`571-272-7822
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` Paper 24
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` Entered: March 14, 2016
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`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.
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`ORDER
`
`Petitioner’s Motion for Pro Hac Vice Admission of Nathan D. Renov
`37 C.F.R. § 42.10(c)
`
`
`
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`
`
`IPR2015-01317
`Patent 8,712,486 B2
`
`
`
`Petitioner filed a motion for pro hac vice admission of Mr. Nathan D.
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`Renov. Paper 20. During a conference call with the Board on February 26,
`2016, Patent Owner indicated it would not oppose Petitioner’s motion. For
`the reasons provided below, Petitioner’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, Petitioner asserts that there is good cause for Mr.
`Renov’s pro hac vice admission because: (1) Mr. Renov is an experienced
`litigation attorney and has over six years of patent prosecution support and
`patent litigation support experience; (2) Mr. Renov has an established
`familiarity with the subject matter at issue in this inter partes proceeding.
`Paper 20 at 2; Ex. 1028 ¶¶ 10, 11. In support of the motion, Mr. Renov
`attests to these facts in his declaration with sufficient explanations, attests to
`being member in good standing of the Bar of New York, and otherwise
`attests to the requirements for pro hac vice admission outlined in Motorola
`
`2
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`
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`IPR2015-01317
`Patent 8,712,486 B2
`
`
`
`Mobility LLC v. Patent of Michael Arnouse, IPR2013-00010 Oct. 15, 2012
`(Paper 6). See Ex. 1028.
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`Based upon consideration of the motion and the record before us, we
`grant Petitioner’s Motion for Admission of Mr. Renov.
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`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s motion for pro hac vice admission of Mr.
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`Renov for the instant proceeding, to represent Petitioner as back-up counsel,
`is granted;
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`FURTHER ORDERED that Petitioner to continue to have a registered
`practitioner as lead counsel in the instant proceeding; and
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`FURTHER ORDERED that Mr. Renov 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 C.F.R., 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.; and
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`FURTHER ORDERED that, if not already done, Petitioner shall file
`an updated Mandatory Notice and Power of Attorney within one week of the
`date of this Order.
`
`
`3
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`
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`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
`
`
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`
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`FOR PATENT OWNER:
`Mitchell S. Feller
`Jason Wachter
`GOTTLIEB RACKMAN & REISMAN, P.C.
`msfeller@grr.com
`jwachter@grr.com
`
`
`4