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Trials@uspto.gov Paper No. 12
`571-272-7822
`
`Entered: October 25, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`BLACKBERRY LTD.,
`Patent Owner.
`_______________
`
`Case IPR2017-00911 (Patent 8,745,149 B2)
`Case IPR2017-00912 (Patent 8,745,149 B2)
`Case IPR2017-00913 (Patent 8,402,384 B2)
`Case IPR2017-00914 (Patent 8,713,466 B2)1
`_______________
`
`
`Before SALLY C. MEDLEY, ROBERT J. WEINSCHENK, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Motion for Pro Hac Vice Admission
`37 C.F.R. § 42.10
`
`
`
`
`1 This Decision pertains to all of these cases. Therefore, we exercise our
`discretion to issue a single Decision to be filed in each case. The parties are
`not authorized to use this style heading for any subsequent papers.
`
`

`

`IPR2017-00911 (Patent 8,745,149 B2)
`IPR2017-00912 (Patent 8,745,149 B2)
`IPR2017-00913 (Patent 8,402,384 B2)
`IPR2017-00914 (Patent 8,713,466 B2)
`
`
`INTRODUCTION
`I.
`Patent Owner filed a motion for pro hac vice admission of Sharon Lee
`in the above-listed proceedings. Paper 11 (“Motion” or “Mot.”).2 Petitioner
`does not oppose the Motion. Mot. 1. For the following reasons, the Motion
`is granted.
`
`II. ANALYSIS
`Counsel may be admitted pro hac vice upon a showing of good cause,
`subject to the condition that lead counsel is a registered practitioner. 37
`C.F.R. § 42.10(c). Specifically, if lead counsel is a registered practitioner,
`back-up counsel may be permitted to appear pro hac vice “upon showing
`that counsel is an experienced litigating attorney and has an established
`familiarity with the subject matter at issue in the proceeding.” Id. For the
`reasons set forth in the Motion and the accompanying affidavit of Ms. Lee
`(Ex. 2004), we find that good cause exists to admit Ms. Lee pro hac vice in
`the above-listed proceedings.
`
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Motion is granted, and Ms. Sharon Lee is
`authorized to represent Patent Owner as back-up counsel in the above-listed
`proceedings;
`FURTHER ORDERED that a registered practitioner will continue to
`represent Patent Owner as lead counsel in the above-listed proceedings; and
`
`
`2 We cite to the record in IPR2017-00911.
`
`2
`
`

`

`IPR2017-00911 (Patent 8,745,149 B2)
`IPR2017-00912 (Patent 8,745,149 B2)
`IPR2017-00913 (Patent 8,402,384 B2)
`IPR2017-00914 (Patent 8,713,466 B2)
`
`
`FURTHER ORDERED that Ms. Lee is to comply with the Board’s
`Rules of Practice for Trials set forth in Part 42 of Title 37, Code of Federal
`Regulations, and the Office Patent Trial Practice Guide, and is subject to the
`USPTO’s Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et
`seq., and to the USPTO’s disciplinary jurisdiction under 37 C.F.R.
`§ 11.19(a).
`
`
`3
`
`

`

`IPR2017-00911 (Patent 8,745,149 B2)
`IPR2017-00912 (Patent 8,745,149 B2)
`IPR2017-00913 (Patent 8,402,384 B2)
`IPR2017-00914 (Patent 8,713,466 B2)
`
`PETITIONER:
`
`Naveen Modi
`Joseph E. Palys
`Phillip W. Citroën
`John S. Holley
`PAUL HASTINGS LLP
`naveenmodi@paulhastings.com
`josephpalys@paulhastings.com
`phillipcitroen@ paulhastings.com
`johnholley@paulhastings.com
`
`
`PATENT OWNER:
`
`Ching-Lee Fukuda
`Samuel A. Dillon
`SIDLEY AUSTIN LLP
`clfukuda@sidley.com
`samuel.dillon@sidley.com
`
`4
`
`

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