UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`CHANEL, INC.,
`Petitioner,
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`v.
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`MOLO DESIGN LTD.,
`Patent Owner.
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`Case IPR2022-00545
`U.S. Patent No. 9,689,161
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`CHANEL, INC.’S MOTION FOR PRO
`HAC VICE ADMISSION OF
`GEOFFREY M. GODFREY UNDER 37 C.F.R. § 42.10(c)
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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 No. 9,689,161
`
`
`CHANEL, INC.’S MOTION FOR PRO
`HAC VICE ADMISSION OF
`GEOFFREY M. GODFREY UNDER 37 C.F.R. § 42.10(c)
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`I.
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`RELIEF REQUESTED
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`Pursuant to 37 C.F.R. § 42.10(c), Petitioner Chanel, Inc., (“Chanel”), by and
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`through its attorneys, respectfully requests that the Board admit Geoffrey M.
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`Godfrey pro hac vice in this proceeding.
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`II. GOVERNING LAW, RULES, AND PRECEDENT
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`Section 42.10(c) states as follows:
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`The Board 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 and to any other conditions as the
`Board may impose. For example, where the lead counsel is a
`registered practitioner, a motion to appear pro hac vice by counsel
`who is not a registered practitioner may be granted upon showing that
`counsel is an experienced litigating attorney and has an established
`familiarity with the subject matter at issue in the proceeding.
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`Further, the Board requires that a motion for pro hac vice admission be filed
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`in accordance with the “ORDER-AUTHORIZING MOTION FOR PRO HAC VICE
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`ADMISSION – 37 C.F.R. § 42.10” in Unified Patents, Inc. v. Parallel Iron, LLC,
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`Case No. IPR2013-00639 (“Representative Order”). The Representative Order
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`states that the motion must “[c]ontain a statement of facts showing there is good
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`cause for the Board to recognize counsel pro hac vice during the proceeding,” and
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`“[b]e accompanied by an affidavit or declaration of the individual seeking to appear
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`attesting to the following:”
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`i.
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`Membership in good standing of the Bar of at least one State
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`or the District of Columbia;
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`ii.
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`No suspensions or disbarments from practice before any
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`court or administrative body;
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`iii. No application for admission to practice before any court or
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`administrative body ever denied;
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`iv. No sanctions or contempt citations imposed by any court or
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`administrative body;
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`v.
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`vi.
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`The individual seeking to appear has read and will comply
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`with the Office Patent Trial Practice Guide and the Board’s
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`Rules of Practice for Trials set forth in part 42 of the C.F.R;
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`The individual will be subject to the USPTO Code of
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`Professional Responsibility set forth in 37 C.F.R. §§
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`10.20 et seq.1 and disciplinary jurisdiction under 37 C.F.R. §
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`11.19(a);
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`vii. All other proceedings before the Office for which the
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`individual has applied to appear pro hac vice in the last three
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`(3) years; and
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`viii. Familiarity with
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`the subject matter at
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`issue
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`in
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`the
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`1 The USPTO Code of Professional Responsibility in 37 C.F.R. § 10.20 et seq. was
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`replaced by the USPTO Rules of Professional Conduct in 37 C.F.R. § 11.101 et seq.,
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`effective May 3, 2013.
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`proceeding.
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`III. STATEMENT OF FACTS
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`Based on the following statement of facts, and supported by the Declaration
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`of Geoffrey M. Godfrey submitted herewith, Chanel submits that a showing of good
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`cause has been made and respectfully requests the pro hac vice admission of
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`Geoffrey M. Godfrey in this proceeding:
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`1.
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`2.
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`Chanel’s lead counsel, Gina Cornelio is a registered practitioner (Reg.
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`No. 64,336).
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`Chanel’s backup counsel, Mark A. Miller (Reg. No. 44,944) is a
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`registered practitioner.
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`3. Mr. Godfrey is a Partner at the law firm of Dorsey & Whitney, LLP
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`(“Dorsey”) and is counsel of record for Petitioner, Chanel, Inc.
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`(“Chanel”) in the related district court litigation, Molo Design, Ltd. v.
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`Chanel, Inc., Civil No. 21-CV-1578 (VEC) (S.D.N.Y.) (“S.D.N.Y.
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`Litigation”). Mr. Godfrey joined Dorsey as a partner in April 2016.
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`(Declaration of Geoffrey M. Godfrey in Support of Chanel’s Motion
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`for pro hac vice Admission of Geoffrey M. Godfrey under 37 C.F.R. §
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`42.10(c).)
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`4. Mr. Godfrey has 20 years of experience in patent law and patent
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`litigation and has represented clients in numerous patent infringement
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`actions across the country. (Id.)
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`5. Mr. Godfrey is a member of the bar in good standing in Washington,
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`California, and the District of Columbia. (Id.)
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`6. Mr. Godfrey has never been suspended or disbarred from practice
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`before any court or administrative body. (Id.)
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`No application filed by Mr. Godfrey for admission to practice
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`before any court or administrative body has ever been denied.
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`(Id.)
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`No sanctions or contempt citations have been imposed against
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`7.
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`8.
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`Mr. Godfrey by any court or administrative body. (Id.)
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`9. Mr. Godfrey has read and agrees to comply with the Office Patent
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`Trial Practice Guide and the Board’s Rules of Practice for Trials set
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`forth in part 42 of the C.F.R. (Id.)
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`10. Mr. Godfrey understands that he will be subject to the USPTO Rules
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`of Professional Conduct 37 C.F.R. §§ 11.101 et seq. and disciplinary
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`jurisdiction under 37 C.F.R. §11.19(a). (Id.)
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`11. Mr. Godfrey has not applied to appear pro hac vice in any
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`proceedings before the United States Patent and Trademark Office in
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`the last three (3) years. (Id.)
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`12. Mr. Godfrey is familiar with the subject matter at issue in this
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`proceeding and the other related proceedings noted below, including
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`the related S.D.N.Y. Litigation in which U.S. Patent Nos. 7,866,366,
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`8,561,666, 9,689,161 and 9,797,134 were asserted by the Patent
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`Owner in February 2021. Since that time, he has closely studied the
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`asserted patents and participated in discovery related to the same.
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`Mr. Godfrey has acquired a substantial understanding of the
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`underlying issues at stake in this matter.
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`13. There would be no need to update the Power of Attorney or
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`Mandatory Notices upon granting of this motion, because Mr.
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`Godfrey was listed in those previously-filed documents with the
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`expectation that this motion would be brought.
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`V. GOOD CAUSE EXISTS FOR PRO HAC VICE ADMISSION OF
`GEOFFREY M. GODFREY
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`The facts outlined above in the Statement of Facts, and contained in the
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`Declaration of Geoffrey M. Godfrey, establish that there is good cause to admit
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`Mr. Godfrey pro hac vice in this proceeding under 37 C.F.R. § 42.10. Chanel’s lead
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`and backup counsel are registered practitioners. Mr. Godfrey has specific
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`experience in litigating patent matters and has an established familiarity with the
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`subject matter at issue in this and the other related proceeding noted in Section III.,
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`Paragraph 12, supra.
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`VI. CONCLUSION
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`In light of the foregoing, Chanel respectfully requests that the Board admit
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`Geoffrey M. Godfrey pro hac vice in this proceeding.
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`Dated: August 16, 2022
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`Respectfully submitted,
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` /Gina Cornelio/
`Gina Cornelio
`Lead Counsel for Petitioners
`Registration No. 64336
`DORSEY & WHITNEY LLP
`1400 Wewatta Street, Suite 400
`Denver, CO 80202-5549
`(303) 629-3400
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`Counsel for Chanel, Inc.
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on the below date, I caused the forgoing to
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`be served by electronic mail to the following:
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`Jared Schuettenhelm
`Registration No. 59,539
`Bracewell LLP
`701 Fifth Avenue, Suite 6200
`Seattle, WA 98104-7018
`(206) 204-6200 (t)
`(800) 404-3970 (f)
`jared.schuettenhelm@bracewell.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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`Patrick J. Connolly
`Registration No. 69,570
`Bracewell LLP
`701 Fifth Avenue, Suite 6200
`Seattle, WA 98104-7018
`(206) 204-6200 (t)
`(800) 404-3970 (f)
`Patrick.connolly@bracewell.com
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`David Shargel
`1251 Avenue of the Americas, 49th Floor
`New York, NY 10020
`(212) 508-6100
`david.shargel@bracewell.com
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`Conor Civins
`111 Congress Avenue, Suite 2300
`Austin, TX 78701
`(512) 472-7800
`conor.civins@bracewell.com
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`Date: August 16, 2022
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` /Gina Cornelio/
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