`Paper No. 3
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`BABYBJÖRN AB,
`Petitioner,
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`v.
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`THE ERGY BABY CARRIER, INC.,
`Patent Owner.
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`Inter Partes Review No. IPR2024-00110
`U.S. Patent No. 11,786,055
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`BABYBJÖRN AB’S MOTION FOR
`PRO HAC VICE ADMISSION OF
`ELLIOT HALES UNDER 37 C.F.R. § 42.10(c)
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`Paper No. 3
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`I.
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`RELIEF REQUESTED
`Pursuant to 37 C.F.R. § 42.10(c), Petitioner BabyBjörn AB (“BabyBjörn”),
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`by and through its attorneys, respectfully requests that the Board admit Elliot Hales
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`pro hac vice in this proceeding.
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`II. GOVERNING LAW, RULES, AND PRECEDENT
`Section 42.10(c) states as follows:
`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 states
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`that the motion must “[c]ontain a statement of facts showing there is good cause for
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`the Board to recognize counsel pro hac vice during the proceeding,” and “[b]e
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`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. 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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`Paper No. 3
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`ii.
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`No suspensions or disbarments from practice before any court
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`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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`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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`vi.
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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 the subject matter at issue in the proceeding.
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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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`Paper No. 3
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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 Elliot Hales submitted herewith, BabyBjörn submits that a showing of good cause
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`has been made and respectfully requests the pro hac vice admission of Elliot Hales in
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`this proceeding:
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`1.
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`BabyBjörn’s lead counsel, Mark Miller is a registered practitioner (Reg.
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`No. 44,944).
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`2.
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`BabyBjörn’s backup counsel, Anthony Jones is a registered practitioner
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`(Reg. No. 78,475).
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`3. Mr. Hales is a Partner at the law firm of Dorsey & Whitney, LLP
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`(“Dorsey”) and counsel of record for Petitioner, BabyBjörn AB
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`(“BabyBjörn”) in the related district court litigation, The Ergo Baby
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`Carrier, Inc. v. BabyBjörn AB, No. 6:24-cv-0083 (W.D. Tex.) (“W.D.
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`Tex. Litigation”). Mr. Hales joined Dorsey as an Associate in 2018.
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`(Declaration of Elliot Hales in Support of BabyBjörn’s Motion for pro
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`hac vice Admission of Elliot Hales under 37 C.F.R. § 42.10(c).)
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`4. Mr. Hales is a litigation attorney with specific experience in patent law
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`and patent law litigation. Mr. Hales has represented clients in numerous
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`patent infringement actions across the country. (Id.) Mr. Hales has
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`represented Petitioner BabyBjörn in three of its patent infringement
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`disputes in district court and at the USITC.
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`5. Mr. Hales is a member in good standing of the state of Utah. (Id.)
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`6. Mr. Hales has never been suspended or disbarred from practice before
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`any court or administrative body. (Id.)
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`7.
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`No application filed by Mr. Hales for admission to practice before
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`any court or administrative body has ever been denied. (Id.)
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`8.
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`No sanctions or contempt citations have been imposed against Mr.
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`Hales by any court or administrative body. (Id.)
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`9. Mr. Hales has read and agrees to comply with the Office Patent Trial
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`Practice Guide and the Board’s Rules of Practice for Trials set forth in
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`part 42 of the C.F.R. (Id.)
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`10. Mr. Hales understands that he will be subject to the USPTO Rules of
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`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. Hales has not applied to appear pro hac vice in any proceedings
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`before the United States Patent and Trademark Office in the last three
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`(3) years. (Id.)
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`12. Mr. Hales has an established familiarity with the subject matter at
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`issue in this, and the other related proceeding noted below. Mr. Hales
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`has familiarity with the subject matter at issue in this proceeding and
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`in the related W.D. Tex. Litigation in which U.S. Patent No.
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`Paper No. 3
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`11,786,055 was asserted by the Patent Owner in February 2024.
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`Since that time, he has closely studied the asserted patent, participated
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`in discovery related to the same, and engaged in claim construction
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`efforts for the terms of the foregoing patents. Mr. Hales has acquired
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`substantial understanding of the underlying issues at stake in this
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`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. Hales
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`was listed in those previously-filed documents with the expectation
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`that this motion would be brought.
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`IV. GOOD CAUSE EXISTS FOR PRO HAC VICE ADMISSION OF
`ELLIOT HALES
`The facts outlined above in the Statement of Facts, and contained in the
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`Declaration of Elliot Hales, establish that there is good cause to admit Mr. Hales pro
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`hac vice in this proceeding under 37 C.F.R. § 42.10. BabyBjörn’s lead and backup
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`counsel are registered practitioners. Mr. Hales has specific experience in litigating
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`patent matters and has an established familiarity with the subject matter at issue in
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`this, and the other related proceeding noted in Section III., Paragraph 12, supra.
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`Paper No. 3
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`V. CONCLUSION
`In light of the foregoing, BabyBjörn respectfully requests that the Board
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`admit Elliot Hales pro hac vice in this proceeding.
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`Dated: October 29, 2024
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`Respectfully submitted,
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` /s/ Mark A. Miller
`Mark Miller
`Lead Counsel for Petitioners
`Registration No. 44944
`DORSEY & WHITNEY LLP
`111 South Main, 21st Floor
`Salt Lake City, Utah 84111
`(801) 933-4068
`Counsel for BabyBjörn AB
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`Paper No. 3
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that on the below date, I caused the forgoing to
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`be served FedEx Overnight mail to counsel of record for the Patent Owner:
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`Erise IP, P.A.
`7015 College Blvd., Ste 700
`Overland Park, KS
`UNITED STATES
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`Date: 10/29/2024
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`/s/ Mark A. Miller
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