Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 10
`Entered: March 28, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`CONEX UNIVERSAL LIMITED,
`Petitioner,
`v.
`RLS LLC,
`Patent Owner.
`
`Case IPR2019-00590 (Patent 9,145,992 B2)
`Case IPR2019-00615 (Patent 9,638,361 B2)1
`
`
`
`
`
`
`
`
`
`
`Before MITCHELL G. WEATHERLY, RICHARD H. MARSCHALL, and
`JOHN D. HAMANN, Administrative Patent Judges.
`
`WEATHERLY, Administrative Patent Judge.
`
`ORDER
`Denying Without Prejudice Petitioner’s Motion
`for Pro Hac Vice Admission of Marc C. Levy
`37 C.F.R § 42.10
`
`
`1 We exercise our discretion to issue one order to be entered in above-
`referenced proceedings. The Parties are not authorized to use this style
`heading without prior Board approval.
`
`
`Tel: 571-272-7822
`
`Paper 10
`Entered: March 28, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`CONEX UNIVERSAL LIMITED,
`Petitioner,
`v.
`RLS LLC,
`Patent Owner.
`
`Case IPR2019-00590 (Patent 9,145,992 B2)
`Case IPR2019-00615 (Patent 9,638,361 B2)1
`
`
`
`
`
`
`
`
`
`
`Before MITCHELL G. WEATHERLY, RICHARD H. MARSCHALL, and
`JOHN D. HAMANN, Administrative Patent Judges.
`
`WEATHERLY, Administrative Patent Judge.
`
`ORDER
`Denying Without Prejudice Petitioner’s Motion
`for Pro Hac Vice Admission of Marc C. Levy
`37 C.F.R § 42.10
`
`
`1 We exercise our discretion to issue one order to be entered in above-
`referenced proceedings. The Parties are not authorized to use this style
`heading without prior Board approval.
`
`
`
`IPR2019-00590 (Patent 9,145,992 B2)
`IPR2019-00615 (Patent 9,638,361 B2)
`Petitioner moves for admission pro hac vice of Marc C. Levy in each
`of the above-referenced proceedings (collectively, “Motions”). Paper 6,
`1–3.2 Each of the Motions included identical text set forth in a section
`styled as “Affadavit of Marc C. Levy in Support of Pro Hac Vice
`Application” (the “Levy Affidavit”). Paper 6, 4–6. For the reasons stated
`below, we deny Petitioner’s Motions without prejudice.
`The Notice of Filing Date Accorded to Petition entered in this
`proceeding authorized parties to file motions for admission pro hac vice in
`accordance with the standards set forth in Unified Patents, Inc. v. Parallel
`Iron, LLC, Case IPR2013-00639 (PTAB Oct. 15, 2013) (Paper 7). Paper 5,
`2. That Paper requires a motion for admission pro hac vice to be
`accompanied by “an affidavit or declaration of the individual seeking to
`appear.” Unified Patents, 3.
`Our Rules also require parties to support motions by evidence.
`37 C.F.R. § 42.22(a); see also 37 C.F.R. § 42.20(c) (placing burden of proof
`on movant). Testimonial evidence such as the Levy Affidavit must be
`submitted in the form of an affidavit or declaration filed as an Exhibit in the
`proceeding, not as a portion of the motion that is purportedly supported by
`the testimony. 37 C.F.R. §°42.63(a).
`The Levy Affidavit suffers two flaws. First, it is not evidence under
`our Rules. Second, it is not separately filed as an Exhibit. We address each
`flaw below.
`
`
`2 For purposes of expediency, we refer to papers and exhibits filed in
`IPR2019-00590. Petitioner filed a substantively identical Motion in
`IPR2019-00615. Paper 6, 1–3.
`
`2
`
`
`
`IPR2019-00590 (Patent 9,145,992 B2)
`IPR2019-00615 (Patent 9,638,361 B2)
`“Affidavit means affidavit or declaration under § 1.68 of this chapter.
`A . . . declaration under 28 U.S.C. 1746 may be used as an affidavit.”
`37 C.F.R. § 42.2. The reference to “affidavit” invokes the requirements of
`37 C.F.R. § 1.66, and the remainder of the definition of “affidavit” invokes
`the requirements of 37 C.F.R. § 1.68 or 28 U.S.C. § 1746. Thus, three
`avenues exist for meeting the requirements of an “affidavit” under our
`Rules. The Levy Affidavit meets none of these three requirements.
`Under 37 C.F.R. § 1.66, “[a]n oath or affirmation may be made before
`any person within the United States authorized by law to administer oaths”
`and the “oath shall be attested in all cases in this and other countries, by the
`proper official seal of the officer before whom the oath or affirmation is
`made.” The Affidavits do not include the seal of an officer before whom
`Mr. Levy’s oath or affirmation was made, and, thus, the Affidavits do not
`comply with § 1.66. Under 37 C.F.R. § 1.68 a party relying upon testimony
`in the form of a declaration must include a statement in the declaration that
`“willful false statements and the like are punishable by fine or
`imprisonment, or both (18 U.S.C. 1001) and may jeopardize the validity of
`the application or any patent issuing thereon.” 37 C.F.R. § 1.68. A similar
`statement exists in 28 U.S.C. § 1746 that permits a witness to “declare (or
`certify, verify, or state) under penalty of perjury under the laws of the United
`States of America that the foregoing is true and correct.” 28 U.S.C. § 1746.
`The Levy Affidavit included neither of these statements. See Paper 6, 4–6.
`For all these reasons, we cannot consider the Levy Affidavit as testimonial
`evidence supporting the Motions. Without such evidence, we deny the
`Motions without prejudice.
`
`3
`
`
`
`IPR2019-00590 (Patent 9,145,992 B2)
`IPR2019-00615 (Patent 9,638,361 B2)
`Petitioner is authorized to file revised motions for admission pro hac
`vice of Marc C. Levy with supporting evidence in the form of an exhibit
`containing testimony meeting any of the standards discussed above.
`Petitioner requested via e-mail on March 27, 2019, that we quickly review
`the Motion so that Petitioner could identify Mr. Levy as backup counsel. To
`support that expedited review of the issues presented by the Motion,
`Petitioner should file a revised motion with appropriate supporting evidence
`by no later than Monday, April 1, 2019.
`Accordingly, for the reasons discussed above, it is:
`ORDERED that Petitioner’s Motion for Pro Hac Vice Admission
`Under 37 C.F.R. § 42.10 in each of the above-captioned proceedings is
`denied without prejudice; and
`FURTHER ORDERED that Petitioner is authorized in each
`proceeding to file a revised motion for admission pro hac vice of
`Marc C. Levy along with a supporting exhibit containing testimonial
`evidence by the close of business Monday, April 1, 2019.
`
`4
`
`
`
`IPR2019-00590 (Patent 9,145,992 B2)
`IPR2019-00615 (Patent 9,638,361 B2)
`For PETITIONER:
`Jeffrey Danley
`Thomas Shewmake
`SEED IP LAW GROUP
`jeffd@seedip.com
`tomshewmake@seedip.com
`For PATENT OWNER:
`Christopher Renk
`Michael Harris
`BANNER & WITCOFF, LTD.
`crenk@bannerwitcoff.com
`mharris@bannerwitcoff.com
`
`5
`
`
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