`
`
`
`Trials@uspto.gov
`Tel: 571.272.7822
`
`
`Paper 21
`Entered: April 27, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CANON INC., CANON U.S.A., INC.,
`CANON FINANCIAL SERVICES, INC., FUJIFILM CORPORATION,
`FUJIFILM HOLDINGS AMERICA CORPORATION,
`FUJIFILM NORTH AMERICA CORPORATION, JVC KENWOOD
`CORPORATION, JVCKENWOOD USA CORPORATION,
`NIKON CORPORATION, NIKON INC., OLYMPUS CORPORATION,
`OLYMPUS AMERICA INC., PANASONIC CORPORATION,
`PANASONIC CORPORATION OF NORTH AMERICA,
`SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`v.
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`____________
`
`Case IPR2016-01213 (Patent 8,504,746 B2)
`Cases IPR2016-01214 and IPR2016-01225 (Patent 8,966,144 B2)1
`____________
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`DECISION
`Granting Motions for Pro Hac Vice Admission
`37 C.F.R. § 42.10
`
`
`1 This Decision addresses the same issues in the above-identified cases.
`Therefore, we exercise our discretion to issue one Decision to be entered in
`each of the identified cases.
`
`
`
`IPR2016-01213 (Patent 8,504,746 B2)
`IPR2016-01214 and IPR2016-01225 (Patent 8,966,144 B2)
`
`
`Petitioner filed a Motion for Pro Hac Vice Admission of Ms. Rachel
`Capoccia (Paper 192), supported by a Declaration of Ms. Capoccia
`(Paper 203), in each of the above-identified proceedings. The Motions are
`unopposed.
`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. In authorizing
`motions for pro hac vice, we require the moving party to provide a statement
`of facts showing there is good cause for us to recognize counsel pro hac
`vice, and an affidavit or declaration of the individual seeking to appear in the
`proceedings.
`Upon review of Petitioner’s Motions and supporting evidence, we
`determine that Petitioner has demonstrated that Ms. Capoccia has sufficient
`legal and technical qualifications to represent Petitioner in these
`proceedings. We also recognize that there is a need for Petitioner to have
`Ms. Capoccia be involved in the proceedings at issue. Accordingly,
`Petitioner has established that there is good cause for admitting
`Ms. Capoccia.
`Accordingly, it is
`ORDERED that Petitioner’s Motions for Pro Hac Vice Admission of
`Ms. Capoccia are granted; Ms. Capoccia is authorized to represent Petitioner
`as back-up counsel in the above-identified proceedings;
`
`
`2 All citations are to IPR2016-01213, as representative, unless otherwise
`noted.
`3 Ms. Capoccia’s Declaration should have been filed as a separate exhibit
`and labeled correctly in accordance with 37 C.F.R. § 42.63.
`
`2
`
`
`
`IPR2016-01213 (Patent 8,504,746 B2)
`IPR2016-01214 and IPR2016-01225 (Patent 8,966,144 B2)
`
`
`FURTHER ORDERED that Petitioner is to continue to have a
`registered practitioner represent it as lead counsel for these proceedings;
`FURTHER ORDERED that Ms. Capoccia is to comply with the
`Office Patent Trial Practice Guide and the Board’s Rules of Practice for
`Trials, as set forth in Part 42 of Title 37, Code of Federal Regulations; and
`she 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.
`
`
`
`For PETITIONER:
`
`T. Vann Pearce
`Christopher Higgins
`Christopher Siebens
`John Inge
`TVPPTABDocket@orrick.com
`0CHPTABDocket@orrick.com
`29CPTABDocket@orrick.com
`JRIPTABDocket@orrick.com
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`
`David Maiorana
`F. Drexel Feeling
`Matthew Johnson
`David Witcoff
`Marc Blackman
`dmaiorana@JonesDay.com
`f.dfeeling@jonesday.com
`mwjohnson@jonesday.com
`dlwitcoff@jonesday.com
`msblackman@jonesday.com
`JONES DAY
`
`
`3
`
`
`
`IPR2016-01213 (Patent 8,504,746 B2)
`IPR2016-01214 and IPR2016-01225 (Patent 8,966,144 B2)
`
`Ahren Hsu-Hoffman
`Dion Bregman
`Chris Mizumoto
`Ahren.hsu-hoffman@morganlewis.com
`dion.bregman@morganlewis.com
`chris.mizumoto@morganlewis.com
`MORGAN, LEWIS & BOCKIUS LLP
`
`Gregory Cordrey
`gcordrey@jmbm.com
`JEFFER MANGELS BUTLER & MITCHELL LLP
`
`Brian Rupp
`Carrie Beyer
`Nikola Colic
`Brian.Rupp@dbr.com
`Carrie.Beyer@dbr.com
`Nick.Colic@dbr.com
`DRINKR BIDDLE & REATH LLP
`
`For PATENT OWNER:
`Nicholas T. Peters
`Paul Henkelmann
`Joseph Marinelli
`ntpete@fitcheven.com
`phenkelmann@fitcheven.com
`jmarinelli@fitcheven.com
`FITCH, EVEN, TABIN & FLANNERY LLP
`
`Anthony Meola
`info@themeolafirm.com
`THE MEOLA FIRM, PLLC
`
`
`4
`
`
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