Trials@uspto.gov
`571-272-7822
`
`Paper 224
`Entered: September 27, 2022
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`POLYGROUP LIMITED (MCO),
`Petitioner,
`
`v.
`
`WILLIS ELECTRIC CO., LTD.,
`Patent Owner.
`____________
`
`IPR2016-01610
`Patent 8,454,186 B2
`____________
`
`
`
`Before WILLIAM V. SAINDON, JEREMY M. PLENZLER, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Petitioner’s Motion for Admission
`Pro Hac Vice of Douglas D. Salyers
`37 C.F.R. § 42.10
`
`
`
`

`

`IPR2016-01610
`Patent 8,454,186 B2
`
`
`On August 3, 2022, Petitioner filed a Motion for Admission Pro Hac
`Vice of Douglas D. Salyers. Paper 218 (“Motion”). Petitioner also filed a
`Declaration of Douglas D. Salyers in support of the Motion. Paper 219
`(“Declaration”).1 Patent Owner has not opposed the Motion. For the
`reasons provided below, Petitioner’s Motion is granted.
`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 its notice
`authorizing motions for pro hac vice admission, the Board requires 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. See Paper 3, 2 (citing Unified Patents, Inc. v.
`Parallel Iron, LLC, IPR2013-00639, Paper 7 (PTAB Oct. 15, 2013)
`(representative “Order – Authorizing Motion for Pro Hac Vice
`Admission”)).
`Based on the facts set forth in the Motion and the accompanying
`Declaration,2 we conclude that Mr. Salyers has sufficient legal and technical
`                                                            
`1 Petitioner filed the Declaration as a Paper. Petitioner is reminded that
`affidavits and declarations must be filed as exhibits so that they may be
`referenced individually by exhibit number. See 37 C.F.R. § 42.63.
`2 Unified Patents indicates that “A motion for pro hac vice admission must:
`. . . Be accompanied by an affidavit or declaration of the individual seeking
`to appear attesting to the following: . . . All other proceedings before the
`Office for which the individual has applied to appear pro hac vice in the last
`three (3) years.” See Unified Patents, Paper 7 at 3. Although Mr. Salyers’
`Declaration presents “a sampling [of his] representative experiences in
`patent litigation including IPRs,” the Declaration fails to identify any
`particular proceedings before the Office for which Mr. Salyers has applied to
`appear pro hac vice in the past three years. See Paper 219, 2–5. For the
`purposes of this Order, we deem this harmless error, and treat the omission
`2 
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`IPR2016-01610
`Patent 8,454,186 B2
`
`qualifications to represent Petitioner in this proceeding, that Mr. Salyers has
`demonstrated sufficient litigation experience and familiarity with the subject
`matter of this proceeding, and that Mr. Salyers meets all other requirements
`for admission pro hac vice. We further conclude that Petitioner’s interest in
`being represented in this proceeding by counsel with litigation experience
`weighs in favor of granting the Motion. Accordingly, Petitioner has
`established good cause for admission pro hac vice of Mr. Salyers. Mr.
`Salyers will be permitted to serve as back-up counsel only. See 37 C.F.R.
`§ 42.10(c).
`We note that Petitioner has filed a Power of Attorney including Mr.
`Salyers in accordance with 37 C.F.R. § 42.10(b). Paper 221. Petitioner has
`also filed a Mandatory Notice identifying Mr. Salyers as back-up counsel in
`accordance with 37 C.F.R. § 42.8(b)(3). Paper 220.
`Accordingly, it is:
`ORDERED that Petitioner’s Motion for pro hac vice admission of
`Douglas D. Salyers is granted;
`FURTHER ORDERED that Petitioner is to continue to have a
`registered practitioner represent it as lead counsel for this proceeding;
`FURTHER ORDERED that Mr. Salyers is authorized to represent
`Petitioner as back-up counsel only in this proceeding;
`FURTHER ORDERED that Mr. Salyers is to comply with the
`Consolidated Trial Practice Guide3 (84 Fed. Reg. 64,280 (Nov. 21, 2019)),
`
`                                                            
`as a representation that Mr. Salyers has not applied to appear pro hac vice in
`any proceedings before the Office in the last three years.
`3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`3 
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`IPR2016-01610
`Patent 8,454,186 B2
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`and the Board’s Rules of Practice for Trials, as set forth in Part 42 of Title
`37, Code of Federal Regulations; and
`FURTHER ORDERED that Mr. Salyers shall 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.4
`
`
`                                                            
`4 In the Declaration, Mr. Salyers indicates he will be subject to the USPTO
`Code of Professional Responsibility, as opposed to the USPTO Rules of
`Professional Conduct. See Paper 219, 2. We deem this harmless error.
`4 
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` 
`
`

`

`IPR2016-01610
`Patent 8,454,186 B2
`
`FOR PETITIONER:
`
`Christopher J. Forstner
`Haden Marrs
`Douglas D. Salyers
`TROUTMAN PEPPER HAMILTON SANDERS LLP
`chris.forstner@troutmansanders.com
`haden.marrs@troutman.com
`doug.salyers@troutman.com
`
`
`FOR PATENT OWNER:
`
`Emily E. Niles
`Cyrus A. Morton
`ROBINS KAPLAN LLP
`eniles@robinskaplan.com
`cmorton@robinskaplan.com
`
` 
`
`5 
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`