`Tel: 571-272-7822
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` Paper 36
`Entered: August 1, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ZSCALER INC.,
`Petitioner,
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`v.
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`SYMANTEC CORPORATION,
`Patent Owner.
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`
`Case IPR2018-00916
`Patent 7,360,249 B1
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`Before JEFFREY S. SMITH, BRYAN F. MOORE, and NEIL T. POWELL,
`Administrative Patent Judges.
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`MOORE, Administrative Patent Judge.
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`ORDER
`Granting Petitioner’s Motion for Pro Hac Vice Admission of
`Jared Bobrow
`37 C.F.R. § 42.10
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`Case IPR2018-00916
`Patent 7,360,249 B1
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`On February 6, 2019, Petitioner filed a motion requesting pro hac vice
`admission of Jared Bobrow. Paper 19 (“Motion”). Petitioner submitted a
`Declaration from Mr. Bobrow in support of the Motion. Paper 20.1 Patent
`Owner has not opposed the Motion.
`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 7, 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 Motion and the accompanying
`Declaration, we conclude that Mr. Bobrow has sufficient legal and technical
`qualifications to represent Petitioner in this proceeding, that Mr. Bobrow has
`demonstrated sufficient familiarity with the subject matter of this
`proceeding, and that Petitioner’s desire to include counsel from the
`corresponding district court proceeding is credible. See Paper 20 ¶¶ 8–9.
`Accordingly, Petitioner has established good cause for pro hac vice
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`1 Petitioner filed the Declaration as a Paper. We deem this to be harmless
`error, however, Petitioner is reminded that affidavits and declarations must
`be filed as exhibits. See 37 C.F.R. § 42.63(a) (“Evidence consists of
`affidavits, transcripts of depositions, documents, and things. All evidence
`must be filed in the form of an exhibit.”).
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`Case IPR2018-00916
`Patent 7,360,249 B1
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`admission of Mr. Bobrow. Mr. Bobrow may only be designated as backup
`counsel.
`We note that Petitioner submitted a Power of Attorney in accordance
`with 37 C.F.R. § 42.10(b) for Mr. Bobrow (Paper 14). We further note that
`Petitioner submitted an Updated Mandatory Notice (Paper 29) identifying
`Mr. Bobrow as back-up counsel.
`In consideration of the foregoing, it is hereby
`ORDERED that Petitioner’s Motion for pro hac vice admission of
`Jared Bobrow is GRANTED;
`FURTHER ORDERED that Petitioner continue to have a registered
`practitioner represent it as lead counsel for the instant proceeding, but that
`Mr. Bobrow is authorized to act as back-up counsel;
`FURTHER ORDERED that Mr. Bobrow comply with the Office
`Patent Trial Practice Guide, including the August 2018 Update (83 Fed. Reg.
`39,989 (Aug. 13, 2018)) and the July 2019 Update (84 Fed. Reg. 33,925
`(July 16, 2019)), 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. Bobrow 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.
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`Case IPR2018-00916
`Patent 7,360,249 B1
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`PETITIONER:
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`Donald Daybell
`Jeremy Lang
`Johannes Hsu
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`ptabdocketjjl2@orrick.com
`PTABDocketJ1H1@orrick.com
`d2dptabdocket@orrick.com
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`PATENT OWNER:
`Chad Walters
`Kurt Pankratz
`Morgan E. Grissum
`Bryan Parrish
`BAKER BOTTS L.L.P.
`chad.walters@bakerbotts.com
`kurt.pankratz@bakerbotts.com
`morgan.grissum@bakerbotts.com
`bryan.parrish@bakerbotts.com
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`