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Paper 15
`Entered: August 1, 2014
`
`
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC., GOOGLE INC., and MOTOROLA MOBILITY LLC,
`Petitioner,
`
`v.
`
`ARENDI S.A.R.L.,
`Patent Owner.
`_______________
`
`Cases IPR2014-00206 (Patent 7,496,854 B2)
`IPR2014-00207 (Patent 7,496,854 B2)
`IPR2014-00208 (Patent 7,917,843 B2)1
`_______________
`
`
`
`Before SALLY C. MEDLEY, Administrative Patent Judge.
`
`
`
`DECISION
`Motion for Pro Hac Vice Admission
`37 C.F.R. § 42.10
`
`On July 28, 2014, Petitioner filed motions for pro hac vice admission of Julie
`
`
`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.
`
`

`
`IPR2014-00206 (Patent 7,496,854 B2)
`IPR2014-00207 (Patent 7,496,854 B2)
`IPR2014-00208 (Patent 7,917,843 B2)
`
`S. Turner. The motions indicate that they are unopposed by Patent Owner. For the
`
`reasons provided below, Petitioner’s motions are conditionally 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 authorizing motions for pro hac
`
`vice admission, the Board requires the moving party to provide a statement of facts
`
`showing good cause for the Board to recognize counsel pro hac vice and an
`
`affidavit or declaration of the individual seeking to appear in a proceeding. Paper
`
`42 Notice of Filing Date Accorded to Petition, 2 (incorporating requirements in the
`
`“Order – Authorizing Motion for Pro Hac Vice Admission” in IPR2013-00639).
`
`In the above-identified proceedings, lead counsel for Petitioner, Mr. David
`
`Fehrman, is a registered practitioner. Petitioner’s motions indicate that there is
`
`good cause for the Board to recognize Ms. Turner pro hac vice during these
`
`proceedings, and are supported by the declaration of Ms. Turner. Ex. 1011.
`
`In particular, the motions explain that Ms. Turner is an experienced litigating
`
`attorney, and Ms. Turner declares that she has an established familiarity with the
`
`subject matter at issue in these proceedings. Paper 13, 2–3; Ex. 1011, ¶ 9.
`
`Upon consideration, Petitioner has demonstrated that Ms. Turner possesses
`
`sufficient legal and technical qualifications to represent Petitioner in these
`
`proceedings. Accordingly, Petitioner has established good cause for Ms. Turner’s
`
`admission.
`
`
`2 Citations are to IPR2014-00206.
`
`2
`
`
`
`

`
`IPR2014-00206 (Patent 7,496,854 B2)
`IPR2014-00207 (Patent 7,496,854 B2)
`IPR2014-00208 (Patent 7,917,843 B2)
`
`
`Petitioner filed its motions after publication of the Office’s Final Rule
`
`adopting new Rules of Professional Conduct. See Changes to Representation of
`
`Others Before the United States Patent and Trademark Office; Final Rule, 78 Fed.
`
`Reg. 20180 (Apr. 3, 2013). The Final Rule also removed Part 10 of Title 37, Code
`
`of Federal Regulations. The Rules of Professional Conduct replaced the Code of
`
`Professional Responsibility, and took effect on May 3, 2013. Id. at 20180-81; see
`
`also Notice of Filing Date Accorded to Petition, 2 (incorporating requirements in
`
`the “Order – Authorizing Motion for Pro Hac Vice Admission” in IPR2013-00639).
`
`In her declaration, Ms. Turner testifies that she agrees to be subject to the
`
`United States Patent and Trademark Office Code of Professional Responsibility set
`
`forth in 37 C.F.R. 10.20 et seq. Ex. 1011, ¶ 7. As stated above, however, those
`
`rules have been replaced by the new Rules of Professional Conduct.
`
`
`
`This decision is made on the presumption that Ms. Turner agrees to be
`
`subject to the USPTO’s Rules of Professional Conduct. Within one week of the
`
`date of posting of this decision, Petitioner shall file a statement from Ms. Turner
`
`that she agrees to be subject to the USPTO’s Rules of Professional Conduct as set
`
`forth in 37 C.F.R. §§ 11.101 et. seq.
`
`It is
`
`ORDERED that Petitioner’s motions for pro hac vice admission of Ms. Julie
`
`S. Turner are conditionally granted, provided that within one week of the date of
`
`posting of this decision, Petitioner files a declaration statement from Ms. Turner
`
`that she agrees to be subject to the USPTO’s Rules of Professional Conduct as set
`
`forth in 37 C.F.R. §§ 11.101 et. seq.;
`
`3
`
`
`
`

`
`IPR2014-00206 (Patent 7,496,854 B2)
`IPR2014-00207 (Patent 7,496,854 B2)
`IPR2014-00208 (Patent 7,917,843 B2)
`
`
`FURTHER ORDERED that if the above-noted declaration statement is
`
`timely filed, Ms. Turner is authorized to be designated as backup counsel only;
`
`FURTHER ORDERED that Petitioner is to continue to have a registered
`
`practitioner represent Petitioner as lead counsel for these proceedings; and
`
`FURTHER ORDERED that Ms. Julie S. Turner is to comply with the Office
`
`Patent Trial Practice Guide and the Board’s Rules of Practice for Trials, as set forth
`
`in Part 42 of Title 37, Code of Federal Regulations, and to be 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
`
`

`
`5
`
`IPR2014-00206 (Patent 7,496,854 B2)
`IPR2014-00207 (Patent 7,496,854 B2)
`IPR2014-00208 (Patent 7,917,843 B2)
`
`FOR PETITIONER:
`
`David Fehrman
`dfehrman@mofo.com
`
`Mehran Arjomand
`marjomand@mofo.com
`
`Matthew Smith
`smith@turnerboyd.com
`
`Zhuanjia Gu
`gu@turnerboyd.com
`
`
`
`FOR PATENT OWNER:
`
`Robert Asher
`rasher@sunsteinlaw.com
`
`Bruce Sunstein
`bsunstein@sunsteinlaw.com

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