`Patent Owner.
`____________
`
`IPR2022-00543 (Patent 7,866,366 B2)
`IPR2022-00544 (Patent 8,561,666 B2)
`IPR2022-00545 (Patent 9,689,161 B2)
`IPR2022-00546 (Patent 9,797,134 B2)1
`__________
`
`
`Before KEN B. BARRETT, CARL M. DeFRANCO, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`MARSCHALL, Administrative Patent Judge.
`
`
`
`ORDER
`Conditionally Granting Patent Owner’s Motion for
`Pro Hac Vice Admission of Conor M. Civins
`37 C.F.R. § 42.10
`
`
`1 This Order addresses issues that are the same in each of the identified
`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 for
`any subsequent papers.
`
`
`
`
`571.272.7822
`
`
`
`
`
`
` Paper No. 31
` Entered: April 4, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CHANEL, INC.,
`Petitioner,
`
`v.
`
`MOLO DESIGN, LTD.,
`Patent Owner.
`____________
`
`IPR2022-00543 (Patent 7,866,366 B2)
`IPR2022-00544 (Patent 8,561,666 B2)
`IPR2022-00545 (Patent 9,689,161 B2)
`IPR2022-00546 (Patent 9,797,134 B2)1
`__________
`
`
`Before KEN B. BARRETT, CARL M. DeFRANCO, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`MARSCHALL, Administrative Patent Judge.
`
`
`
`ORDER
`Conditionally Granting Patent Owner’s Motion for
`Pro Hac Vice Admission of Conor M. Civins
`37 C.F.R. § 42.10
`
`
`1 This Order addresses issues that are the same in each of the identified
`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 for
`any subsequent papers.
`
`
`
`
`
`IPR2022-00543 (Patent 7,866,366 B2)
`IPR2022-00544 (Patent 8,561,666 B2)
`IPR2022-00545 (Patent 9,689,161 B2)
`IPR2022-00546 (Patent 9,797,134 B2)
`
`On March 16, 2023, Patent Owner filed a Motion for Pro Hac Vice
`Admission of Conor M. Civins in each of the above-captioned proceedings.
`Paper 27 (“Motion”). 2 Patent Owner also filed a Declaration of Mr. Civins
`in support of the Motion. Ex. 2033 (“Declaration”). The Motion does not
`state if it is opposed, but Petitioner did not file an opposition. For the
`reasons provided below, the Motion is 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, 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 Mr. Civins has sufficient legal and technical
`qualifications to represent Patent Owner in the above-captioned proceedings,
`that Mr. Civins has demonstrated sufficient familiarity with the subject
`matter of the proceedings, and that Mr. Civins meets all other requirements
`for admission pro hac vice. We further conclude that Patent Owner’s
`interest in being represented in the above-captioned proceedings by counsel
`
`2 For purposes of expediency, we cite to the Motion and Declaration filed in
`IPR2022-00543, unless otherwise indicated. Patent Owner filed a similar
`Motion and Declaration in IPR2022-00544, IPR2022-00545, and IPR2022-
`00546.
`
`2
`
`
`
`IPR2022-00543 (Patent 7,866,366 B2)
`IPR2022-00544 (Patent 8,561,666 B2)
`IPR2022-00545 (Patent 9,689,161 B2)
`IPR2022-00546 (Patent 9,797,134 B2)
`
`with litigation experience weighs in favor of granting the Motion.
`Accordingly, Patent Owner has established good cause for pro hac vice
`admission of Mr. Civins. Mr. Civins will be permitted to serve as back-up
`counsel only. See 37 C.F.R. § 42.10(c).
`Upon review of the record before us, we note that a Power of Attorney
`in accordance with 37 C.F.R. § 42.10(b) has not been submitted for Mr.
`Civins. In view thereof, and for the reasons set forth below, the Motion is
`conditionally granted, and is to be effective after Patent Owner files the
`aforementioned Power of Attorney. Patent Owner must also file an updated
`mandatory notice identifying Mr. Civins as back-up counsel in accordance
`with 37 C.F.R. § 42.8(b)(3).
`Accordingly, it is:
`ORDERED that Patent Owner’s Motion for Pro Hac Vice Admission
`of Conor M. Civins in each of the above-captioned proceedings (IPR2022-
`00543, Paper 27; IPR2022-00544, Paper 27; IPR2022-00545, Paper 29;
`IPR2022-00546, Paper 29) is conditionally granted, provided that within ten
`(10) business days of the date of this Order, Patent Owner submits a Power
`of Attorney for Mr. Civins in accordance with 37 C.F.R. § 42.10(b);
`FURTHER ORDERED that Patent Owner must file an updated
`mandatory notice identifying Mr. Civins as back-up counsel in accordance
`with 37 C.F.R. § 42.8(b)(3);
`FURTHER ORDERED that Mr. Civins is authorized to represent
`Patent Owner only as back-up counsel in the above-captioned proceedings;
`
`3
`
`
`
`IPR2022-00543 (Patent 7,866,366 B2)
`IPR2022-00544 (Patent 8,561,666 B2)
`IPR2022-00545 (Patent 9,689,161 B2)
`IPR2022-00546 (Patent 9,797,134 B2)
`
`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 Mr. Civins 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 Mr. Civins 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.
`
`4
`
`
`
`IPR2022-00543 (Patent 7,866,366 B2)
`IPR2022-00544 (Patent 8,561,666 B2)
`IPR2022-00545 (Patent 9,689,161 B2)
`IPR2022-00546 (Patent 9,797,134 B2)
`
`
`PETITIONER:
`Gina Cornelio
`Mark A. Miller
`Shannon L. Bjorklund
`Geoffrey M. Godfrey
`DORSEY & WHITNEY LLP
`cornelio.gina@dorsey.com
`miller.mark@dorsey.com
`bjorklund.shannon@dorsey.com
`godfrey.geoff@dorsey.com
`
`PATENT OWNER:
`Jared D. Schuettenhelm
`Michael Chibib
`Patrick J. Connolly
`BRACEWELL LLP
`jared.schuettenhelm@bracewell.com
`michael.chibib@bracewell.com
`patrick.connolly@bracewell.com
`
`5
`
`
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