`
`
`Paper 40
`Entered: April 25, 2018
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FEDEX CORPORATION,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00859
`Patent 9,047,586 B2
`____________
`
`
`
`Before TREVOR M. JEFFERSON, DAVID C. MCKONE, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Motion for Pro Hac Vice Admission of
`Joseph M. Schaffner
`37 C.F.R. § 42.10
`
`
`
`
`
`
`IPR2017-00859
`Patent 9,047,586 B2
`
`
`Patent Owner filed an unopposed motion for pro hac vice admission
`of Joseph M. Schaffner in the above-identified proceeding. Paper 35. The
`motion is supported by a declaration of Mr. Schaffner. Ex. 1044. Petitioner
`indicates that it conferred with Patent Owner, who does not oppose this
`motion. Paper 19, 2.
`We have reviewed Patent Owner’s submissions and determine that the
`requirements of 37 C.F.R. § 42.10 have been met and there is good cause to
`admit Mr. Schaffner pro hac vice.
`
`
`ORDER
`
`It is therefore
`ORDERED that Patent Owner’s motion for pro hac vice admission of
`Joseph M. Schaffner in IPR2017-00859 is granted;
`FURTHER ORDERED that Mr. Schaffner is authorized to appear as
`back-up counsel for Patent Owner in these proceedings, but Mr. Schaffner
`may not act as lead counsel;
`FURTHER ORDERED that Patent Owner is to continue to have a
`registered practitioner represent it as lead counsel for these proceedings;
`FURTHER ORDERED that Mr. Schaffner 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;
`FURTHER ORDERED that Mr. Schaffner is 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.; and
`
`2
`
`
`
`IPR2017-00859
`Patent 9,047,586 B2
`
`
`FURTHER ORDERED that Petitioner shall file updated mandatory
`notices, pursuant to 37 C.F.R. § 42.8(b)(3), providing updated information
`regarding back-up counsel.
`
`
`
`PETITIONER:
`Jeffrey A. Berkowitz
`Gracie Mills
`Michael V. Young, Sr.
`Daniel Tucker
`Alexander Boyer
`Bradford Schulz
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`jeffrey.berkowitz@finnegan.com
`gracie.mills@finnegan.com
`michael.young@finnegan.com
`daniel.tucker@finnegan.com
` alexander.boyer@finnegan.com
`bradford.schulz@finnegan.com
`
`PATENT OWNER:
`Andrew G. Heinz
`Kevin K. McNish
`DESMARAIS LLP
`aheinz@desmaraisllp.com
`kkm-ptab@desmaraisllp.com
`
`Tim R. Seeley
`James R. Hietala
`INTELLECTUAL VENTURES
`tim@intven.com
`jhietala@intven.com
`
`
`
`3
`
`
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