Paper 8
`Entered: April 21, 2017
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`
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`Trials@uspto.gov
`571–272–7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ALBAAD MASSUOT YITZHAK, LTD. AND ALBAAD USA, INC.,
`Petitioner,
`
`v.
`
`EDGEWELL PERSONAL CARE BRANDS, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00694
`Patent 6,432,075 B1
`____________
`
`
`Before KEVIN W. CHERRY, JAMES A. WORTH, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`WIEKER, Administrative Patent Judge.
`
`
`ORDER
`Patent Owner’s Motion for
`Pro Hac Vice Admission of Jason C. Kravitz
`37 C.F.R. § 42.10
`
`

`

`IPR2017-00694
`Patent 6,432,075 B1
`
`
`On January 19, 2017, Albaad Massuot Yitzhak, Ltd. and Albaad USA,
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`Inc. (collectively, “Petitioner”) filed a Petition requesting inter partes review
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`of claims 1–6 of U.S. Patent No. 6,432,075 (“the ’075 patent”). Paper 2
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`(“Pet.”). The Petition states that the ’075 patent is “assigned to Edgewell
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`Personal Care Brands, LLC” (“Edgewell”), and identifies Edgewell as the
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`Patent Owner. Id. at 1. The Petition also identifies pending district court
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`litigation between Edgewell and Petitioner concerning the ’075 patent. Id.
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`On February 2, 2017, the Patent Trial and Appeal Board mailed a
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`Notice of Filing Date According to Petition, which included a caption
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`identifying Edgewell as the Patent Owner. Paper 3, 1.
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`On February 9, 2017, counsel for Edgewell filed Mandatory Notices
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`pursuant to 37 C.F.R. § 42.8. Paper 4, 4. This filing identifies Edgewell and
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`Uni-Charm Corp. (“Uni-Charm”) as real parties-in-interest. Id. at 2.
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`Specifically, the filing explains that “Uni-Charm is the owner of the
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`’075 patent. Edgewell is the exclusive licensee of the ’075 patent and has
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`the right and obligation to select and retain counsel to defend the ’075 patent
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`in this inter partes review.” Id.1 The filing provides no evidence in support
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`of the assertion that Edgewell is an exclusive licensee with the right to
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`defend the ’075 patent in this proceeding.
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`On February 10, 2017, counsel for Edgewell filed a Motion for Pro
`
`Hac Vice Admission of Jason C. Kravitz, supported by the Affidavit of
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`Mr. Kravitz. Papers 6–7.
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`
`1 This filing also modified the caption for this proceeding to identify Uni-
`Charm, as Patent Owner, and Edgewell, as Exclusive Licensee. Id. at 1.
`The parties are instructed to use the heading on the first page of the Notice
`of Filing Date Accorded to Petition in this proceeding until the Board makes
`a determination otherwise.
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`
`
`2
`
`

`

`IPR2017-00694
`Patent 6,432,075 B1
`
`
`We have reviewed the submissions and deny Edgewell’s Motion for
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`Pro Hac Vice Admission of Mr. Kravitz at this time, because the record does
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`not establish that Edgewell has a right to participate in this proceeding.
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`According to 35 U.S.C. § 313, it is the patent owner, not a licensee,
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`who has the right to participate in inter partes review proceedings, e.g., by
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`filing a preliminary response to a petition. In this case, the record before us
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`includes no evidence to support the assertion that Edgewell is an exclusive
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`licensee to the ’075 patent, with a right to participate in this proceeding, or
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`that Edgewell is otherwise authorized to act on behalf of the owner of the
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`’075 patent. See Pet. 1.2 Further, although Petitioner appears to understand
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`Edgewell to have such a right, we have no evidence before us to that effect.
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`See ZTE (USA), Inc. v. Elec. & Telecomm. Research Instit., Case IPR2015-
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`00029, Paper 8 at 2 n.1 (PTAB Jan. 9, 2015) (suggesting exclusive licensee
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`file a power of attorney from record patent owner); Bio-Rad Labs., Inc. v.
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`Cal. Inst. of Tech., Case IPR2015-00009, Paper 9 at 2–4 (PTAB Mar. 6,
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`2015) (ordering a purported licensee to show cause as to why it is entitled to
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`participate in inter partes review proceedings); NXP Semiconductors USA,
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`Inc. v. Inside Secure, Case IPR2016-00692, Paper 9 at 2 n.1 (PTAB Sept. 9,
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`2016) (treating NFCT as Patent Owner, in light of NFCT’s representation
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`that it possesses all substantial rights to the challenged patent, which was
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`supported by exhibits containing patent license agreements).3
`
`
`2 We note that the only recorded assignment of the ’075 patent is that from
`the named inventors to Uni-Charm Corp. See USPTO Assignments,
`Reel/Frame 011513/0090, recorded Nov. 8, 2000.
`3 If Edgewell wishes to file any license agreements with the record patent
`owner under seal, it should file a motion to seal with the submission and
`request entry of a protective order. See Office Patent Trial Practice Guide
`(“Trial Practice Guide”), 77 Fed. Reg. 48,756, 48,760–61 (Aug. 12, 2012)
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`
`
`3
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`

`

`IPR2017-00694
`Patent 6,432,075 B1
`
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`Therefore, we deny the Motion for Pro Hac Vice Admission, filed on
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`behalf of Edgewell, who is not the Patent Owner or otherwise shown to be
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`able to act on behalf of the Patent Owner in this proceeding.
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`
`
`It is:
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`ORDERED that Patent Owner’s Motion for Admission Pro Hac Vice
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`of Mr. Kravitz is denied;
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`FURTHER ORDERED that the parties, until further notice, shall use
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`the heading indicated on the Notice of Filing Date Accorded to Petition in
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`this proceeding.
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`
`
`
`(discussing how parties should handle filing confidential information). The
`parties should meet and confer about the terms of any protective order. The
`parties are encouraged to use the default protective order found in
`Appendix B of the Trial Practice Guide. See Trial Practice Guide, 77 Fed.
`Reg. at 48,769–71 (explaining protective order guidelines and default
`protective order). If the parties seek any variations from the default
`protective order, they should submit both a clean version of their proposed
`protective order and a version showing the modifications that they propose
`making to the default protective order.
`
`
`
`4
`
`

`

`
`
`5
`
`IPR2017-00694
`Patent 6,432,075 B1
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`PETITIONER:
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`David Loewenstein
`dloewenstein@pearlcohen.com
`
`Guy Yonay
`guyy@pczlaw.com
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`
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`PATENT OWNER:
`
`Daniel Burnham
`dburnham@nixonpeabody.com
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`
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`