`571-272-7822
`
`
`
`Paper 22
`Date: June 30, 2014
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMERICAN EXPRESS COMPANY, et al.
`Petitioner
`
`v.
`
`HARVEY LUNENFELD,
`Patent Owner
`____________
`
`Case CBM2014-00050
`Patent 8,239,451 B1
`
`____________
`
`
`Before KARL D. EASTHOM, MIRIAM L. QUINN,
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Patent Owner’s Motion for Pro Hac Vice Admission of Richard M. Martinez
`37 C.F.R. § 42.10
`
`
`
`
`
`
`
`
`
`Case CBM2014-00050
`Patent 8,239,451 B1
`
`
`
`Patent Owner has filed a Motion for pro hac vice admission of Mr.
`
`Richard M. Martinez. Paper 19 (“Motion”). Patent Owner also filed an
`
`affidavit of Mr. Martinez, dated June 25, 2014, in support of its Motion.
`
`Ex. 2003. Petitioner does not oppose the Motion. Paper 21.
`
`We have reviewed the Motion and the accompanying affidavit of Mr.
`
`Martinez. Based on the statement of good cause set forth in the motion and
`
`the facts averred in the affidavit, we conclude that Mr. Martinez has
`
`sufficient qualifications to represent Patent Owner in these proceedings and
`
`that there is a need for Patent Owner to have its counsel in the related
`
`district-court cases involved in these proceedings. See Unified Patents v.
`
`Parallel Iron, Case IPR2013-00639 (PTAB Oct. 15, 2013) (setting forth the
`
`requirements for pro hac vice admission) (Paper 7). Under 37 C.F.R. §
`
`42.10(c), Mr. Martinez will be permitted to appear pro hac vice in the instant
`
`proceedings as back-up counsel only.
`
`Order
`
`
`
`It is
`
`ORDERED that Patent Owner’s Motion for pro hac vice admission of
`
`Mr. Richard Martinez in the instant proceeding is granted;
`
`FURTHER ORDERED that Mr. Martinez is authorized to represent
`
`Patent Owner as back-up counsel in the instant proceedings;
`
`FURTHER ORDERED that Patent Owner is to continue to have a
`
`registered practitioner as lead counsel in the instant proceedings;
`
`FURTHER ORDERED that Mr. Martinez is to comply with the
`
`Office Patent Trial Practice Guide and the Board’s Rules of Practice for
`
`Trials, as set forth in Title 37, Part 42 of the Code of Federal Regulations;
`
`and
`
`
`
`2
`
`
`
`Case CBM2014-00050
`Patent 8,239,451 B1
`
`
`
`FURTHER ORDERED that Mr. Martinez is subject to the USPTO
`
`Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and
`
`the Office’s disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
`
`
`
`3
`
`
`
`Case CBM2014-00050
`Patent 8,239,451 B1
`
`
`
`
`
`PETITIONER:
`
`John D. Vandenberg
`Kristen L. Reichenbach
`KLARQUIST SPARKMAN, LLP
`john.vandenberg@klarquist.com
`kristen.reichenbach@klarquist.com
`
`
`PATENT OWNER:
`
`Cyrus A. Morton
`Ryan M. Schultz
`ROBINS, KAPLAN, MILLER, & CIRESI LLP
`CAMorton@rkmc.com
`RMSchultz@rkmc.com
`
`
`
`
`
`
`
`
`
`
`4
`
`
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