`571-272-7822
`
`
`
`
`Paper No. 16
`Date Entered: March 22, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY LTD.,
`Petitioner,
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`____________
`
`Case IPR2017-018411
`Case IPR2017-018432
`Patent 7,893,501 B2
`____________
`
`Before JENNIFER MEYER CHAGNON, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Patent Owner’s Motions for Pro Hac Vice
`Admission of Joshua J. Miller
`37 C.F.R. § 42.10(c)
`
`
`
`
`
`
`
`
`1 Case IPR2017-01842 has been consolidated with Case IPR2017-01841.
`2 Case IPR2017-01844 has been consolidated with Case IPR2017-01843.
`
`
`
`
`
`IPR2017-01841, IPR2017-01843
`Patent 7,893,501 B2
`
`
`
`
`
`
`Patent Owner filed Motions in IPR2017-01841 and IPR2017-01843
`for pro hac vice admission of Joshua J. Miller. Paper 14 (“Mot.”). The
`Motions are supported by Declarations of Mr. Miller. Ex. 2001 (“Decl.”).3
`Petitioner did not file oppositions to the Motions within the one-week period
`permitted for filing an opposition. For the reasons provided below, Patent
`Owner’s Motions are 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 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 this proceeding.
`In these proceedings, lead counsel for Patent Owner, Gerald B.
`Hrycyszyn, a registered practitioner, filed the Motions. Mot. 2. In the
`Motions, Patent Owner states there is good cause for the Board to recognize
`Mr. Miller pro hac vice, because he has extensive patent litigation
`experience and he is familiar with the subject matter at issue in these
`proceedings. Id.
`In the Declarations, Mr. Miller attests that he is an experienced
`litigation attorney familiar with the subject matter at issue in these
`proceedings. Decl. ¶¶ H–J. Mr. Miller further declares that he has never
`
`
`3 For purposes of expediency, we refer to the papers and exhibits filed in
`IPR2017-01841. Patent Owner filed a similar Motion (Paper 14) and
`Declaration (Ex. 2207) in IPR2017-01843.
`
`2
`
`
`
`
`
`
`
`
`IPR2017-01841, IPR2017-01843
`Patent 7,893,501 B2
`
`been suspended, disbarred, sanctioned, or cited for contempt by any court or
`administrative body (id. ¶ C), and has not been denied for admission to
`practice before any court or administrative body (id. ¶ D). Mr. Miller further
`states that he has read and will comply with the Office Patent Trial Practice
`Guide and the Board’s rules as set forth in 37 C.F.R. § 42 (id. ¶ E), and
`agrees to be subject to the USPTO 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) (id. ¶ F).
`Patent Owner must submit Powers of Attorney for Mr. Miller in
`accordance with 37 C.F.R. § 42.10(b), and must update its mandatory
`notices as required by 37 C.F.R. § 42.8(b)(3).
`
`It is
`ORDERED that Patent Owner’s Motions (IPR2017-01841, Paper 14;
`IPR2017-01843, Paper 14) for pro hac vice admission of Joshua J. Miller are
`granted;
`FURTHER ORDERED that, within seven (7) business days of the
`date of this order, Patent Owner must submit Powers of Attorney in
`IPR2017-01841 and IPR2017-01843 for Mr. Miller in accordance with
`37 C.F.R. § 42.10(b);
`FURTHER ORDERED that Patent Owner must file updated
`mandatory notices in IPR2017-01841 and IPR2017-01843 identifying
`Mr. Miller as back-up counsel in accordance with 37 C.F.R. § 42.8(b)(3);
`FURTHER ORDERED that Patent Owner shall continue to have a
`registered practitioner represent it as lead counsel for the instant
`proceedings;
`
`3
`
`
`
`
`IPR2017-01841, IPR2017-01843
`Patent 7,893,501 B2
`
`
`
`
`
`
`FURTHER ORDERED that Mr. Miller shall 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
`FURTHER ORDERED that Mr. Miller shall 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.
`
`
`PETITIONER:
`
`David L. Cavanaugh
`Dominic E. Massa
`Michael H. Smith
`WILMER CUTLER PICKERING HALE AND DORR LLP
`David.Cavanaugh@wilmerhale.com
`Dominic.Massa@wilmerhale.com
`MichaelH.Smith@wilmerhale.com
`
`
`PATENT OWNER:
`
`Gerald B. Hrycyszyn
`Richard F. Giunta
`Edmund J. Walsh
`WOLF, GREENFIELD & SACKS, P.C.
`GHrycyszyn-PTAB@wolfgreenfield.com
`RGiunta-PTAB@wolfgreenfield.com
`EWalsh-PTAB@wolfgreenfield.com
`
`
`
`
`
`4
`
`
`
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