throbber
Trials@uspto.gov
`571.272.7822
`
`
` Paper No. 11
` Entered: January 12, 2021
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`NANOCO TECHNOLOGIES LTD.,
`Patent Owner.
`____________
`
`IPR2021-00182 (Patent 9,680,068 B2)
`IPR2021-00183 (Patent 7,588,828 B2)
`IPR2021-00184 (Patent 7,803,423 B2)
`IPR2021-00185 (Patent 7,867,557 B2)
` IPR2021-00186 (Patent 8,524,365 B2)1
`____________
`
`
`
`Before ERICA A. FRANKLIN, GRACE KARAFFA OBERMANN, and
`CHRISTOPHER M. KAISER, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`DECISION
`Granting Patent Owner’s Motions for Pro Hac Vice
`Admission of Michael C. Newman,
`Thomas H. Wintner, and Matthew S. Galica
`37 C.F.R. § 42.10
`
`
`1 This Order applies to each of the above-listed proceedings. We exercise
`our discretion to issue one Order to be filed in each proceeding. Unless
`otherwise authorized, the parties shall not use this heading style in any
`subsequent papers.
`
`
`
`

`

`IPR2021-00182 (Patent 9,680,068 B2)
`IPR2021-00183 (Patent 7,588,828 B2)
`IPR2021-00184 (Patent 7,803,423 B2)
`IPR2021-00185 (Patent 7,867,557 B2)
`IPR2021-00186 (Patent 8,524,365 B2)
`
`Patent Owner filed motions for pro hac vice admission of Michael C.
`Newman, Thomas H. Wintner, and Matthew S. Galica in the above-
`identified proceedings (collectively, “Motions”). Papers 7, 8, 9.2 Patent
`Owner also filed declarations from Mr. Newman, Mr. Wintner, and Mr.
`Galica in support of the Motions (collectively, “Declarations”). Exs. 2001,
`2002, 2003.3 Patent Owner states that counsel for Petitioner does not object
`to the admissions pro hac vice of Mr. Newman, Mr. Wintner, and Mr.
`Galica. Paper 7, 2; Paper 8, 2; Paper 9, 2.
`In accordance with 37 C.F.R. § 42.10(c), we may recognize counsel
`pro hac vice during a proceeding upon a showing of good cause. 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 the proceeding. See 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”)).
`Lead counsel for Patent Owner, William A. Meunier, a registered
`practitioner, filed the Motions. Paper 7, 5; Paper 8, 5; Paper 9, 5. In the
`Motions, Patent Owner states there is good cause for the Board to recognize
`
`
`2 All citations are to IPR2021-00182, unless otherwise noted. Patent Owner
`filed similar motions in IPR2021-00183, IPR2021-00184, IPR2021-00185,
`and IPR2021-00186.
`3 Patent Owner filed similar declarations in IPR2021-00183, IPR2021-
`00184, IPR2021-00185, and IPR2021-00186.
`
`2
`
`

`

`IPR2021-00182 (Patent 9,680,068 B2)
`IPR2021-00183 (Patent 7,588,828 B2)
`IPR2021-00184 (Patent 7,803,423 B2)
`IPR2021-00185 (Patent 7,867,557 B2)
`IPR2021-00186 (Patent 8,524,365 B2)
`
`Mr. Newman, Mr. Wintner, and Mr. Galica pro hac vice during these
`proceedings because they are experienced patent litigators, and have an
`established familiarity with the subject matter at issue in these proceedings,
`as well as the parallel litigation involving the patents at issue in these
`proceedings. Paper 7, 2–3; Paper 8, 2–3; Paper 9, 2–3. The Declarations of
`Mr. Newman, Mr. Wintner, and Mr. Galica also comply with the
`requirements for pro hac vice admission. Ex. 2001 ¶¶1–9; Ex. 2002 ¶¶1–11;
`Ex. 2003 ¶¶ 1–9; see Unified Patents, slip op. at 3–4.
`Based on the information presented in the Motions and Declarations,
`and in view of Patent Owner’s assertion that Petitioner does not oppose the
`Motions, we find that good cause exists for granting the Motions and
`permitting the pro hac vice admission of Mr. Newman, Mr. Wintner, and
`Mr. Galica.
`Patent Owner has updated its Mandatory Notices as required by 37
`C.F.R. § 42.8(b)(3). Paper 6. Patent Owner has also submitted Powers of
`Attorney for Mr. Newman, Mr. Wintner, and Mr. Galica in all but one
`instance: in IPR2021-00182, Patent Owner has not submitted a Power of
`Attorney for Mr. Galica. Paper 5. Thus, in IPR2021-00182, Patent Owner
`must submit a Power of Attorney for Mr. Galica in accordance with 37
`C.F.R. § 42.10(b).4
`
`
`
`4 Patent Owner is only required to submit a Power of Attorney for Mr.
`Galica in IPR2021-00182, as Patent Owner has already submitted a Power
`of Attorney for Mr. Galica in the other proceedings. See e.g., IPR2021-
`00183, Paper 5.
`
`3
`
`

`

`IPR2021-00182 (Patent 9,680,068 B2)
`IPR2021-00183 (Patent 7,588,828 B2)
`IPR2021-00184 (Patent 7,803,423 B2)
`IPR2021-00185 (Patent 7,867,557 B2)
`IPR2021-00186 (Patent 8,524,365 B2)
`
`
`It is
`ORDERED that the Motions are granted, and Michael C. Newman,
`Thomas H. Wintner, and Matthew S. Galica are authorized to represent
`Patent Owner only as back-up counsel in each proceeding identified in the
`heading;
`FURTHER ORDERED that a registered practitioner will continue to
`represent Patent Owner as lead counsel in the above-identified proceedings;
`FURTHER ORDERED that Mr. Newman, Mr. Wintner, and Mr.
`Galica shall comply with the Office Patent Trial Practice Guide (84 Fed.
`Reg. 64,280 (Nov. 21, 2019)), 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. Newman, Mr. Wintner, and Mr.
`Galica are subject to the USPTO’s Rules of Professional Conduct set forth in
`37 C.F.R. §§ 11.101 et seq. and to the USPTO’s disciplinary jurisdiction
`under 37 C.F.R. § 11.19(a); and
`FURTHER ORDERED that, within ten (10) business days of the date
`of this order, Petitioner must submit a Power of Attorney for Mr. Galica in
`IPR2021-00182, in accordance with 37 C.F.R. § 42.10(b).
`
`4
`
`

`

`IPR2021-00182 (Patent 9,680,068 B2)
`IPR2021-00183 (Patent 7,588,828 B2)
`IPR2021-00184 (Patent 7,803,423 B2)
`IPR2021-00185 (Patent 7,867,557 B2)
`IPR2021-00186 (Patent 8,524,365 B2)
`
`
`PETITIONER:
`
`F. Christopher Mizzo
`Gregory Arovas
`Stefan Miller
`Todd Baker
`KIRKLAND & ELLIS LLP
`chris.mizzo@kirkland.com
`greg.arovas@kirkland.com
`stefan.miller@kirkland.com
`todd.baker@kirkland.com
`
`PATENT OWNER:
`
`William A. Meunier
`Peter J. Cuomo
`MINTZ, LEVIN, COHN, FERRIS,
`GLOVSKY AND POPEO, P.C.
`WAMeunier@mintz.com
`PJCuomo@mintz.com
`
`
`
`
`
`
`
`
`
`
`
`5
`
`

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