`571.272.7822
`
`
`
`
`
`
`
` Paper No. 46
`
` Entered: April 16, 2019
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GREAT WEST CASUALTY COMPANY,
`BITCO GENERAL INSURANCE CORPORATION, and
`BITCO NATIONAL INSURANCE COMPANY,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01706
`Patent 7,516,177 B2
`____________
`
`
`
`Before MICHAEL W. KIM and ROBERT A. POLLOCK,
`Administrative Patent Judges.
`
`KIM, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Petitioner’s Motion for Admission
`Pro Hac Vice of Irene Yang
`37 C.F.R. § 42.10
`
`
`
`
`
`IPR2015-01706
`Patent 7,516,177 B2
`
`
`On April 10, 2019, Great West Casualty Company, Bitco General
`Insurance Corporation, and Bitco National Insurance Company (collectively
`“Petitioner”) filed a motion for admission pro hac vice of Irene Yang in the
`above-identified proceeding. Paper 41 (“Motion”). Petitioner also filed a
`Declaration of Ms. Yang in support of the Motion. Ex. 1050
`(“Declaration”). Petitioner represents that Patent Owner does not oppose the
`Motion. Motion, 1. For the reasons provided below, Petitioner’s Motion is
`granted.
`Pursuant to 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. In its notice
`authorizing motions for pro hac vice admission, the Board requires 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 this proceeding. See Paper 3, 2 (citing 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”)).
`Based on the facts set forth in the Motion and the accompanying
`Declaration, we conclude that Ms. Yang has sufficient legal and technical
`qualifications to represent Petitioner in the above-identified proceeding, that
`Ms. Yang has demonstrated sufficient familiarity with the subject matter of
`the proceeding, and that Petitioner’s intent to be represented by counsel with
`litigation experience is warranted. Furthermore, Petitioner has also
`requested to withdraw two backup counsel. Paper 40. Accordingly,
`Petitioner has established good cause for pro hac vice admission of
`
`2
`
`
`
`IPR2015-01706
`Patent 7,516,177 B2
`
`
`Ms. Yang. Ms. Yang will be permitted to serve as back-up counsel only.
`See 37 C.F.R. § 42.10(c).
`We note that Petitioner filed a Mandatory Notice identifying
`Ms. Yang as back-up counsel in accordance with 37 C.F.R. § 42.8(b)(3)
`(Paper 42) and a Power of Attorney including Ms. Yang in accordance with
`37 C.F.R. § 42.10(b) (Paper 43).
`Accordingly, it is:
`ORDERED that Petitioner’s Motion for pro hac vice admission of
`Ms. Yang is granted;
`FURTHER ORDERED that Petitioner is to continue to have a
`registered practitioner represent it as lead counsel for the above-identified
`proceeding;
`FURTHER ORDERED that Ms. Yang is authorized to represent
`Petitioner only as back-up counsel in the above-identified proceeding;
`FURTHER ORDERED that Ms. Yang is to comply with the Office
`Patent Trial Practice Guide, as updated by the August 2018 Update, 83 Fed.
`Reg. 39,989 (Aug. 13, 2018), and the Board’s Rules of Practice for Trials, as
`set forth in Part 42 of Title 37, Code of Federal Regulations; and
`FURTHER ORDERED that Ms. Yang shall 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
`
`
`
`IPR2015-01706
`Patent 7,516,177 B2
`
`PETITIONER:
`
`Joseph Micallef
`iprnotices@sidley.com
`
`Russell Cass
`rcass@sidley.com
`
`Erik Carlson
`ecarlson@sidley.com
`
`
`PATENT OWNER:
`Brenton Babcock
`2BRB@knobbe.com
`
`Ted Cannon
`2tmc@knobbe.com
`
`Bridget Smith
`2bzs@knobbe.com
`
`Tim Seeley
`tim@intven.com
`
`James Hietala
`jhietala@intven.com
`
`
`
`4
`
`
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