`Entered: August 1, 2014
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`Trials@uspto.gov
`Tel: 571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
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`APPLE INC., GOOGLE INC., and MOTOROLA MOBILITY LLC,
`Petitioner,
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`v.
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`ARENDI S.A.R.L.,
`Patent Owner.
`_______________
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`Cases IPR2014-00206 (Patent 7,496,854 B2)
`IPR2014-00207 (Patent 7,496,854 B2)
`IPR2014-00208 (Patent 7,917,843 B2)1
`_______________
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`Before SALLY C. MEDLEY, Administrative Patent Judge.
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`DECISION
`Motion for Pro Hac Vice Admission
`37 C.F.R. § 42.10
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`On July 28, 2014, Petitioner filed motions for pro hac vice admission of Julie
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`1 This decision addresses motions for pro hac vice admission submitted in each of
`the three cases. One decision will be entered in each case. The parties are not
`authorized to use this heading style without authorization from the Board.
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`
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`IPR2014-00206 (Patent 7,496,854 B2)
`IPR2014-00207 (Patent 7,496,854 B2)
`IPR2014-00208 (Patent 7,917,843 B2)
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`S. Turner. The motions indicate that they are unopposed by Patent Owner. For the
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`reasons provided below, Petitioner’s motions are conditionally granted.
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`Pursuant to 37 C.F.R. § 42.10(c), the Board may recognize counsel pro hac
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`vice during a proceeding upon a showing of good cause, subject to the condition
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`that lead counsel be a registered practitioner. In authorizing motions for pro hac
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`vice admission, the Board requires the moving party to provide a statement of facts
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`showing good cause for the Board to recognize counsel pro hac vice and an
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`affidavit or declaration of the individual seeking to appear in a proceeding. Paper
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`42 Notice of Filing Date Accorded to Petition, 2 (incorporating requirements in the
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`“Order – Authorizing Motion for Pro Hac Vice Admission” in IPR2013-00639).
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`In the above-identified proceedings, lead counsel for Petitioner, Mr. David
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`Fehrman, is a registered practitioner. Petitioner’s motions indicate that there is
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`good cause for the Board to recognize Ms. Turner pro hac vice during these
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`proceedings, and are supported by the declaration of Ms. Turner. Ex. 1011.
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`In particular, the motions explain that Ms. Turner is an experienced litigating
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`attorney, and Ms. Turner declares that she has an established familiarity with the
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`subject matter at issue in these proceedings. Paper 13, 2–3; Ex. 1011, ¶ 9.
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`Upon consideration, Petitioner has demonstrated that Ms. Turner possesses
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`sufficient legal and technical qualifications to represent Petitioner in these
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`proceedings. Accordingly, Petitioner has established good cause for Ms. Turner’s
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`admission.
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`2 Citations are to IPR2014-00206.
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`2
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`IPR2014-00206 (Patent 7,496,854 B2)
`IPR2014-00207 (Patent 7,496,854 B2)
`IPR2014-00208 (Patent 7,917,843 B2)
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`Petitioner filed its motions after publication of the Office’s Final Rule
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`adopting new Rules of Professional Conduct. See Changes to Representation of
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`Others Before the United States Patent and Trademark Office; Final Rule, 78 Fed.
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`Reg. 20180 (Apr. 3, 2013). The Final Rule also removed Part 10 of Title 37, Code
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`of Federal Regulations. The Rules of Professional Conduct replaced the Code of
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`Professional Responsibility, and took effect on May 3, 2013. Id. at 20180-81; see
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`also Notice of Filing Date Accorded to Petition, 2 (incorporating requirements in
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`the “Order – Authorizing Motion for Pro Hac Vice Admission” in IPR2013-00639).
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`In her declaration, Ms. Turner testifies that she agrees to be subject to the
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`United States Patent and Trademark Office Code of Professional Responsibility set
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`forth in 37 C.F.R. 10.20 et seq. Ex. 1011, ¶ 7. As stated above, however, those
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`rules have been replaced by the new Rules of Professional Conduct.
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`This decision is made on the presumption that Ms. Turner agrees to be
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`subject to the USPTO’s Rules of Professional Conduct. Within one week of the
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`date of posting of this decision, Petitioner shall file a statement from Ms. Turner
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`that she agrees to be subject to the USPTO’s Rules of Professional Conduct as set
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`forth in 37 C.F.R. §§ 11.101 et. seq.
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`It is
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`ORDERED that Petitioner’s motions for pro hac vice admission of Ms. Julie
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`S. Turner are conditionally granted, provided that within one week of the date of
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`posting of this decision, Petitioner files a declaration statement from Ms. Turner
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`that she agrees to be subject to the USPTO’s Rules of Professional Conduct as set
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`forth in 37 C.F.R. §§ 11.101 et. seq.;
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`3
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`IPR2014-00206 (Patent 7,496,854 B2)
`IPR2014-00207 (Patent 7,496,854 B2)
`IPR2014-00208 (Patent 7,917,843 B2)
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`FURTHER ORDERED that if the above-noted declaration statement is
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`timely filed, Ms. Turner is authorized to be designated as backup counsel only;
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`FURTHER ORDERED that Petitioner is to continue to have a registered
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`practitioner represent Petitioner as lead counsel for these proceedings; and
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`FURTHER ORDERED that Ms. Julie S. Turner is to comply with the Office
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`Patent Trial Practice Guide and the Board’s Rules of Practice for Trials, as set forth
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`in Part 42 of Title 37, Code of Federal Regulations, and to be subject to the Office’s
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`disciplinary jurisdiction under 37 C.F.R. § 11.19(a) and the USPTO Rules of
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`Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq.
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`4
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`5
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`IPR2014-00206 (Patent 7,496,854 B2)
`IPR2014-00207 (Patent 7,496,854 B2)
`IPR2014-00208 (Patent 7,917,843 B2)
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`FOR PETITIONER:
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`David Fehrman
`dfehrman@mofo.com
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`Mehran Arjomand
`marjomand@mofo.com
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`Matthew Smith
`smith@turnerboyd.com
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`Zhuanjia Gu
`gu@turnerboyd.com
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`FOR PATENT OWNER:
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`Robert Asher
`rasher@sunsteinlaw.com
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`Bruce Sunstein
`bsunstein@sunsteinlaw.com