Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 21
`Entered: March 5, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`GUARDIAN ALLIANCE TECHNOLOGIES, INC.,
`Petitioner,
`v.
`TYLER MILLER,
`Patent Owner.
`____________________
`
`Case IPR2020-00031
`Patent 10,043,188 B2
`____________
`
`Before SALLY C. MEDLEY, DAVID C. MCKONE and JOHN R. KENNY,
`Administrative Patent Judges.
`
`
`MCKONE, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Petitioner’s Motion for Pro Hac Vice Recognition of Counsel
`37 C.F.R. § 42.10(c)
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 21
`Entered: March 5, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`GUARDIAN ALLIANCE TECHNOLOGIES, INC.,
`Petitioner,
`v.
`TYLER MILLER,
`Patent Owner.
`____________________
`
`Case IPR2020-00031
`Patent 10,043,188 B2
`____________
`
`Before SALLY C. MEDLEY, DAVID C. MCKONE and JOHN R. KENNY,
`Administrative Patent Judges.
`
`
`MCKONE, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Petitioner’s Motion for Pro Hac Vice Recognition of Counsel
`37 C.F.R. § 42.10(c)
`
`
`
`
`
`
`
`
`
`
`IPR2020-00031
`Patent 10,043,188 B2
`
`Petitioner moves for pro hac vice recognition of Evan W. Talley.
`Paper 18 (“Mot.”). Petitioner’s Motion is supported by the Declaration of
`Mr. Talley. Ex. 1034 (“Talley Decl.”).1 Patent Owner opposes Petitioner’s
`Motion. Paper 19 (“Opp.”).
`According to our rules,
`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 and to
`any other conditions as the Board may impose. For example,
`where the lead counsel is a registered practitioner, a motion to
`appear pro hac vice by counsel who is not a registered
`practitioner may be granted upon showing that counsel is an
`experienced litigating attorney and has an established
`familiarity with the subject matter at issue in the proceeding.
`37 C.F.R. § 42.10(c); see also Patent Trial and Appeal Board Consolidated
`Trial Practice Guide (November 2019), 11.
`Petitioner and Mr. Talley represent that Mr. Talley is an experienced
`litigator, with approximately ten years of experience with patent matters and
`complex litigation in multiple district and appellate courts. Mot. 2; Talley
`Decl. ¶¶ 2–5. Petitioner and Mr. Talley further represent that Mr. Talley is
`familiar with the subject matter of this proceeding through his representation
`of Petitioner’s indemnitee in related district court litigation. Mot. 2–3;
`Talley Decl. ¶¶ 1, 4–5. We are satisfied that Mr. Talley is “an experienced
`litigating attorney and has an established familiarity with the subject matter
`at issue in the proceeding,” as recited in Rule 42.10(c).
`
`
`1 The Declaration of Mr. Talley is labeled as Exhibit 1034, but has been filed
`as Paper 17. Petitioner should file Mr. Talley’s Declaration as an Exhibit
`and seek to have Paper 17 expunged.
`
` 2
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`IPR2020-00031
`Patent 10,043,188 B2
`
`Patent Owner opposes by contending that Mr. Talley is likely to
`become a fact witness in this proceeding. Opp. 1–2 (citing 37 C.F.R.
`§ 11.307(a)). In the Petition (Paper 1), Petitioner contends that the ’188
`patent would have been obvious over, inter alia, the POBITS reference
`(Ex. 1004). Pet. 4. Patent Owner contends that POBITS is not prior art to
`the ’188 patent. Paper 7 (Prelim. Resp.) 28–34. Patent Owner argues that,
`because Mr. Talley participated in the preparation of POBITS as an exhibit
`to the Petition, he likely will be a fact witness as the parties seek to establish
`whether POBITS was publicly available in February 2011. Opp. 1–2.
`We are not persuaded that a lawyer’s participation in the preparation
`of petition exhibits, a seemingly necessary task in an inter partes review,
`somehow converts that lawyer into a likely fact witness and disqualifies
`them from further representation of the party in the proceeding. Patent
`Owner’s objection is unpersuasive.
`Patent Owner further offers “additional factors,” which are an
`unfounded attack on Mr. Talley’s character and an improper attempt to re-
`argue the public accessibility of POBITS. Opp. 2–5. Patent Owner argues
`that Mr. Talley violated his duty of candor through his alleged involvement
`with the preparation of the testimony of Mr. Klosson (Ex. 1014), who
`testified regarding POBITS. Id. at 2–4 (citing 37 C.F.R. § 11.303). Patent
`Owner’s apparent concern is that Mr. Klosson did not qualify his factual
`assertions with “I believe” or “I have been told,” and that, lacking these
`statements, Mr. Klosson’s testimony is false or misleading. Id. Patent
`Owner then offers evidence that it alleges contradicts Mr. Klosson’s
`testimony. Id. at 4–5. Patent Owner’s disagreement with Mr. Klosson’s
`testimony, however, does not mean that that testimony is willfully false.
`
` 3
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`IPR2020-00031
`Patent 10,043,188 B2
`
`Although we will evaluate Mr. Klosson’s testimony to determine the proper
`weight to which it is entitled, we see nothing in Mr. Klosson’s Declaration to
`suggest that his testimony is false or misleading. Patent Owner’s allegation
`of misconduct is a serious one, but it is backed up by no meaningful
`evidence.
`Patent Owner’s remaining “additional factors” simply argue that,
`despite some indication that POBITS was archived at the Internet Archive in
`February 2011, it was not in fact archived until much later. Opp. 4–5.
`These arguments are improper in an opposition to a pro hac vice motion and
`will not be considered.
`We have considered Petitioner’s evidence and conclude that
`Mr. Talley is an experienced litigating attorney and has an established
`familiarity with the subject matter at issue in the proceeding. See Rule
`42.10(c). Patent Owner’s opposition arguments are improper in an
`opposition to a pro hac vice motion and are unpersuasive. Petitioner has
`shown good cause to recognize Mr. Talley in this proceeding.
`
`
`I. ORDER
`
`It is:
`ORDERED that Petitioner’s Motion is granted;
`FURTHER ORDERED that Mr. Talley is authorized to represent
`Petitioner as back-up counsel only in this proceeding;
`FURTHER ORDERED that Mr. Talley will comply with the Patent
`Trial and Appeal Board Consolidated Trial Practice Guide
`
` 4
`
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`IPR2020-00031
`Patent 10,043,188 B2
`
`(November 2019), and the Board’s Rules of Practice for Trials, as set forth
`in 37 C.F.R. Part 42; and
`FURTHER ORDERED that Mr. Talley 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).
`
`
`
` 5
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`IPR2020-00031
`Patent 10,043,188 B2
`
`PETITIONER:
`Jordan Sigale
`Douglas Sorocco
`DUNLAP CODDING, P.C.
`jsigale@dunlapcodding.com
`dsorocco@dunlapcodding.com
`
`PATENT OWNER:
`Richard Mc Leod
`Mc Leod Law LLC
`law@rickmcleod.com
`
`Kurt Rylander
`RYLANDER & ASSOCIATES PC
`rylander@rylanderlaw.com
`
`
` 6
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`
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