Inter Partes Review of U.S. Pat. No. D616,231
`Case No. IPR2016-00826
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`GRACO CHILDREN’S PRODUCTS INC.,
`Petitioner,
`v.
`KOLCRAFT ENTERPRISES, INC.,
`Patent Owner
`____________
`Case IPR2016-00826
`Patent D616,231
`____________
`
`KOLCRAFT ENTERPRISES, INC. MOTION FOR PRO HAC VICE
`ADMISSION OF RAYMOND P. NIRO, JR.
`
`
`
`
`
`
`Case No. IPR2016-00826
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`GRACO CHILDREN’S PRODUCTS INC.,
`Petitioner,
`v.
`KOLCRAFT ENTERPRISES, INC.,
`Patent Owner
`____________
`Case IPR2016-00826
`Patent D616,231
`____________
`
`KOLCRAFT ENTERPRISES, INC. MOTION FOR PRO HAC VICE
`ADMISSION OF RAYMOND P. NIRO, JR.
`
`
`
`
`
`
`
`Inter Partes Review of U.S. Pat. No. D616,231
`Case No. IPR2016-00826
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`I.
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`RELIEF REQUESTED
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`Pursuant to 37 C.F.R. § 42.10(c), Patent Owner Kolcraft Enterprises, Inc.
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`(“Kolcraft”), by and through its attorneys, respectfully requests that the Board
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`admit Raymond P. Niro, Jr. pro hac vice in this proceeding.
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`II. GOVERNING LAW, RULES, AND PRECEDENT
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`37 C.F.R. § 42.10(c) states as follows:
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`
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`The Board may recognize counsel pro hac vice during a proceeding upon a
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`showing of good cause, subject to the condition that lead counsel be a registered
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`practitioner and to any other conditions as the Board may impose. For example,
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`where the lead counsel is a registered practitioner, a motion to appear pro hac vice
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`by counsel who is not a registered practitioner may be granted upon showing that
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`counsel is an experienced litigating attorney and has an established familiarity with
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`the subject matter at issue in the proceeding.
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`Further, the Board requires that a motion for pro hac vice admission be filed
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`in accordance with the “Order – Authorizing Motion for Pro Hac Vice Admission”
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`in Case IPR2013-00639, Paper 7 (“Representative Order”). The Representative
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`Order states that the motion must “[c]ontain a statement of facts showing there is
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`good cause for the Board to recognize counsel pro hac vice during the
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`proceedings,” and “[b]e accompanied by an affidavit or declaration of the
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`individual seeking to appear attesting to the following:”
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`
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`Inter Partes Review of U.S. Pat. No. D616,231
`Case No. IPR2016-00826
`i. Membership in good standing of the Bar of at least one State or
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`the District of Columbia;
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`ii. No suspensions or disbarments from practice before any court
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`or administrative body;
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`iii. No application for admission to practice before any court or
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`administrative body ever denied;
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`iv. No sanctions or contempt citations imposed by any court or
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`administrative body;
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`v.
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`The individual seeking to appear has read and will comply with
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`the Office Patent Trial Practice Guide and the Board’s Rules of
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`Practice for Trials set forth in part 42 of 37 C.F.R.;
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`vi. The individual will be subject to the USPTO Rules of
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`Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq.
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`and disciplinary jurisdiction under 37 C.F.R. § 11.19(a);
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`vii. All other proceedings before the Office for which the individual
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`has applied to appear pro hac vice in the last three (3) years;
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`and
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`viii. Familiarity with the subject matter at issue in the proceeding.
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`Inter Partes Review of U.S. Pat. No. D616,231
`Case No. IPR2016-00826
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`III. STATEMENT OF FACTS
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`
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`Based on the following statement of facts, and supported by the Declaration
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`of Raymond P. Niro, Jr. submitted herewith, Kolcraft submits that a showing of
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`good cause has been made and respectfully requests the pro hac vice admission of
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`Raymond P. Niro, Jr. in this proceeding:
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`1. Patent Owner’s lead counsel, Brian P. Lynch, is a registered practitioner
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`(Reg. No. 58,794).
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`2. Mr. Niro is a partner at the law firm of Niro McAndrews, LLC.
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`Declaration of Raymond P. Niro, Jr. in Support of Motion for Pro Hac
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`Vice Admission.
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`3. Mr. Niro is an experienced intellectual property litigation attorney, and
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`particularly, patent litigation, with over twenty-three years of
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`experience and has litigated over 100 intellectual property cases. Id. at
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`¶8.
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`4. Mr. Niro is a member in good standing of the Illinois State Bar. Id. at
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`¶1.
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`5. Mr. Niro has never been suspended or disbarred from practice before
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`any court or administrative body. Id. at ¶2.
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`6. With the exception of those listed below, no application for admission
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`filed by Mr. Niro to the bar of any court or administrative body has ever
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`
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`Inter Partes Review of U.S. Pat. No. D616,231
`Case No. IPR2016-00826
`been denied. Id. at ¶3. A petition for admission pro hac vice filed on
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`behalf of Mr. Niro in Inter Partes Reexamination Control No.
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`95/000,514 was denied based on different standards used in Inter Partes
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`Reexamination and because the petition was submitted after the written
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`record had been developed without Mr. Niro’s participation and oral
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`arguments in those proceedings were limited to the written record. See
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`Decision on Petition in Inter Partes Reexamination Control No.
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`95/000,514, October 18, 2013 at 5. A motion for admission pro hac
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`vice filed on behalf of Mr. Niro in Inter Partes Review IPR2016-00352
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`was denied based on the Board interpreting the 95/000,514 pro hac vice
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`motion denial as contradicting the statement that “no application filed
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`by Mr. Niro for admission to practice before any court or administrative
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`body has ever been denied.”
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`7. No sanctions or contempt citations have been imposed against Mr. Niro
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`by any court or administrative body. Id. at ¶4.
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`8. Mr. Niro has read and agrees to comply with the Office Patent Trial
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`Practice Guide and the Board’s Rules of Practice for Trials set forth in
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`part 42 of Title 37 of the C.F.R. Id. at ¶5.
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`9. Mr. Niro understands that he will be subject to the United States Patent
`
`and Trademark Office Code of Professional Responsibility set forth in
`
`
`
`Inter Partes Review of U.S. Pat. No. D616,231
`Case No. IPR2016-00826
`37 C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction under 37
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`C.F.R. § 11.19(a). Id. at ¶6.
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`10. Mr. Niro has sought or is seeking pro hac vice admission in the
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`following other proceeding before the Board within the last three (3)
`
`years.
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`Matter Number
`
`Representing
`
`95/000,514
`
`Kolcraft Enterprises, Inc.
`
`IPR2014-01053
`
`IPR2016-00352
`
`IPR 2016-00810
`
`IPR 2016-00816
`
`IPR 2016-00826
`
`IPR 2016-00911
`
`Kolcraft Enterprises, Inc.
`
`Kolcraft Enterprises, Inc.
`
`Kolcraft Enterprises, Inc.
`
`Kolcraft Enterprises, Inc.
`
`Kolcraft Enterprises, Inc.
`
`Kolcraft Enterprises, Inc.
`
`
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`Mr. Niro has not applied to appear pro hac vice in any other
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`proceeding(s) before the United States Patent and Trademark Office
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`other than those listed above. Id. at ¶7.
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`11. Mr. Niro has an established familiarity with the subject matter at issue
`
`in this proceeding. The patent at issue in this proceeding, is currently
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`being asserted by Kolcraft against Petitioner in a co-pending litigation,
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`
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`Inter Partes Review of U.S. Pat. No. D616,231
`Case No. IPR2016-00826
`Kolcraft Enterprises, Inc. v. Graco Children's Products Inc. Case No.
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`1:15-cv-07950 (N.D. Ill.). Mr. Niro has also represented the Patent
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`Owner in Kolcraft Enterprises, Inc. v. Artsana USA, Inc. and Artsana,
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`Civil Action No. 1:13-cv-04863, (N.D. Ill., Filed July 8, 2013) and
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`Kolcraft Enterprises, Inc. v. Graco Children’s Products Inc. and
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`Chicco USA, Inc., Civil Action No. 1:09-cv-03339, (N.D. Ill., Filed
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`June 3, 2009) (collectively “the co-pending litigations”). Mr. Niro has
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`engaged closely in various aspects of the cases for several years
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`including hearings, oral arguments, depositions, analysis and
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`investigation of the prior art that defendants have asserted against
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`Kolcraft’s patents. As a result, Mr. Niro has acquired substantial
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`understanding of the underlying legal and technological issues at stake
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`in this proceeding. Patent Owner Kolcraft has expended significant time
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`and resources with Mr. Niro, a counsel in the co-pending litigations,
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`and wishes to continue using Mr. Niro as counsel in this proceeding.
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`Niro Dec., at ¶8
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`IV. GOOD CAUSE EXISTS FOR PRO HAC VICE ADMISSION OF
`RAYMOND P. NIRO, JR.
`
`
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`The facts outlined in the Statement of Facts, and contained in the
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`Declaration of Raymond P. Niro, Jr., establish that there is good cause to admit Mr.
`
`Niro pro hac vice in this proceeding under 37 C.F.R. § 42.10. Patent Owner’s lead
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`
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`Inter Partes Review of U.S. Pat. No. D616,231
`Case No. IPR2016-00826
`counsel is a registered practitioner. As supported by Mr. Niro’s declaration, Mr.
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`Niro is an experienced litigation attorney with over twenty years of intellectual
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`property litigation experience. Mr. Niro has an established familiarity with the
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`subject matter at issue, being that he is lead trial counsel for Patent Owner Kolcraft
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`against the Petitioner in the co-pending litigations, which involve the patent at
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`issue in this proceeding, and similar invalidity arguments as in this proceeding.
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`V. CONCLUSION
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`In light of the foregoing, Patent Owner Kolcraft respectfully requests that
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`the Board admit Raymond P. Niro, Jr. pro hac vice in this proceeding.
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`Dated: July 14, 2016
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`Respectfully submitted,
`
`/ Brian P. Lynch/
`Brian P. Lynch
`Registration No. 58,794
`blynch@niro-mcandrews.com
`NIRO MCANDREWS, LLC
`200 West Madison Street, Suite 2040
`Chicago, Illinois 60606
`Telephone: (312) 755-8581
`Fax: (312) 674-7481
`
`Representative of Patent Owner
`
`
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`Inter Partes Review of U.S. Pat. No. D616,231
`Case No. IPR2016-00826
`
`
`
`Certificate of Service in Compliance With 37 C.F.R. § 42.6(e)(4)
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`The undersigned certifies that a complete copy of Patent Owner’s Motion for
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`Pro Hac Vice Admission of Raymond P. Niro, Jr. has been served electronically in
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`its entirety to the attorneys of record for the Petitioner this July 14, 2016, via email:
`
`Gregory J. Carlin
`Walter Hill Levie III
`John W. Harbin
`Warren Thomas
`MEUNIER CARLIN & CURFMAN LLC
`999 Peachtree Street, NE, Suite 1300
`Atlanta, GA 30309
`Telephone: (404) 645-7700
`Facsimile: (404) 645-7707
`Email: gcarlin@mcciplaw.com
`litdocketing@mcciplaw.com
`tlevie@mcciplaw.com
`jharbin@mcciplaw.com
`wthomas@mcciplaw.com
`
`
`Dated: July 14, 2016
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`
`Respectfully submitted,
`
`/Brian P. Lynch/
`Brian P. Lynch
`Registration No. 58,794
`blynch@niro-mcandrews.com
`NIRO MCANDREWS, LLC
`200 West Madison Street, Suite 2040
`Chicago, Illinois 60606
`Telephone: (312) 755-8581
`Fax: (312) 674-7481
`
`Representative for Patent Owner
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