Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper No. 18
`Entered: June 19, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SHENZHEN ZHIYI TECHNOLOGY CO. LTD., D/B/A ILIFE,
`Petitioner,
`
`v.
`
`IROBOT CORP.,
`Patent Owner.
`_______________
`
`Case IPR2017-02061
`Patent 6,809,490 B2
` _______________
`
`
`Before WILLIAM V. SAINDON, Administrative Patent Judge.
`
`
`
`
`
`
`ORDER
`Granting Petitioner’s Motions for Pro Hac Vice
`Admission of Stephen M. Ullmer and Nicholas A. Brown
`37 C.F.R. § 42.10
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`Case IPR2017-02061
`Patent 6,809,490 B2
`
`
`Petitioner filed motions requesting pro hac vice admission of Stephen M.
`
`Ullmer (Paper 15) and Nicholas A. Brown (Paper 171). The motions are supported,
`
`respectively, by affidavits of Mr. Ullmer (Ex. 1011) and Mr. Brown (Ex. 1012).
`
`Petitioner attests that Patent Owner does not oppose the motions. Paper 15, 2;
`
`Paper 17, 2. For the reasons set forth below, Petitioner’s motions are granted.
`
`In accordance with 37 C.F.R. § 42.10(c), we may recognize counsel pro hac
`
`vice during a proceeding upon a showing of good cause. In authorizing a motion
`
`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
`
`the proceeding. See Paper 3, 2 (citing Unified Patents, Inc. v. Parallel Iron, LLC,
`
`Case IPR2013-00639 (PTAB Oct. 15, 2013) (Paper 7) (representative “Order –
`
`Authorizing Motion for Pro Hac Vice Admission”)).
`
`Based on the facts set forth in the motions and the accompanying affidavits2,
`
`we conclude that Mr. Ullmer and Mr. Brown have sufficient legal and technical
`
`qualifications to represent Petitioner in this proceeding, that Mr. Ullmer and Mr.
`
`Brown have demonstrated sufficient familiarity with the subject matter of this
`
`proceeding, and that Petitioner’s intent to be represented by counsel with litigation
`
`experience is warranted. Accordingly, Petitioner has established good cause for
`
`
`1 Petitioner originally filed a duplicate motion for admission pro hac vice of Mr.
`Ullmer captioned as a motion for admission pro hac vice of Mr. Brown. Paper 16.
`Petitioner filed a corrected motion for admission pro hac vice of Mr. Brown on
`June 19, 2018. Paper 17.
`2 Each affidavit indicates compliance with the Office Patent Trial Practice Guide
`and the Board’s Rules of Practice for Trials set forth in part 42 of the C.F.R., as
`opposed to part 42 of 37 C.F.R. Ex. 1011 ¶ 8; Ex. 1012 ¶ 8. We deem this
`harmless error.
`
` 2
`
`
`
`
`
`

`

`Case IPR2017-02061
`Patent 6,809,490 B2
`
`pro hac vice admission of Mr. Ullmer and Mr. Brown. Mr. Ullmer and Mr. Brown
`
`will be permitted to serve as back-up counsel only. See 37 C.F.R. § 42.10(c).
`
`
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that Petitioner’s Motions for Pro Hac Vice admission of
`
`Stephen M. Ullmer (Paper 15) and Nicholas A. Brown (Paper 17) are granted;
`
`FURTHER ORDERED that within seven (7) business days of the date of
`
`this Order, Petitioner shall submit Powers of Attorney for Mr. Ullmer and Mr.
`
`Brown, in accordance with 37 C.F.R. § 42.10(b);
`
`FURTHER ORDERED that Mr. Ullmer and Mr. Brown are authorized to act
`
`as back-up counsel in the instant proceeding only;
`
`FURTHER ORDERED that Petitioner must file an updated mandatory
`
`notice identifying Mr. Ullmer and Mr. Brown as back-up counsel in accordance
`
`with 37 C.F.R. § 42.8(b)(3);
`
`FURTHER ORDERED that Petitioner shall continue to have a registered
`
`practitioner represent it as lead counsel for the instant proceeding;
`
`FURTHER ORDERED that Mr. Ullmer shall 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. Ullmer shall be 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.;
`
`FURTHER ORDERED that Mr. Brown shall 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; and
`
`FURTHER ORDERED that Mr. Brown shall be subject to the Office’s
`
` 3
`
`
`
`
`
`

`

`Case IPR2017-02061
`Patent 6,809,490 B2
`
`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.
`
`
`
`
`
`
` 4
`
`
`
`
`
`

`

`Case IPR2017-02061
`Patent 6,809,490 B2
`
`For PETITIONER:
`
`Patrick McCarthy
`mccarthyp@gtlaw.com
`
`Cameron Nelson
`nelsonc@gtlaw.com
`
`
`
`For PATENT OWNER:
`
`Walter Renner
`axf-ptab@fr.com
`
`Jeremy Monaldo
`jjm@fr.com
`
`Tonya Drake
`tdrake@irobot.com
`
`Patrick Bisenius
`bisenius@fr.com
`
`
`Linhong Zhang
`lwzhang@fr.com
`
`
`
`
`
`
` 5
`
`
`
`
`
`