`571-272-7822
`
`
`
`
`
`
`Paper No. 9
`Filed: March 27, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ROKU, INC.,
`Petitioner,
`
`v.
`
`CONVERGENT MEDIA SOLUTIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01762
`Patent 8,893,212 B2
`____________
`
`
`
`Before JAMESON LEE, KEN BARRETT, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`DECISION
`Petitioner’s Motion for
`Pro Hac Vice Admission of Matthew C. Bernstein
`37 C.F.R. § 42.10
`
`
`
`
`
`
`
`
`
`IPR2016-01762
`Patent 8,893,212 B2
`
`
`I. INTRODUCTION
`
`On March 1, 2017, Petitioner filed a motion for pro hac vice
`
`admission of Mr. Matthew C. Bernstein. Paper 6. Patent Owner did not file
`
`an opposition. The motion is granted.
`
`II. DISCUSSION
`
`The Board may recognize counsel pro hac vice during a proceeding
`
`upon a showing of good cause, subject to the condition that lead counsel is a
`
`registered practitioner. 37 C.F.R. § 42.10(c). If lead counsel is a registered
`
`practitioner, a non-registered practitioner may be permitted to appear pro
`
`hac vice “upon showing that counsel is an experienced litigating attorney
`
`and has an established familiarity with the subject matter at issue in the
`
`proceeding.” Id.
`
`In this proceeding, lead counsel for Petitioner is Chun M. Ng, a
`
`registered practitioner. Paper 1, 2. Petitioner’s motion relies on a
`
`declaration of Matthew C. Bernstein. Paper 6, 1–3; see also Ex. 1028.
`
`Mr. Bernstein declares that he is a member in good standing of the state Bar
`
`of California. Ex. 1028 ¶ 1. Mr. Bernstein declares that he has never been
`
`suspended, disbarred, sanctioned or cited for contempt by any court or
`
`administrative body, and that he has never had an application for admission
`
`to practice denied by any court or administrative body. Id. ¶¶ 2–4.
`
`Mr. Bernstein declares that he is an experienced litigation attorney who is
`
`familiar with the subject matter at issue in this proceeding based on his work
`
`as lead counsel for Petitioner in the related district court litigation between
`
`the parties: Convergent Media Solutions, LLC v. AT&T, Inc., 3:15-cv-2156-
`
`M (N.D. Tex.). Id. ¶¶ 8–10. Lastly, Mr. Bernstein declares that he has read
`
`and will comply with the Office Patent Trial Practice Guide and the Board’s
`
`2
`
`
`
`IPR2016-01762
`Patent 8,893,212 B2
`
`
`Rules of Practice for Trials set forth in 37 C.F.R. Part 42, and agrees to be
`
`subject to the United States Patent and Trademark Office Rules of
`
`Professional Conduct as set forth in 37 C.F.R. §§ 11.101 et seq. and to
`
`disciplinary jurisdiction under 37 C.F.R. § 11.19(a). Id. ¶¶ 5–6.
`
`Accordingly, based on the foregoing, we determine that Petitioner has
`
`established good cause for the admission, pro hac vice, of Mr. Matthew C.
`
`Bernstein.
`
`It is:
`
`III. ORDER
`
`ORDERED that Petitioner’s motion for pro hac vice admission of
`
`Matthew C. Bernstein for this proceeding is granted;
`
`FURTHER ORDERED that Mr. Bernstein is authorized to represent
`
`Petitioner as back-up counsel, but not lead counsel, in this proceeding;
`
`FURTHER ORDERED that Mr. Bernstein will comply with the
`
`Office Patent Trial Practice Guide and the Board’s Rules of Practice for
`
`Trials, as set forth in 37 C.F.R. Part 42, and will be subject to the Office’s
`
`Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq., and
`
`disciplinary jurisdiction under 37 C.F.R. § 11.19(a); and
`
`FURTHER ORDERED that Patent Owner is to continue to have a
`
`registered practitioner represent it as lead counsel in this proceeding.
`
`
`
`
`
`3
`
`
`
`4
`
`IPR2016-01762
`Patent 8,893,212 B2
`
`
`For PETITIONER:
`
`Chun Ng
`Patrick McKeever
`Vinay Sathe
`Miguel Bombach
`Kevin Kantharia
`cng@perkinscoie.com
`pmckeever@perkinscoie.com
`vsathe@perkinscoie.com
`mbombach@perkinscoie.com
`kkantharia@perkinscoie.com
`
`
`For PATENT OWNER:
`
`Matthew Juren
`Barry Bumgardner
`matthew@nelbum.com
`barry@nelbum.com
`
`
`
`
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