Trials@uspto.gov
`571-272-7822
`
`
` Paper No. 13
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`Date Entered: April 5, 2016
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`THORLEY INDUSTRIES LLC, D/B/A 4MOMS,
`Petitioner,
`
`v.
`
`KOLCRAFT ENTERPRISES, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00352
`Patent 9,027,180 B2
`____________
`
`
`
`
`
`Before MICHAEL R. ZECHER, BRIAN J. McNAMARA, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`GALLIGAN, Administrative Patent Judge.
`
`
`
`DECISION
`
`Denying Motion for Pro Hac Vice Admission of Mr. Raymond P. Niro, Jr.
`37 C.F.R. § 42.10
`
`

`
`IPR2016-00352
`Patent 9,027,180 B2
`
`
`As authorized by the Notice of Filing Date Accorded to the Petition (Paper
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`3, 2–3), Patent Owner filed a “Motion for Pro Hac Vice Admission” (Paper 101) of
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`Mr. Raymond P. Niro, Jr. For the reasons explained below, the Motion is denied
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`without prejudice.
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`I. Discussion
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`As set forth in 37 C.F.R. § 42.10(c), we may recognize counsel pro hac vice
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`during a proceeding upon a showing of good cause, subject to the condition that
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`lead counsel be a registered practitioner. For example, where the lead counsel is a
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`registered practitioner, a non-registered practitioner may be permitted to appear
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`pro hac vice “upon showing that counsel is an experienced litigating attorney and
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`has an established familiarity with the subject matter at issue in the proceeding.”
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`37 C.F.R. § 42.10(c). In authorizing motions for pro hac vice admission, we also
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`require a statement of facts showing there is good cause for us to recognize counsel
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`pro hac vice and an affidavit or declaration of the individual seeking to appear in
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`this proceeding. (See, Paper 7, “Order – Authorizing Motion for Pro Hac Vice
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`Admission” in IPR2013-00639, entered October 15, 20132). The affidavit or
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`declaration must attest that, among other things, “[n]o application for admission to
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`practice before any court or administrative body ever denied.” Id. at 3.
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`In a Declaration filed with the Motion, Mr. Niro attests that he “ha[s] never
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`had an application for admission to practice before any court or administrative
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`
`1 It appears Patent Owner filed duplicate copies of the Motion and the
`accompanying Declaration. See Papers 8, 10 (Motion), Papers 9, 11 (supporting
`Declaration). This Order specifically refers to the later-filed Motion (Paper 10)
`and the later-filed Declaration (Paper 11).
`2 Available at http://www.uspto.gov/patents-application-process/appealing-patent-
`decisions/decisions-and-opinions/representative-orders.
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`
`
`2
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`

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`IPR2016-00352
`Patent 9,027,180 B2
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`body denied.” Paper 11 ¶ 3.3 Mr. Niro further attests that he has applied to appear
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`pro hac vice in three other proceedings before the Office within the last three
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`years, including in Inter Partes Reexamination Control No. 95/000,514. Id. ¶ 7.
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`Citing the testimony of Mr. Niro, Patent Owner asserts that “[n]o application
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`filed by Mr. Niro for admission to practice before any court or administrative body
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`has ever been denied.” Paper 10, 4 (citing Paper 11 ¶ 3). However, Patent Owner
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`later states:
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`The petition for admission pro hac vice in Inter Partes Reexamination
`Control No. 95/000,514 was denied based on different standards used
`in Inter Partes Reexamination and because the petition was submitted
`after the written record had been developed without Mr. Niro’s
`participation and oral arguments in those proceedings were limited to
`the written record. See Decision on Petition in Inter Partes
`Reexamination Control No. 95/000,514, October 18, 2013 at 5.
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`Paper 10, 6 n.1. This statement of Patent Owner directly contradicts Patent
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`Owner’s assertion, and Mr. Niro’s testimony, that Mr. Niro has never been denied
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`admission to practice before an administrative body. In his Declaration, Mr. Niro
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`does not explain the circumstances of the denial, as required by our representative
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`Order. See IPR2013-00639, Paper 7, 4 (“Where the affiant or declarant is unable
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`to provide any of the information requested above in part 2(b) or make any of the
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`required statements or representations under oath, the individual should provide a
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`full explanation of the circumstances as part of the affidavit or declaration.”).
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`Based on the foregoing, we determine that Patent Owner has not made the
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`requisite showing of good cause for pro hac vice admission of Mr. Niro.
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`3 The Declaration of Mr. Niro was filed as a paper in this case, rather than as a
`separate exhibit. The parties are cautioned that such evidence should be filed as an
`exhibit. See 37 C.F.R. § 42.63(a) (“Evidence consists of affidavits, transcripts of
`depositions, documents, and things. All evidence must be filed in the form of an
`exhibit.”).
`
`
`
`3
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`

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`IPR2016-00352
`Patent 9,027,180 B2
`
`Therefore, Patent Owner’s Motion is denied without prejudice to re-file a motion
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`with supporting evidence consistent with the conditions imposed by our
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`representative Order for pro hac vice admission. See IPR2013-00639, Paper 7.
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`
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`II. Order
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`It is
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`ORDERED that the Patent Owner’s Motion for Pro Hac Vice Admission of
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`Mr. Raymond P. Niro, Jr. is DENIED without prejudice.
`
`4
`
`
`
`PETITIONER:
`
`Mark Knedeisen
`mark.knedeisen@klgates.com
`
`Jason Engel
`jason.engel.PTAB@klgates.com
`
`Lauren Murray
`lauren.murray@klgates.com
`
`
`
`PATENT OWNER:
`
`Brian Lynch
`yttriumnitrate@gmail.com
`
`Raymond Niro
`rnirojr@niro-mcandrews.com