`571-272-7822
`
`
`Paper 25
`Entered: October 7, 2016
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`TWILIO INC.,
`Petitioner,
`
`v.
`
`TELESIGN CORPORATION,
`Patent Owner.
`____________
`
`IPR2016-00360 (US 7,945,034 B2)
`IPR2016-00450 (US 8,462,920 B2)
`IPR2016-00451 (US 8,867,038 B2)1
`____________
`
`
`
`
`
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, JUSTIN T. ARBES, and KIMBERLY
`MCGRAW, Administrative Patent Judge.
`
`McGRAW, Administrative Patent Judge.
`
`DECISION
`Granting Petitioner’s Motion for Sarah J. Guske
`to Appear Pro Hac Vice on Behalf of Petitioner
`37 C.F.R. § 42.10(c)
`
`
`
`
`1 This decision addresses issues common to the above identified cases.
`Therefore, we exercise our discretion to issue one order to be filed in each
`case. The parties are not authorized to use this style heading for any papers.
`
`
`
`IPR2016-00360 (US 7,945,034 B2)
`IPR2016-00450 (US 8,462,920 B2)
`IPR2016-00451 (US 8,867,038 B2)
`
`
`On October 5, 2016, in each proceeding, Petitioner filed a motion for
`pro hac vice admission of Sarah J. Guske (IPR2016-00360, Paper 31)2 along
`with a supporting affidavit by Ms. Guske (id., Exhibit B).3 Petitioner states
`Patent Owner does not oppose Petitioner’s motions. Id. at 2.
`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. A motion for pro
`hac vice admission must contain a statement of facts showing there is good
`cause for us to recognize counsel pro hac vice during the proceeding and be
`accompanied by an affidavit or declaration of the individual seeking to
`appear. See Unified Patents, Inc. v. Parallel Iron, LLC, Case IPR2013-
`00639, slip op. at 3–4 (PTAB Oct. 15, 2013) (Paper 7) (setting forth the
`requirements for pro hac vice admission).
`Petitioner’s lead counsel, Wayne Stacy, is a registered practitioner.
`Paper 32, 1. Petitioner has shown by its Motion and Ms. Guske’s affidavit
`that Ms. Guske is an experienced litigating attorney and has an established
`familiarity with the subject matter at issue in the proceeding. Paper 31, 1–2,
`Exhibit B ¶¶ 2–4; 37 C.F.R. § 42.10(c). In addition, Ms. Guske’s affidavit
`
`
`2 For convenience, paper and exhibit numbers refer to IPR2016-00360;
`corresponding papers may be found in the record of IPR2016-00450 and
`IPR2016-00451.
`3 The parties are reminded that declarations and other evidence must be filed
`separately as exhibits, rather than as attachments to papers, and numbered
`sequentially in the appropriate range. See 37 C.F.R. § 42.63.
`
`2
`
`
`
`IPR2016-00360 (US 7,945,034 B2)
`IPR2016-00450 (US 8,462,920 B2)
`IPR2016-00451 (US 8,867,038 B2)
`
`complies with the other requirements for pro hac vice admission. Id.,
`Exhibit B ¶¶ 5–12; see Unified Patents, slip op. at 3–4.
`Based upon consideration of the motions and the record before us, we
`grant Petitioner’s motions for admission of Ms. Guske.
`It is therefore ORDERED that Petitioner’s unopposed motions for pro
`hac vice admission of Ms. Guske to represent Petitioner as back-up counsel,
`are granted;
`FURTHER ORDERED that Petitioner is to continue to have a
`registered practitioner as lead counsel in each of the instant proceedings;
`FURTHER ORDERED that Ms. Guske 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;
`FURTHER ORDERED that Ms. Guske is 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
`
`
`
`4
`
`IPR2016-00360 (US 7,945,034 B2)
`IPR2016-00450 (US 8,462,920 B2)
`IPR2016-00451 (US 8,867,038 B2)
`
`PETITIONER
`Wayne Stacy
`wayne.stacy@bakerbotts.com
`
`Eliot D. Williams
`eliot.williams@bakerbotts.com
`
`Sarah J. Guske
`sarah.guske@bakerbotts.com
`
`
`
`PATENT OWNER
`Tawni Wilhelm
`TWILHELM@shb.com
`
`Elena McFarland
`EMCFARLAND@shb.com
`TeleSignIPR@shb.com
`
`Jesse Camacho
`JCAMACHO@shb.com
`
`Amy Foust
`AFOUST@shb.com
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