`571-272-7822
`
`Paper 26
`Entered: February 13, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`AM GENERAL LLC,
`Petitioner,
`
`v.
`
`UUSI, LLC,
`Patent Owner.
`____________
`
`IPR2016-01049 (U.S. Patent No. 5,570,666)
`IPR2016-01050 (U.S. Patent No. 6,148,258)
`IPR2016-01051 (U.S. Patent No. 5,729,456)
`____________
`
`Before PHILLIP J. KAUFFMAN, MEREDITH C. PETRAVICK, and
`RICHARD E. RICE, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`ORDER1
`Pro Hac Vice Admission of Paul M. Schoenhard
`37 C.F.R. § 42.10(c)
`
`INTRODUCTION
`
`1 This Order addresses the same or similar issue in the proceedings listed above.
`Therefore, we issue one Order to be filed in each proceeding. The parties,
`however, are not authorized to use this style of filing.
`
`
`
`IPR2016-01049 (U.S. Patent No. 5,570,666)
`IPR2016-01050 (U.S. Patent No. 6,148,258)
`IPR2016-01051 (U.S. Patent No. 5,729,456)
`
`
`Petitioner filed Motions for Admission Pro Hac Vice of Paul M. Schoenhard
`
`(Paper 202) and an accompanying declarations in support thereof (Paper 21) in
`
`each of these proceedings. The Motions indicate that Patent Owner does not
`
`oppose. Paper 20, 3.
`
`
`
`
`
`
`
`DISCUSSION
`
`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 authorizing a motion for pro hac
`
`vice admission, the Board requires the moving party to provide 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.
`
`IPR2013-00639, Paper 7, “Order – Authorizing Motion for Pro Hac Vice
`
`Admission.”
`
`
`
`Lead Counsel for Petitioner is Nicole Jantzi, a registered practitioner. In the
`
`Motions, Petitioner states that there is good cause for the Board to recognize Paul
`
`M. Schoenhard pro hac vice during these proceedings because he represents
`
`Petitioner in related matters against the Patent Owner. Paper 20, 2–3. The motions
`
`further assert that Paul M. Schoenhard has experience and familiarity with the
`
`subject matter of the patents at issue in these proceedings. Id.
`
`Declarations of Paul M. Schoenhard attesting to, and sufficiently explaining,
`
`the required facts, accompany the motions. The Declarations comply with the
`
`requirements for pro hac vice admission and establish that Paul M. Schoenhard is
`
`
`2 For the purposes of this Order, IPR2016-01049 is representative and all citations
`are to papers in IPR2016-01049 unless otherwise noted.
`
`
`2
`
`
`
`
`IPR2016-01049 (U.S. Patent No. 5,570,666)
`IPR2016-01050 (U.S. Patent No. 6,148,258)
`IPR2016-01051 (U.S. Patent No. 5,729,456)
`
`an experienced attorney with an established familiarity with the subject matter at
`
`issue in these proceedings. See Paper 21. The Declarations further acknowledge
`
`that Paul M. Schoenhard is subject to the USPTO Rules of Professional Conduct
`
`set forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction under
`
`37 C.F.R. § 11.19(a). Id. at ¶¶ 5–6.
`
`Upon consideration, Petitioner has demonstrated sufficiently that Paul M.
`
`Schoenhard has sufficient legal and technical qualifications to represent Petitioner
`
`in this proceeding. Accordingly, Petitioner has established that there is good cause
`
`for admitting Paul M. Schoenhard. Paul M. Schoenhard may only be designated as
`
`backup counsel.
`
`
`
`It is:
`
`ORDER
`
` ORDERED that Petitioner’s Motions for Pro Hac Vice Admission of Paul
`
`M. Schoenhard is granted in each proceeding, and Paul M. Schoenhard is
`
`authorized to represent Petitioner only as back-up counsel in these proceedings;
`
`FURTHER ORDERED that Petitioner should continue to have a registered
`
`practitioner as lead counsel in these proceedings;
`
`FURTHER ORDERED that Paul M. Schoenhard 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; and
`
`FURTHER ORDERED that Paul M. Schoenhard is subject to the USPTO’s
`
`disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and the USPTO’s Rules of
`
`Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq.
`
`
`
`3
`
`
`
`
`IPR2016-01049 (U.S. Patent No. 5,570,666)
`IPR2016-01050 (U.S. Patent No. 6,148,258)
`IPR2016-01051 (U.S. Patent No. 5,729,456)
`
`PETITIONER:
`
`Nicole M. Jantzi
`Ian B. Brooks
`Matthew J. Rizzolo
`ROPES & GRAY, LLP
`nicole.jantzi@ropesgray.com
`ian.brooks@ropesgray.com
`matthew.rizzolo@ropesgray.com
`
`PATENT OWNER:
`
`Jay Kesan
`Teresa Summers
`DIMURO GINSBERG PC
`jay@keyiplaw.com
`teresa@keyiplaw.com
`
`4
`
`
`
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