`571-272-7822
`
`Paper 15
`Entered: February 10, 2014
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`
`
`
`
` AUTEL U.S. INC. and AUTEL INTELLIGENT TECHNOLOGY CO.
`LTD. Petitioners
`
`v.
`
`
` BOSCH AUTOMOTIVE SERVICE SOLUTIONS LLC
`Patent Owner
`____________
`
`Case IPR2014-00183
`Patent 6,904,796
`____________
`
`Before JOSIAH C. COCKS, SHERIDAN K. SNEDDEN, and
`SCOTT A. DANIELS, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`
`ORDER
`Motion for Pro Hac Vice Admission
`37 C.F.R. § 42.10
`
`
`
`
`
`
`
`IPR2014-00183
`Patent 6,904,796
`
`
`Patent Owner, Bosch Automotive Service Solutions LLC, filed a
`motion for pro hac vice admission of Mr. John E. Berg.1 Paper 13. As a
`part of the motion, Patent Owner provided a declaration from Mr. Berg in
`support thereof. The motion is unopposed. For the reasons stated below, the
`motion is granted.
`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.” 37 C.F.R. § 42.10(c). For example, where the lead counsel is a
`registered practitioner, a non-registered practitioner may be permitted to
`appear pro hac vice “upon showing that counsel is an experienced litigating
`attorney and has an established familiarity with the subject matter at issue in
`the proceeding.” Id. 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. See IPR 2013-00639 (Paper 7).
`
`In its motion, Patent Owner argues that there is good cause for Mr.
`Berg’s pro hac vice admission because he is an experienced litigating
`attorney and has an established familiarity with the subject matter at issue in
`these inter partes reviews and is counsel for Patent Owner in concurrent
`district court litigation. Paper 13, 1-2. In his declaration, Mr. Berg attests
`that:
`
`(1)
`
`he is a member in good standing of the bar of the State of
`
`
`1 Authorization for such motion was given in the Notice mailed December 6,
`2013 (Paper 5).
`
`
`
`
`2
`
`
`
`IPR2014-00183
`Patent 6,904,796
`
`
`Michigan;
`
`(2)
`
`he has never been suspended or disbarred from practice
`before any court or administrative body;
`
`(3) he has read and will comply with the Office Patent Trial
`Practice Guide and the Board’s Rules of Practice for
`Trials, as set forth in part 42 of 37 C.F.R., and agrees to
`be subject to: (a) the USPTO Rules of Practice for Trials
`set forth in part 42 of 37 C.F.R.; (b) the USPTO
`Professional Rules of Professional Conduct set forth in
`37 C.F.R. §§ 11.101 et seq.; and (c) disciplinary
`jurisdiction under 37 C.F.R. § 11.19(a); and
`
`(4) he is familiar with the subject matter at issue in this
`proceeding.
`
`Id. at 1-4. We observe also that Patent Owner’s lead counsel in this
`proceeding, Timothy M. McCarthy, is a registered practitioner. Paper 14.
`Based on the facts set forth above, we conclude that Mr. Berg has
`sufficient legal and technical qualifications to represent Patent Owner in this
`inter partes review proceeding and that there is a need for Patent Owner to
`have its counsel in the related litigation involved in such proceedings.
`Accordingly, Patent Owner has established good cause for Mr. Berg’s pro
`hac vice admission. Mr. Berg will be permitted to appear pro hac vice in
`IPR2014-00183 as back-up counsel only. See 37 C.F.R. § 42.10(c).
`
`
`
`
`
`
`3
`
`
`
`IPR2014-00183
`Patent 6,904,796
`
`
`Accordingly, it is:
`ORDERED that Patent Owner’s motion for pro hac vice admission is
`granted and Mr. John E. Berg is authorized to represent Patent Owner as
`back-up counsel in IPR2014-00183;
`FURTHER ORDERED that Patent Owner is to continue to have a
`registered practitioner as lead counsel in this inter partes review proceeding;
`FURTHER ORDERED that Mr. Berg 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
`FURTHER ORDERED that Mr. Berg is subject to the 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.
`
`For PETITIONER:
`
`Robert G. McMorrow, Jr.
`Zhun Lu
`NOVAK DRUCE CONNOLLY BOVE + QUIGG, LLP
`Robert.mcmorrow@novakdruce.com
`Zhun.lu@novakdruce.com
`
`
`For PATENT OWNER:
`
`Timothy M. McCarthy
`John L. Berg
`CLARK HILL PLC
`tmccarthy@clarkhill.com
`jberg@clarkhill.com
`
`
`
`4
`
`
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