`
`
`Trials@uspto.gov
`571-272-7822 Date: November 15, 2023
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CRUSOE ENERGY SYSTEMS, LLC,
`Petitioner,
`v.
`UPSTREAM DATA INC.,
`Patent Owner.
`
`
`
`
`
`PGR2023-00039
`Patent 11,574,372 B2
`
`
`Before HYUN J. JUNG, JAMES J. MAYBERRY, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`PER CURIAM.
`
`
`
`ORDER
`Granting Patent Owner’s Motion for
`Pro Hac Vice Admission of Yakov Zolotorev
`37 C.F.R. § 42.10
`
`
`
`
`
`
`
`
`PGR2023-00039
`Patent 11,574,372 B2
`On November 14, 2023, Patent Owner filed a motion for pro hac vice
`admission of Yakov Zolotorev in this proceeding. Paper 8 (“Motion” or
`“Mot.”). The Motion relies on a Declaration from Mr. Zolotorev. Ex. 2009
`(“Declaration”). A Power of Attorney naming Mr. Zolotorev was filed.
`Paper 9. Patent Owner indicates that Petitioner does not oppose the motion.
`Mot. 3.
`For the reasons provided below, Patent Owner’s Motion is granted.
`Pursuant to 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 its notice
`authorizing motions for pro hac vice admission, the Board requires 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 this 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 Motion and the accompanying
`Declaration, we conclude that Mr. Zolotorev has sufficient legal and
`technical qualifications to represent Patent Owner in this proceeding, that he
`has demonstrated sufficient familiarity with the subject matter of this
`proceeding, that he meets all other requirements for admission pro hac vice,
`and that Patent Owner’s intent to be represented by counsel with litigation
`experience is warranted. See Ex. 2009. Accordingly, Patent Owner has
`established good cause for pro hac vice admission of Mr. Zolotorev, who
`will be permitted to serve only as back-up counsel. See 37 C.F.R.
`§ 42.10(c).
`
`2
`
`
`
`PGR2023-00039
`Patent 11,574,372 B2
`
`
`
`ORDER
`
`It is:
`ORDERED that Patent Owner’s motion for pro hac vice admission of
`Yakov Zolotorev is granted, and Mr. Zolotorev is authorized to represent
`Patent Owner only as back-up counsel in this proceeding;
`FURTHER ORDERED that Patent Owner is to continue to have a
`registered practitioner as lead counsel in this proceeding;
`FURTHER ORDERED that Mr. Zolotorev is to comply with the
`Patent Trial and Appeal Board Consolidated Trial Practice Guide1 (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;
`FURTHER ORDERED that Mr. Zolotorev 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.; and
`FURTHER ORDERED that Patent Owner shall file an updated
`mandatory notice in this proceeding, according to 37 C.F.R. § 42.8(b)(3),
`providing updated information regarding back-up counsel.
`
`
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`3
`
`
`
`PGR2023-00039
`Patent 11,574,372 B2
`FOR PETITIONER:
`
`John Phillips
`Jia Zhu
`FISH & RICHARDSON P.C.
`phillips@fr.com
`jzhu@fr.com
`
`
`FOR PATENT OWNER:
`
`James M. Heintz
`Clayton Thompson
`Yakov Zolotorev
`DLA PIPER LLP (US)
`jim.heintz@us.dlapiper.com
`clayton.thompson@us.dlapiper.com
`jake.zolotorev@us.dlapiper.com
`
`Robert Anton Nissen
`Nissen Patent Law
`robbie@nissenlaw.ca
`
`
`
`
`4
`
`