`571-272-7822
`
`
`
`
`Paper 16
`Date: November 3, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GENERAL ELECTRIC COMPANY,
`Petitioner,
`
`v.
`
`UNITED TECHNOLOGIES CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-00526
`Patent 7,966,807 B2
`____________
`
`Before BENJAMIN D. M. WOOD, HYUN J. JUNG, and
`RICHARD E. RICE, Administrative Patent Judges.
`
`JUNG, Administrative Patent Judge.
`
`
`DECISION
`Motion for Pro Hac Vice Admission
`37 C.F.R. § 42.10(c)
`
`Patent Owner filed a Motion for Admission Pro Hac Vice of Mr. Michael J.
`Valaik Under 37 C.F.R. § 42.10(c) and an accompanying Declaration in the above-
`captioned proceeding. Paper 14; Ex. 2006. Patent Owner states that “Petitioner
`does not oppose this request.” Paper 14, 1.
`
`
`
`IPR2016-00526
`Patent 7,966,807 B2
`
`
`
`After considering Patent Owner’s Motion and accompanying Declaration1, it
`
`
`
`is
`
`ORDERED that Patent Owner’s Motion for Admission Pro Hac Vice of
`Mr. Michael J. Valaik is granted;
`FURTHER ORDERED that Patent Owner is to continue to have a registered
`practitioner as lead counsel in the instant proceeding, but Mr. Valaik is authorized
`to be designated as backup counsel;
`FURTHER ORDERED that Mr. Valaik 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 is subject to the USPTO’s disciplinary
`jurisdiction under 37 C.F.R. § 11.19(a) and the USPTO Rules of Professional
`Conduct as set forth in 37 C.F.R. §§ 11.101 et seq.; and
`FURTHER ORDERED that Patent Owner shall file updated mandatory
`notices, pursuant to 37 C.F.R. § 42.8(b)(3), providing updated information
`regarding back-up counsel.
`
`
`1 According to the “Order -- Authorizing Motion for Pro Hac Vice Admission” in
`Case IPR2013-00639, Paper 7, Mr. Valaik’s declaration must provide a statement
`acknowledging that he will 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. In his declaration, Mr. Valaik incorrectly cites
`“37 C.F.R. §§ 10.20 et seq.” with respect to the USPTO Rules of Professional
`Conduct. Pursuant to this order, by appearing pro hac vice in this case, Mr. Valaik
`agrees 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.
`
`2
`
`
`
`
`
`IPR2016-00526
`Patent 7,966,807 B2
`
`
`
`
`
`
`PETITIONER:
`Brian Ferguson
`Anish Desai
`WEIL, GOTSHAL & MANGES LLP
`brian.ferguson@weil.com
`anish.desai@weil.com
`GE.807.IPR@weil.com
`
`PATENT OWNER:
`M. Andrew Holtman, Ph.D.
`Jason E. Stach
`Daniel Cooley
`FINNEGAN, HENDERSON, FARRABOW, GARRETT & DUNNER, LLP
`andy.holtman@finnegan.com
`jason.stach@finnegan.com
`daniel.cooley@finnegan.com
`UTC-IPR@finnegan.com
`
`
`
`
`3
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