`
`Trials@uspto.gov
`Entered: December 19, 2017
`
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`T-MOBILE US, INC. and T-MOBILE USA, INC.,
`Petitioner,
`v.
`BARKAN WIRELESS ACCESS TECHNOLOGIES, L.P.,
`Patent Owner.
`
`
`Case IPR2017-01098 (Patent 8,559,369 B2)
`Case IPR2017-01099 (Patent 9,042,306 B2)1
`
`
`
`Before MEREDITH C. PETRAVICK, JOHN A. HUDALLA, and
`SHARON FENICK, Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`
`ORDER
`Pro Hac Vice Admission of Matthew C. Bernstein
`37 C.F.R. § 42.10
`
`
`
`
`
`
`
`
`
`1 This decision addresses issues pertaining to both cases. Therefore, we
`exercise our discretion to issue a single Order to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`IPR2017-01098 (Patent 8,559,369 B2)
`IPR2017-01099 (Patent 9,042,306 B2)
`
`
`Petitioner filed Motions for Admission Pro Hac Vice of Matthew C.
`Bernstein (Paper 62) and accompanying affidavits in support thereof
`(Exhibit 1038) in both of these proceedings. Patent Owner did not file any
`opposition.
`
`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 authorizing
`motions for pro hac vice admission, the Board requires the moving party to
`provide 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. IPR2013-00639, Paper 7,
`“Order – Authorizing Motion for Pro Hac Vice Admission.”
`
`Lead Counsel for Petitioner is Chun M. Ng, a registered practitioner.
`In the Motions, Petitioner states that there is good cause for the Board to
`recognize Matthew C. Bernstein pro hac vice during these proceedings
`because Matthew C. Bernstein represents Petitioner in related matters.
`Paper 6, 2. The motions further assert that Matthew C. Bernstein has
`experience and familiarity with the subject matter of the patents at issue in
`these proceedings. Id.
`Affidavits of Matthew C. Bernstein attesting to, and sufficiently
`explaining, the required facts, accompany the motions. Exhibit 1038. The
`affidavits comply with the requirements for pro hac vice admission and
`establish that Matthew C. Bernstein is an experienced attorney having
`
`
`2 For the purposes of this Order, IPR2016-01099 is representative and all
`citations are to papers in IPR2016-01099 unless otherwise noted.
`
`
`2
`
`
`
`IPR2017-01098 (Patent 8,559,369 B2)
`IPR2017-01099 (Patent 9,042,306 B2)
`
`established familiarity with the subject matter at issue in these proceedings.
`See id. ¶¶ 9–10 The affidavits further acknowledge that Matthew C.
`Bernstein is subject to the USPTO Rules of Professional Conduct set forth in
`37 C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction under 37 C.F.R. §
`11.19(a). Id. ¶ 6.
`Petitioner has demonstrated sufficiently that Matthew C. Bernstein
`has sufficient legal and technical qualifications to represent Petitioner in this
`proceeding. Accordingly, Petitioner has established that there is good cause
`for admitting Matthew C. Bernstein. Matthew C. Bernstein may only be
`designated as backup counsel.
`
`Petitioner’s motions are granted. Petitioner should update the counsel
`information in the PTAB E2E filing system.
`
`
`
`
`ORDER
`
`It is:
`ORDERED that Petitioner’s Motion for Pro Hac Vice Admission of
`Matthew C. Bernstein is granted in each proceeding, and Matthew C.
`Bernstein is authorized to represent Petitioner only as back-up counsel in
`these proceedings;
`FURTHER ORDERED that Petitioner should continue to have a
`registered practitioner as lead counsel in these proceedings;
`FURTHER ORDERED that Matthew C. Bernstein 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
`
`3
`
`
`
`IPR2017-01098 (Patent 8,559,369 B2)
`IPR2017-01099 (Patent 9,042,306 B2)
`
`
`FURTHER ORDERED that Matthew C. Bernstein is subject to the
`USPTO’s disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and the
`USPTO’s Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et
`seq.
`PETITIONER:
`
`Chun M. Ng
`Miguel Bombach
`John Esterhay
`PERKINS COIE LLP
`cng@perkinscoie.com
`mbombach@perkinscoie.com
`jesterhay@perkinscoie.com
`
`PATENT OWNER:
`
`Robert D. Katz
`KATZ, PLLC
`rkatz@katzfirm.com
`
`Spencer C. Patterson
`spatterson@gchub.com
`
`4
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
