`
`
`Trials@uspto.gov
`571-272-7822 Entered: January 24, 2024
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EXPERIAN INFORMATION SOLUTIONS, INC.,
`Petitioner,
`
`v.
`
`DYNAPASS IP HOLDINGS LLC,
`Patent Owner.
`____________
`
`IPR2023-01406
`Patent 6,993,658 B1
`____________
`
`
`Before KEVIN F. TURNER, KRISTEN L. DROESCH, and
`LYNNE H. BROWNE, Administrative Patent Judges.
`
`BROWNE, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Petitioner’s Motion for
`Pro Hac Vice Admission of Roger Scott Feldmann
`37 C.F.R. § 42.10(c)
`
`
`
`
`
`
`
`
`
`IPR2023-01406
`Patent 6,993,658 B1
`
`
`Petitioner filed a Motion for Pro Hac Vice Admission of Roger Scott
`Feldmann. Paper 6 (“Motion”). Petitioner submitted a Declaration of Roger
`Scott Feldmann in support of the Motion. Ex. 1022. Patent Owner has not
`opposed the Motion. For the reasons provided below, Petitioner’s Motion is
`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, Paper 7 (PTAB Oct. 15, 2013)
`(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. Feldmann has sufficient legal and
`technical qualifications to represent Petitioner in this proceeding, has
`demonstrated sufficient litigation experience and familiarity with the subject
`matter of this proceeding, and meets all other requirements for admission
`pro hac vice. See Ex. 1022. Accordingly, Petitioner has established good
`cause for pro hac vice admission of Mr. Feldmann. Mr. Feldmann will be
`permitted to serve as back-up counsel only. See 37 C.F.R. § 42.10(c).
`We note that Petitioner filed a Power of Attorney including Mr.
`Feldmann in accordance with 37 C.F.R. § 42.10(b). Paper 8.
`
`
`2
`
`
`
`IPR2023-01406
`Patent 6,993,658 B1
`
`
`Accordingly, it is
`ORDERED that Petitioner’s Motion for pro hac vice admission of
`Roger Scott Feldmann is granted;
`FURTHER ORDERED that Petitioner continue to have a registered
`practitioner represent it as lead counsel for this proceeding;
`FURTHER ORDERED that Mr. Feldmann is authorized to act as
`back-up counsel only in this proceeding;
`FURTHER ORDERED that Mr. Feldmann comply with the Patent
`Trial and Appeal Board Consolidated Trial Practice Guide (84 Fed. Reg.
`64,280 (Nov. 21, 2019))1 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. Feldmann 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.
`
`
`
`
`
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`3
`
`
`
`IPR2023-01406
`Patent 6,993,658 B1
`
`
`PETITIONER:
`
`James B. Hatten
`Glenn D. Richeson
`BAKER & HOSTETLER LLP
`jhatten@bakerlaw.com
`gricheson@bakerlaw.com
`
`PATENT OWNER:
`
`John Wittenzellner
`Todd E. Landis
`Michael J. Fagan, Jr.
`Mark McCarthy
`WILLIAMS SIMONS & LANDIS PLLC
`johnw@wsltrial.com
`IPRDYNAPASSWSL@wsltrial.com
`tlandis@wsltrial.com
`mfagan@wsltrial.com
`mmccarthy@wsltrial.com
`
`
`4
`
`
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