`571-272-7822
`
`
`
`
`
`
`
`
` Paper 23
`
`
`
` Entered: March 14, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PRONG, INC.,
`Petitioner,
`
`v.
`
`YEOSHUA SORIAS,
`Patent Owner.
`____________
`
`Case IPR2015-01317
`Patent 8,712,486 B2
`____________
`
`
`Before SALLY C. MEDLEY, GLENN J. PERRY, and
`KIMBERLY McGRAW, Administrative Patent Judges.
`
`McGRAW, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`ORDER
`
`Patent Owner’s Motion for Pro Hac Vice Admission of
`Samuel P. Israel and Timothy L. Foster
`37 C.F.R. § 42.10(c)
`
`
`
`
`
`
`IPR2015-01317
`Patent 8,712,486 B2
`
`
`
`Patent Owner filed a motion for pro hac vice admission of Mr.
`
`Samuel P. Israel and Mr. Timothy L. Foster. Paper 21. During a conference
`call with the Board on February 26, 2016, Petitioner indicated it would not
`oppose Patent Owner’s motion. For the reasons provided below, Patent
`Owner’s motion is granted.
`
`As set forth in 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. 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.” 37 C.F.R.
`§ 42.10(c). In authorizing motions for pro hac vice admission, the Board
`also requires a statement of facts showing there is good cause to recognize
`counsel pro hac vice, and an affidavit or declaration of the individual
`seeking to appear in this proceeding.
`
`In its motion, Patent Owner asserts that there is good cause for Mr.
`Israel and Mr. Foster’s pro hac vice admission because: (1) Mr. Israel and
`Mr. Foster have litigation experience involving intellectual property matters;
`(2) Mr. Israel and Mr. Foster have an established familiarity with the subject
`matter at issue in this inter partes proceeding. Paper 21 at 2. In support of
`the motion, Mr. Israel and Mr. Foster each attest to these facts in their
`respective declarations with sufficient explanations, attest to being a member
`in good standing of the New York State Bar, and otherwise attest to the
`
`2
`
`
`
`IPR2015-01317
`Patent 8,712,486 B2
`
`
`
`requirements for pro hac vice admission outlined in Motorola Mobility LLC
`v. Patent of Michael Arnouse, IPR2013-00010 Oct. 15, 2012 (Paper 6). See
`Exs. 2039, 2040.
`
`Based upon consideration of the motion and the record before us, we
`grant Patent Owner’s Motion for Admission of Mr. Israel and Mr. Foster.
`It is therefore ORDERED that Patent Owner’s motion for pro hac vice
`
`admission of Mr. Israel and Mr. Foster for the instant proceeding, to
`represent Patent Owner as back-up counsel, is granted;
`
`FURTHER ORDERED that Patent Owner to continue to have a
`registered practitioner as lead counsel in the instant proceeding; and
`
`FURTHER ORDERED that Mr. Israel and Mr. Foster are 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 to be 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.
`
`
`
`
`3
`
`
`
`IPR2015-01317
`Patent 8,712,486 B2
`
`
`FOR PETITIONER:
`Caleb Pollack
`Zeev Pearl
`Daniel Melman
`PEARL COHEN ZEDEK LATZER BARATZ LLP
`cpollack@pearlcohen.com
`zpearl@pearlcohen.com
`dmelman@pearlcohen.com
`
`
`
`
`
`FOR PATENT OWNER:
`Mitchell S. Feller
`Jason Wachter
`GOTTLIEB RACKMAN & REISMAN, P.C.
`msfeller@grr.com
`jwachter@grr.com
`
`
`4
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