`571-272-7822
`
`
`
`Paper 8
`Entered: January 21, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NETFLIX, INC. and ROKU, INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`IPR2020-00041
`Patent 8,407,609 B2
`____________
`
`Before CHARLES J. BOUDREAU, DANIEL J. GALLIGAN, and
`JULIET MITCHELL DIRBA, Administrative Patent Judges.
`
`DIRBA, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Petitioner’s Motion for Admission
`Pro Hac Vice of Matthew C. Bernstein
`37 C.F.R. § 42.10
`
`
`
`
`
`IPR2020-00041
`Patent 8,407,609 B2
`
`
`On December 31, 2019, Petitioner filed a Motion for Admission Pro
`
`Hac Vice of Matthew C. Bernstein. Paper 7 (“Motion”). Petitioner also
`
`filed a Declaration of Mr. Bernstein in support of the Motion. Ex. 1006
`
`(“Declaration”).1 Patent Owner has not filed an opposition to the Motion.
`
`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 4, 2 (citing Unified Patents, Inc. v.
`
`Parallel Iron, LLC, IPR2013-00639, Paper 7 (PTAB Oct. 15, 2013)
`
`(representative “Order – Authorizing Motion for Pro Hac Vice
`
`Admission”)).
`
`Based on the facts set forth in the Motion and the accompanying
`
`Declaration, we conclude that Petitioner has established good cause for pro
`
`hac vice admission of Mr. Bernstein. Mr. Bernstein will be permitted to
`
`serve as back-up counsel only. See 37 C.F.R. § 42.10(c).
`
`We note that Petitioner has filed a Power of Attorney including Mr.
`
`Bernstein in accordance with 37 C.F.R. § 42.10(b). Papers 2–3. Petitioner
`
`has also filed a Mandatory Notice identifying Mr. Bernstein as back-up
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`counsel in accordance with 37 C.F.R. § 42.8(b)(3). Paper 1, 3.
`
`
`
`
`1 Although Exhibit 1006 is incorrectly labeled as an affidavit (which requires
`the seal and signature of a notarial officer), it is a proper declaration under
`37 C.F.R. § 1.68.
`
`
`
`2
`
`
`
`IPR2020-00041
`Patent 8,407,609 B2
`
`
`Accordingly, it is:
`
`ORDERED that Petitioner’s Motion for pro hac vice admission of Mr.
`
`Matthew C. Bernstein is granted;
`
`FURTHER ORDERED that Petitioner is to continue to have a
`
`registered practitioner represent it as lead counsel for this proceeding;
`
`FURTHER ORDERED that Mr. Bernstein is authorized to represent
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`Petitioner only as back-up counsel in this proceeding;
`
`FURTHER ORDERED that Mr. Bernstein is to comply with the
`
`Office Patent Trial Practice Guide (84 Fed. Reg. 64,280 (Nov. 21, 2019)),
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`and the Board’s Rules of Practice for Trials, as set forth in Part 42 of Title
`
`37, Code of Federal Regulations; and
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`FURTHER ORDERED that Mr. Bernstein shall be subject to the
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`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.
`
`
`
`3
`
`
`
`IPR2020-00041
`Patent 8,407,609 B2
`
`PETITIONER:
`
`Babak Tehranchit
`Tehranchi-ptab@perkinscoie.com
`
`Patrick McKeever
`Mckeever-ptab@perkinscoie.com
`
`Kyle Canavera
`Canavera-ptab@perkinscoie.com
`
`
`PATENT OWNER:
`
`Ryan Loveless
`ryan@etheridgelaw.com
`
`Brett Mangrum
`brett@etheridgelaw.com
`
`James Etheridge
`jim@etheridgelaw.com
`
`Jeffrey Huang
`jeff@etheridgelaw.com
`
`
`
`
`4
`
`