`571-272-7822
`
`
`
`
`Paper 14
`Entered: May 14, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`SPEAKWARE, INC.,
`Patent Owner.
`____________
`
`Case IPR2019-00340
`Patent 6,397,186 B1
`_______________
`
`
`Before DEBRA K. STEPHENS, DAVID C. MCKONE, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Motion for Pro Hac Vice Admission
`37 C.F.R. § 42.10
`
`
`
`
`
`IPR2019-00340
`Patent 6,397,186 B1
`
`
`INTRODUCTION
`I.
`Patent Owner filed a motion for pro hac vice admission of Mr. Simon
`Franzini in this proceeding. Paper 6 (“Motion” or “Mot.”). Petitioner did
`not file an opposition to the Motion. 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 Mr.
`Franzini,1 good cause exists to admit Mr. Franzini pro hac vice in this
`proceeding.
`
`III. ORDER
`
`It is hereby
`ORDERED that the Motion is granted, and Mr. Simon Franzini is
`authorized to represent Patent Owner as back-up counsel in the above-listed
`proceeding;
`FURTHER ORDERED that a registered practitioner will continue to
`represent Patent Owner as lead counsel in the above-listed proceeding; and
`
`1 Mr. Franzini’s affidavit does not comply with 37 C.F.R. § 1.68. Because
`Petitioner does not oppose the Motion and we discern no prejudice to
`Petitioner, we do not deny the Motion for that reason. However, all future
`affidavits or declarations submitted in this case and other matters before the
`Board must include a statement that complies with 37 C.F.R. § 1.68.
`
`2
`
`
`
`IPR2019-00340
`Patent 6,397,186 B1
`
`
`FURTHER ORDERED that Mr. Franzini 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
`
`
`
`IPR2019-00340
`Patent 6,397,186 B1
`
`PETITIONER:
`
`Erika H. Arner
`Daniel C. Tucker
`Jency Mathew
`FINNEGAN, HENDERSON, FARABOW, GARRETT, & DUNNER LLP
`erika.arner@finnegan.com
`daniel.tucker@finnegan.com
`jency.mathew@finnegan.com
`
`
`PATENT OWNER:
`
`Sean A. Luner
`DOVEL & LUNER, LLP
`sean@dovel.com
`
`4
`
`