`Trials@uspto.gov
`571-272-7822 Entered: January 12, 2024
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CRUSOE ENERGY SYSTEMS, LLC,
`Petitioner,
`
`v.
`
`UPSTREAM DATA INC.,
`Patent Owner.
`____________
`
`PGR2023-00052
`Patent 11,574,372 B2
`____________
`
`Before HYUN J. JUNG, JAMES J. MAYBERRY, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`MEYERS, Administrative Patent Judge.
`
`
`ORDER
`Conditionally Granting Patent Owner’s Motion for
`Pro Hac Vice Admission of Yakov Zolotorev
`37 C.F.R. § 42.10
`
`
`
`
`
`PGR2023-00052
`Patent 11,574,372 B2
`
`
`On December 11, 2023, Patent Owner filed a motion requesting pro
`hac vice admission of Yakov Zolotorev. Paper 6 (“Motion” or “Mot.”).
`Patent Owner also submitted a Declaration from Mr. Zolotorev in support of
`the Motion. Ex. 2001 (“Declaration”). Petitioner has not opposed the
`Motion. For the reasons provided below, Patent Owner’s Motion is
`conditionally 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 Motion and the accompanying
`Declaration,1 we conclude that Mr. Zolotorev has sufficient legal and
`technical qualifications to represent Patent Owner 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. 2001. Accordingly, Patent Owner has established
`good cause for pro hac vice admission of Mr. Zolotorev. Mr. Zolotorev will
`be permitted to serve as back-up counsel only. See 37 C.F.R. § 42.10(c).
`
`1 We note that the Declaration includes IPR2023-00039 in the list of
`proceedings in which Mr. Zolotorev has appeared pro hac vice before the
`Office in the last three years. See Ex. 2001 ¶ 7. We understand this should
`instead identify PGR2023-00039. We deem this to be a typographical error.
`2
`
`
`
`
`
`PGR2023-00052
`Patent 11,574,372 B2
`
`
`Upon review of the record before us, we note that a Power of Attorney
`in accordance with 37 C.F.R. § 42.10(b) has not been submitted for Mr.
`Zolotorev. Therefore, Patent Owner’s Motion is conditionally granted, and
`is to be effective after Patent Owner files the aforementioned Power of
`Attorney.
`Patent Owner has not filed updated Mandatory Notices identifying
`Mr. Zolotorev as back-up counsel. Therefore, Patent Owner must file an
`updated Mandatory Notice identifying Mr. Zolotorev as back-up counsel in
`accordance with 37 C.F.R. § 42.8(b)(3).
`In consideration of the foregoing, it is hereby
`ORDERED that Patent Owner’s Motion (Paper 6) for pro hac vice
`admission of Yakov Zolotorev is conditionally granted, provided that within
`ten (10) business days of the date of this order, Patent Owner submits a
`Power of Attorney for Mr. Zolotorev in accordance with 37 C.F.R.
`§ 42.10(b);
`FURTHER ORDERED that Patent Owner must file an updated
`Mandatory Notice identifying Mr. Zolotorev as back-up counsel in
`accordance with 37 C.F.R. § 42.8(b)(3);
`FURTHER ORDERED that Patent Owner is to continue to have a
`registered practitioner represent it as lead counsel for this proceeding;
`FURTHER ORDERED that Mr. Zolotorev is authorized to represent
`Patent Owner as back-up counsel only in this proceeding;
`FURTHER ORDERED that Mr. Zolotorev comply with the Patent
`Trial and Appeal Board Consolidated Trial Practice Guide2 (84 Fed. Reg.
`
`
`2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`3
`
`
`
`
`
`PGR2023-00052
`Patent 11,574,372 B2
`
`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 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.
`
`
`
`
`
`4
`
`
`
`PGR2023-00052
`Patent 11,574,372 B2
`
`FOR PETITIONER:
`
`John Phillips
`Jia Zhu
`FISH & RICHARDSON P.C.
`PGR54598-0001PS2@fr.com
`PTABInbound@fr.com
`
`FOR PATENT OWNER:
`
`James M. Heintz
`DLA Piper LLP (US)
`jim.heintz@dlapiper.com
`
`Clayton Thompson
`DLA Piper LLP (US)
`clayton.thompson@dlapiper.com
`
`Robert Anton Nissen
`Nissen Patent Law
`robbie@nissenlaw.ca
`
`
`
`5
`
`
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