Trials@uspto.gov
`571-272-7822
`
`Paper 14
`Entered: January 15, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SHOPIFY, INC.,
`Petitioner,
`
`v.
`
`DDR HOLDINGS, LLC,
`Patent Owner.
`____________
`
`IPR2018-01008 and IPR2018-01011 (Patent 9,639,876 B1)
`IPR2018-01009 and IPR2018-01012 (Patent 9,043,228 B1)
`IPR2018-01010 and IPR2018-01014 (Patent 8,515,825 B1)1
`____________
`
`Before CARL M. DEFRANCO, PATRICK M. BOUCHER, and
`ALYSSA A. FINAMORE, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`ORDER
`Granting Patent Owner’s Motions for Admission
`Pro Hac Vice of Ian B. Crosby
`37 C.F.R. § 42.10
`
`
`
`
`1 This Order addresses issues that are the same in the above-identified proceedings.
`We exercise our discretion to issue one Order to be entered in each proceeding.
`The parties are not authorized to use a multi-proceeding caption.
`
`

`

`IPR2018-01008, IPR2018-01011 (Patent 9,639,876 B1)
`IPR2018-01009, IPR2018-01012 (Patent 9,043,228 B1)
`IPR2018-01010, IPR2018-01014 (Patent 8,515,825 B1)
`
`
`On January 4, 2019, DDR Holdings, LLC (“Patent Owner”) filed motions
`
`for admission pro hac vice of Ian B. Crosby in the above-identified proceedings
`
`(collectively “Motions”). Paper 14.2 Patent Owner also filed declarations of Mr.
`
`Crosby in support of the Motions (collectively “Declarations”). Ex. 2024.3 Patent
`
`Owner represents that “Petitioner has indicated that it has no objection to Mr.
`
`Crosby’s admission pro hac vice.” Paper 14, 3. 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 its notice authorizing motions for
`
`pro hac vice admission, the Board requires 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. See Paper 6, 2
`
`(citing Unified Patents, Inc. v. Parallel Iron, LLC, Case IPR2013-00639 (PTAB
`
`Oct. 15, 2013) (Paper 7) (representative “Order – Authorizing Motion for Pro Hac
`
`Vice Admission”)).
`
`Based on the facts set forth in the Motions and the accompanying
`
`Declarations, we conclude that Mr. Crosby has sufficient legal and technical
`
`qualifications to represent Patent Owner in these proceedings, that Mr. Crosby has
`
`
`2 We cite to Papers filed in IPR2018-01008. On January 4, 2019, Patent Owner
`filed similar Motions in IPR2018-01009 (Paper 12), IPR2018-01010 (Paper 10),
`IPR2018-01011 (Paper 12), IPR2018-01012 (Paper 12), and IPR2018-01014
`(Paper 12).
`3 We cite to Exhibits filed in IPR2018-01008. On January 4, 2019, Patent Owner
`filed similar Declarations in IPR2018-01009 (Ex. 2024), IPR2018-01010 (Ex.
`2024), IPR2018-01011 (Ex. 2024), IPR2018-01012 (Ex. 2024), and IPR2018-
`01014 (Ex. 2024).
`
`
`
`2
`
`

`

`IPR2018-01008, IPR2018-01011 (Patent 9,639,876 B1)
`IPR2018-01009, IPR2018-01012 (Patent 9,043,228 B1)
`IPR2018-01010, IPR2018-01014 (Patent 8,515,825 B1)
`
`demonstrated sufficient familiarity with the subject matter of these proceedings,
`
`and that Patent Owner’s intent to be represented by counsel with litigation
`
`experience is warranted. Accordingly, Patent Owner has established good cause
`
`for pro hac vice admission of Mr. Crosby. Mr. Crosby will be permitted to serve
`
`as back-up counsel only. See 37 C.F.R. § 42.10(c).
`
`We note that a Power of Attorney has not been submitted for Mr. Crosby.
`
`Accordingly, Patent Owner must submit a Power of Attorney for Mr. Crosby 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 hereby
`
`ORDER
`
`ORDERED that Patent Owner’s Motions for pro hac vice admission of Mr.
`
`Ian B. Crosby are granted;
`
`FURTHER ORDERED that Patent Owner is to continue to have a registered
`
`practitioner represent it as lead counsel for the above-identified proceedings;
`
`FURTHER ORDERED that Mr. Crosby is authorized to represent Patent
`
`Owner only as back-up counsel in the above-identified proceedings;
`
`FURTHER ORDERED that Mr. Crosby is to comply with the Office Patent
`
`Trial Practice Guide, as updated by the August 2018 Update, 83 Federal Register
`
`39,989 (Aug. 13, 2018), and the Board’s Rules of Practice for Trials, as set forth in
`
`Part 42 of Title 37, Code of Federal Regulations;
`
`FURTHER ORDERED that Mr. Crosby shall be subject to the Office’s
`
`disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and the USPTO Rules of
`
`
`
`3
`
`

`

`IPR2018-01008, IPR2018-01011 (Patent 9,639,876 B1)
`IPR2018-01009, IPR2018-01012 (Patent 9,043,228 B1)
`IPR2018-01010, IPR2018-01014 (Patent 8,515,825 B1)
`
`Professional Conduct set forth in 37 C.F.R. §§ 11.101 et. seq.;4
`
`FURTHER ORDERED that, within seven (7) business days of the date of
`
`this Order, Patent Owner must submit Powers of Attorney for Mr. Crosby in each
`
`of the above-identified proceedings in accordance with 37 C.F.R. § 42.10(b); and
`
`FURTHER ORDERED that Patent Owner shall file updated Mandatory
`
`Notices in each of the above-identified proceedings in accordance with
`
`37 C.F.R. § 42.8(b)(3), identifying Mr. Crosby as back-up counsel.
`
`
`
`
`4 In the Declarations, Mr. Crosby indicates he will be subject to the USPTO Rules
`of Professional Responsibility, as opposed to USPTO Rules of Professional
`Conduct. Ex. 2024 ¶ 6. We deem this harmless error.
`
`
`
`4
`
`

`

`IPR2018-01008, IPR2018-01011 (Patent 9,639,876 B1)
`IPR2018-01009, IPR2018-01012 (Patent 9,043,228 B1)
`IPR2018-01010, IPR2018-01014 (Patent 8,515,825 B1)
`
`For Petitioner:
`
`Michael McNamara
`mmcnamara@mintz.com
`
`William Meunier
`wameunier@mintz.com
`
`
`
`For Patent Owner:
`
`Louis Hoffman
`donald@valuablepatents.com
`
`Justin Lesko
`justinlesko@patentit.com
`
`
`
`
`
`5
`
`