`571-272-7822
`
`Paper 24
`Entered: November 27, 2023
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`WAG ACQUISITION, L.L.C.,
`Patent Owner.
`____________
`
`IPR2022-01412 (Patent 9,742,824 B2)
`IPR2022-01413 (Patent 9,762,636 B2)
`____________
`
`Before HUBERT C. LORIN, JOHN A. HUDALLA, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`
`ORDER1
`Granting Petitioner’s Motions for
`Pro Hac Vice Admission of Naina Soni
`37 C.F.R. § 42.10
`
`
`
`
`1 The combined caption is for administrative convenience only and does not
`indicate that IPR2022-01412 and -01413 have been joined. The parties are
`not authorized to use this caption without express permission of the Board.
`
`
`
`IPR2022-01412 (Patent 9,742,824 B2)
`IPR2022-01413 (Patent 9,762,636 B2)
`
`
`On November 14, 2023, Petitioner filed motions requesting pro hac
`vice admission of Naina Soni in each of the above-identified proceedings
`(collectively “Motions”). Paper 20.2 Petitioner also submitted Declarations
`from Naina Soni in support of the Motions (collectively “Declarations”).
`Ex. 1115.3 Petitioner attests that Patent Owner does not oppose the Motions.
`Paper 20, 1. For the reasons provided below, Petitioner’s Motions are
`granted.
`In accordance with 37 C.F.R. § 42.10(c), 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. 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 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 Motions and the accompanying
`Declarations, we conclude that Ms. Soni has sufficient legal and technical
`qualifications to represent Petitioner in these proceedings, has demonstrated
`sufficient litigation experience and familiarity with the subject matter of
`these proceedings, and meets all other requirements for admission pro hac
`vice. See Ex. 1115. Accordingly, Petitioner has established good cause for
`
`
`2 For purposes of expediency, we cite to the Paper filed in IPR2022-01412.
`Petitioner filed a similar Motion in IPR2022-01413 (Paper 19).
`3 We cite to the Exhibit filed in IPR2022-01412. Petitioner filed a similar
`Declaration in IPR2022-01413 (Ex. 1115).
`2
`
`
`
`
`
`IPR2022-01412 (Patent 9,742,824 B2)
`IPR2022-01413 (Patent 9,762,636 B2)
`
`pro hac vice admission of Ms. Soni. Ms. Soni will be permitted to serve as
`back-up counsel only. See 37 C.F.R. § 42.10(c).
`We note that Petitioner filed an Updated Power of Attorney including
`Ms. Soni in accordance with 37 C.F.R. § 42.10(b). Paper 21, 1.4 Petitioner
`has also filed Updated Mandatory Notices identifying Ms. Soni as back-up
`counsel in accordance with 37 C.F.R. § 42.8(b)(3). Paper 23, 2–3.5
`In consideration of the foregoing, it is hereby
`ORDERED that Petitioner’s Motions for pro hac vice admission of
`Naina Soni are granted;
`FURTHER ORDERED that Petitioner is to continue to have a
`registered practitioner represent it as lead counsel for the above-identified
`proceedings;
`FURTHER ORDERED that Ms. Soni is authorized to represent
`Petitioner as back-up counsel only in the above-identified proceedings;
`FURTHER ORDERED that Ms. Soni comply with the Patent Trial
`and Appeal Board Consolidated Trial Practice Guide6 (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 Ms. Soni 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.
`
`
`
`4 We cite to the Paper filed in IPR2022-01412. Petitioner filed a similar
`Updated Power of Attorney in IPR2022-01413 (Paper 20).
`5 We cite to the Paper filed in IPR2022-01412. Petitioner filed similar
`Updated Mandatory Notices in IPR2022-01413 (Paper 22).
`6 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`3
`
`
`
`
`
`IPR2022-01412 (Patent 9,742,824 B2)
`IPR2022-01413 (Patent 9,762,636 B2)
`
`FOR PETITIONER:
`Eamonn Gardner
`Orion Armon
`COOLEY LLP
`egardner@cooley.com
`oarmon@cooley.com
`
`
`FOR PATENT OWNER:
`
`Ronald Abramson
`M. Michael Lewis
`Ari J. Jaffess
`Gina K. Kim
`LISTON ABRAMSON LLP
`ron.abramson@listonabramson.com
`michael.lewis@listonabramson.com
`ari.jaffess@listonabramson.com
`gina.kim@listonabramson.com
`
`
`
`
`
`
`4
`
`