`571.272.7822
`
` Paper No. 23
`
`
` Entered: November 2, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HYTERA COMMUNICATIONS CORP. LTD.,
`Petitioner,
`
`v.
`
`MOTOROLA SOLUTIONS, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00176
`Patent 6,591,111 B1
`____________
`
`
`
`Before TREVOR M. JEFFERSON, DANIEL N. FISHMAN, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Motion for Pro Hac Vice Admission of
`Akshay S. Deoras
`37 C.F.R. § 42.10
`
`
`
`
`
`
`
`IPR2018-00176
`Patent 6,591,111 B1
`
`
`Patent Owner filed a Motion for Pro Hac Vice Admission of
`Akshay S. Deoras in this proceeding. Paper 20 (“Motion”). Patent Owner
`represents that Petitioner does not oppose the motion. Id. at 1. Patent
`Owner’s Motion is granted. See 37 C.F.R. § 42.10(c).
`In its motion, Patent Owner states that there is good cause to
`recognize Mr. Deoras during this proceeding because “Mr. Deoras is an
`experienced litigator” having “more than 9 years of patent litigation
`experience,” and because “[h]e is counsel for Motorola in the co-pending
`district court action related to this patent (Motorola Solutions, Inc. v. Hytera
`Communications Corp. Ltd., Hytera America, Inc., and Hytera
`Communications America (West), Inc., Case No. 17-cv-1972) and counsel in
`a manner before the International Trade Commission between the same
`parties (In the Matter of Certain Two-Way Radio Equipment and Systems,
`Related Software, and Components Thereof, Inv. No. 337-TA-1053).” Id. at
`3–4, 6. The Motion includes, as an exhibit, a Declaration made by
`Mr. Deoras, attesting to and sufficiently explaining these facts. Ex. 2015. In
`addition, Mr. Deoras acknowledges his understanding that he “agree[s] to be
`subject to the United States Patent and Trademark Office 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. at 4.
`Upon consideration, Patent Owner has demonstrated sufficiently that
`Mr. Deoras has sufficient legal and technical qualifications to represent
`Patent Owner in this proceeding.
`
`
`2
`
`
`
`IPR2018-00176
`Patent 6,591,111 B1
`
`
`
`It is
`ORDERED that Patent Owner’s Motion seeking admission Pro Hac
`Vice of Akshay S. Deoras is granted;
`FURTHER ORDERED that Patent Owner shall continue to have a
`registered practitioner represent it as lead counsel in this proceeding;
`Mr. Deoras is authorized to represent Patent Owner only as back-up counsel
`in this proceeding;
`FURTHER ORDERED that Patent Owner must submit a Power of
`Attorney for Akshay S. Deoras in accordance with 37 C.F.R. § 42.10(b);
`FURTHER ORDERED that Patent Owner must file updated
`Mandatory Notices identifying Akshay S. Deoras as back-up counsel in
`accordance with 37 C.F.R. § 42.8(b)(3); and
`FURTHER ORDERED that Mr. Deoras shall comply with the Office
`Patent Trial Practice Guide, as updated by the Office Patent Trial Practice
`Guide August 2018 Update, 83 Fed. Reg. 39,989 (Aug. 13, 2018), and the
`Board’s Rules of Practice for Trials, as set forth in Part 42 of 37 C.F.R., and
`is subject to the USPTO Rules of Professional Conduct set forth in
`37 C.F.R. §§ 11.101 et seq and the Office’s disciplinary jurisdiction under
`37 C.F.R. § 11.19(a).
`
`3
`
`
`
`IPR2018-00176
`Patent 6,591,111 B1
`
`
`
`For PETITIONER:
`
`Todd R. Tucker
`Mark W. McDougall
`Joshua A. Friedman
`CALFEE, HALTER & GRISWOLD LLP
`ttucker@calfee.com
`mmcdougall@calfee.com
`jfriedman@calfee.com
`
`For PATENT OWNER:
`
`Jon R. Carter
`Eugene Goryunov
`Akshay S. Deoras
`KIRKLAND & ELLIS LLP
`carterj@kirkland.com
`egoryunov@kirkland.com
`akshay.deoras@kirkland.com
`
`
`4
`
`