throbber
Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 16
`Entered: May 25, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TWILIO INC.,
`Petitioner,
`
`v.
`
`TELESIGN CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-01688
`Patent 9,300,792 B2
`____________
`
`
`Before SALLY C. MEDLEY and JUSTIN T. ARBES, Administrative
`Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`
`DECISION
`Petitioner’s Motion for Pro Hac Vice Admission of Jay B. Schiller
`37 C.F.R. § 42.10
`
`

`

`IPR2016-01688
`Patent 9,300,792 B2
`
`
`Petitioner filed a Motion requesting pro hac vice admission of Jay
`
`B. Schiller, and provided an Affidavit from Mr. Schiller in support of the
`
`request. Paper 12 (“Mot.”).1 Petitioner’s lead counsel, Wayne O. Stacy, is a
`
`registered practitioner. Patent Owner did not file an opposition to the
`
`Motion. Based on the facts set forth in the Motion and Affidavit, we
`
`conclude that Petitioner has established good cause for Mr. Schiller’s pro
`
`hac vice admission. See 37 C.F.R. § 42.10(c); Unified Patents, Inc. v.
`
`Parallel Iron, LLC, Case IPR2013-00639, slip op. at 3–4 (PTAB Oct. 15,
`
`2013) (Paper 7) (setting forth the requirements for pro hac vice admission).
`
`We note, however, that the USPTO Rules of Professional Conduct are set
`
`forth in 37 C.F.R. §§ 11.101–11.901, and it is those rules to which
`
`Mr. Schiller will be subject. See Mot. ¶ 10 (citing “37 C.F.R. §§ 10.20
`
`et seq.”).
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that Petitioner’s Motion for pro hac vice admission of Jay
`
`B. Schiller is granted, and Mr. Schiller is authorized to represent Petitioner
`
`as back-up counsel in the instant proceeding;
`
`FURTHER ORDERED that Petitioner is to continue to have a
`
`registered practitioner as lead counsel in the instant proceeding;
`
`FURTHER ORDERED that Mr. Schiller 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
`
`
`1 Petitioner filed the Motion and Affidavit as a single paper in the Patent
`Trial and Appeal Board End to End (PTAB E2E) system. The parties are
`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
`
`

`

`IPR2016-01688
`Patent 9,300,792 B2
`
`
`FURTHER ORDERED that Mr. Schiller is subject to the USPTO
`
`Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101–11.901 and
`
`the Office’s disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
`
`
`
`
`
`3
`
`

`

`IPR2016-01688
`Patent 9,300,792 B2
`
`PETITIONER:
`
`Wayne O. Stacy
`Eliot D. Williams
`BAKER BOTTS L.L.P.
`wayne.stacy@bakerbotts.com
`eliot.williams@bakerbotts.com
`
`
`
`PATENT OWNER:
`
`Jesse Camacho
`Elena McFarland
`Ryan Dykal
`Christine Guastello
`Mary Peal
`Amy Foust
`SHOOK, HARDY & BACON L.L.P.
`jcamacho@shb.com
`emcfarland@shb.com
`rdykal@shb.com
`cguastello@shb.com
`telesignipr@shb.com
`afoust@shb.com
`
`4
`
`
`
`
`
`

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