throbber
Trials@uspto.gov
`571.272.7822
`
`
` Paper No. 35
` Entered: November 30, 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.
`
`KAISER, Administrative Patent Judge.
`
`
`DECISION
`Granting Petitioner’s Motions for Pro Hac Vice
`Admission of Stephen C. DeSalvo,
`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)
`
`Petitioner filed motions for pro hac vice admission of Stephen C.
`DeSalvo in the above-identified proceedings (collectively, “Motions”).
`Paper 30.2 Petitioner also filed declarations from Mr. DeSalvo in support of
`the Motions (collectively, “Declarations”). Ex. 1042.3 Patent Owner has not
`filed an opposition to the motion.
`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 Petitioner, F. Christopher Mizzo, a registered
`practitioner, filed the Motions. Paper 30, 5. In the Motions, Petitioner states
`there is good cause for the Board to recognize Mr. DeSalvo pro hac vice
`during these proceedings because he is an experienced litigating attorney,
`and has an established familiarity with the subject matter at issue in these
`proceedings, as well as the parallel litigation involving the patents at issue in
`
`
`2 All citations are to IPR2021-00182, unless otherwise noted. Petitioner
`filed similar motions in IPR2021-00183, IPR2021-00184, IPR2021-00185,
`and IPR2021-00186.
`3 Petitioner 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)
`
`these proceedings. Paper 30, 1–4. The Declarations of Mr. DeSalvo also
`comply with the requirements for pro hac vice admission. Ex. 1042 ¶¶1–9;
`see Unified Patents, slip op. at 3–4.
`Based on the information presented in the Motions and Declarations,
`and in view of the fact that Patent Owner has not filed an opposition to
`Petitioner’s Motions, we find that good cause exists for granting the
`Motions and permitting the pro hac vice admission of Mr. DeSalvo.
`Petitioner must submit a Power of Attorney for Mr. DeSalvo in accordance
`with 37 C.F.R. § 42.10(b) and must update its mandatory notices in
`accordance with 37 C.F.R. § 42.8(b)(3).
`
`It is
`ORDERED that the Motions are granted, and Stephen C. DeSalvo is
`authorized to represent Petitioner as back-up counsel in each proceeding
`identified in the heading;
`FURTHER ORDERED that a registered practitioner will continue to
`represent Petitioner as lead counsel in the above-identified proceedings;
`FURTHER ORDERED that Mr. DeSalvo 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. DeSalvo is 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);
`
`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)
`
`FURTHER ORDERED that, within ten (10) business days of the date
`of this order, Petitioner must submit a Power of Attorney for Mr. DeSalvo,
`in accordance with 37 C.F.R. § 42.10(b); and
`FURTHER ORDERED that, within ten (10) business days of the date
`of this order, Petitioner must update its mandatory notices identifying Mr.
`DeSalvo as back-up counsel in accordance with 37 C.F.R. § 42.8(b)(3).
`
`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 Meunier
`Peter Cuomo
`MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO, P.C.
`wameunier@mintz.com
`pjcuomo@mintz.com
`
`5
`
`

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