`Trials@uspto.gov
`571-272-7822
`
`Date Entered: February 13, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`RPX CORPORATION and
`PROTECTION ONE, INC.,
`Petitioner,
`v.
`MD SECURITY SOLUTIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-002851
`Patent 7,864,983 B2
`____________
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`FINK, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Patent Owner’s Motion for Admission Pro Hac Vice and
`Excusing Lead Counsel from the Oral Hearing
`37 C.F.R. §§ 42.5, 42.10
`
`
`
`
`
`
`1 Protection One, Inc., who filed a Petition in IPR2016-01235, has been
`joined as a party to the petitioner in this proceeding.
`
`
`
`
`
`
`
`Case IPR2016-00285
`Patent 7,864,983 B2
`
`
`
`Patent Owner MD Security Solutions LLC filed a Motion for
`Admission Pro Hac Vice of Daniel J. Weinberg, accompanied by a
`declaration of Daniel J. Weinberg. See Paper 24; Paper 25.2 Petitioner
`indicated by email that it does not oppose the Motion.
`Pursuant to 37 C.F.R. § 42.10(c), we 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. Upon review of
`Patent Owner’s Motion and supporting evidence, we determine that Patent
`Owner has demonstrated that Mr. Weinberg has sufficient legal and
`technical qualifications to represent Patent Owner in the above-identified
`proceeding.
`Accordingly, Patent Owner has established that there is good cause
`for admitting Daniel J. Weinberg.
`Separately, in email communications to the Board, Patent Owner
`requested that lead counsel be excused from the oral hearing in this
`proceeding and that Mr. Weinberg be permitted to represent Patent Owner.
`Patent Owner represents that lead counsel has a court appearance in another
`matter on the day of the hearing. In its own email communication to the
`Board, Petitioner did not object to lead counsel for Patent Owner being
`excused from the hearing.
`Our Office Patent Trial Practice Guide provides that lead counsel will
`participate in all hearings. Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,758 (Aug. 14, 2012). Likewise, the Trial Hearing Order in this
`proceeding also provides that lead counsel is expected to “be present at the
`
`
`2 This declaration should have been filed as an exhibit. 37 C.F.R. § 42.63.
`2
`
`
`
`
`Case IPR2016-00285
`Patent 7,864,983 B2
`
`
`
`hearings, although any back-up counsel may make the actual presentation, in
`whole or in part.” Paper 21, 3.
`Nonetheless, while not ideal, our Trial Hearing Order contemplates
`situations in which lead counsel may not be required to attend hearings by
`requiring lead counsel to notify the Board at least two days in advance. See
`id. Given the circumstances here, including lead counsel’s scheduling
`conflict, Petitioner’s non-opposition to the request, and our observation that
`Mr. Weinberg, admitted as back-up counsel herein, has participated
`previously in hearings before the Board (see Paper 25 ¶ 8), we excuse lead
`counsel from the February 15, 2017 hearing in this proceeding.
`It is
`ORDERED that Patent Owner’s Motion for Pro Hac Vice Admission
`of Daniel J. Weinberg is granted; Mr. Weinberg is authorized to represent
`Patent Owner as back-up counsel in the above-identified proceeding;
`FURTHER ORDERED that Patent Owner is to continue to have a
`registered practitioner represent it as lead counsel for the proceeding,
`however, lead counsel is excused from the February 15, 2017 hearing;
`FURTHER ORDERED that Daniel J. Weinberg is to comply with the
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14, 2012), and
`the Board’s Rules of Practice for Trials, as set forth in Part 42 of Title 37,
`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
`
`
`
`
`
`
`
`
`Case IPR2016-00285
`Patent 7,864,983 B2
`
`FOR PETITIONER:
`
`Richard Giunta
`Daniel Wehner
`Randy Pritzker
`WOLF, GREENFIELD & SACKS, P.C.
`Rgiunta-PTAB@wolfgreenfield.com
`Dwehner-PTAB@wolfgreenfield.com
`Rpritzker-PTAB@wolfgreenfield.com
`
`
`
`FOR PATENT OWNER:
`
`Jason S. Angell
`FREITAS ANGELL & WEINBERG LLP
`jangell@fawlaw.com
`
`
`4
`
`
`
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