Trials@uspto.gov
`571-272-7822
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`
`
`
`Paper 17
`Entered: September 24, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AVI NETWORKS, INC.,
`Petitioner,
`
`v.
`
`CITRIX SYSTEMS, INC.,
`Patent Owner.
`
`____________
`
`Case IPR2019-00844 (Patent 8,631,120 B2)
`Case IPR2019-00845 (Patent 9,148,493 B2)1
`____________
`
`
`
`Before JUSTIN T. ARBES, PATRICK M. BOUCHER, and
`FREDERICK C. LANEY, Administrative Patent Judges.
`
`LANEY, Administrative Patent Judge.
`
`DECISION
`Granting Petitioner’s Motions for
`Pro Hac Vice Admission of Josh Krevitt
`37 C.F.R. § 42.10(c)
`
`
`
`1 This Decision addresses issues pertaining to both cases. Therefore, we
`exercise our discretion to issue a single Decision to be filed in each case.
`The parties are not authorized to use this style heading for any subsequent
`papers.
`
`

`

`IPR2019-00844 (Patent 8,631,120 B2)
`IPR2019-00845 (Patent 9,148,493 B2)
`
`
`In each of the instant proceedings, Petitioner filed a motion requesting
`
`pro hac vice admission of Josh Krevitt, a supporting declaration from Mr.
`
`Krevitt, and an updated power of attorney.2 Patent Owner did not file an
`
`opposition to either motion. For the reasons stated below, Petitioner’s
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`motions are granted.
`
`The Board may recognize counsel pro hac vice during a proceeding
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`“upon a showing of good cause, subject to the condition that lead counsel be
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`a registered practitioner and to any other conditions as the Board may
`
`impose.” 37 C.F.R. § 42.10(c). For example, where the lead counsel is a
`
`registered practitioner, a non-registered practitioner may be permitted to
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`appear pro hac vice “upon showing that counsel is an experienced litigating
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`attorney and has an established familiarity with the subject matter at issue in
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`the proceeding.” Id. In authorizing motions for pro hac vice admission, the
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`Board requires the moving party to provide a statement of facts showing
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`there is good cause for the Board to recognize counsel pro hac vice and an
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`affidavit or declaration of the individual seeking to appear. Paper 5, 2
`
`(citing Unified Patents, Inc. v. Parallel Iron, LLC, Case IPR2013-00639
`
`(PTAB Oct. 15, 2013) (Paper 7) (“Order – Authorizing Motion for Pro Hac
`
`Vice Admission”)).
`
`In the motions, Petitioner asserts that there is good cause for pro hac
`
`vice admission because (1) Mr. Krevitt is an experienced litigation attorney
`
`
`2 Petitioner filed similar papers and exhibits in each of the instant
`proceedings. See IPR2019-00844, Papers 16 (“Mot.”), 3; IPR2019-00845,
`Papers 16, 3. We refer to those filed in Case IPR2019-00844 for
`convenience. Petitioner also filed each motion and declaration as a single
`paper in the Patent Trial and Appeal Board End to End (PTAB E2E) system.
`The parties are reminded that declarations must be filed as exhibits, rather
`than papers, and referenced by exhibit number. See 37 C.F.R. § 42.63.
`
`
`
`2
`
`

`

`IPR2019-00844 (Patent 8,631,120 B2)
`IPR2019-00845 (Patent 9,148,493 B2)
`
`with experience in numerous patent infringement litigations, and
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`(2) Mr. Krevitt is counsel for Patent Owner in co-pending litigation, Citrix
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`Systems, Inc. v. Avi Networks, Inc., Case No. 17-1843-LPS (D. Del.), and,
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`as such, has an established familiarity with the subject matter at issue in
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`these proceedings. See Mot. 2–3. Mr. Krevitt attests to these facts in his
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`declarations with sufficient explanations. See id. 5–6.
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`Based on the facts set forth above, we conclude that Mr. Krevitt has
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`sufficient legal and technical qualifications to represent Petitioner in these
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`proceedings and that there is a need for Petitioner to have its counsel in the
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`related litigation involved in these proceedings. See IPR2013-00639, Paper
`
`7 (setting forth the requirements for pro hac vice admission). Accordingly,
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`Petitioner has established good cause for the pro hac vice admission of Mr.
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`Krevitt. Mr. Krevitt will be permitted to appear pro hac vice in the instant
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`proceedings as back-up counsel only. See 37 C.F.R. § 42.10(c).
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`In consideration of the foregoing, it is hereby:
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`ORDERED that Patent Owner’s motions for pro hac vice admission
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`of Mr. Krevitt in the instant proceedings are granted, and Mr. Krevitt is
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`authorized to represent Petitioner as back-up counsel only in the instant
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`proceedings;
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`FURTHER ORDERED that Petitioner is to continue to have a
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`registered practitioner as lead counsel in the instant proceedings;
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`FURTHER ORDERED that Mr. Krevitt is to comply with the Office
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`Patent Trial Practice Guide and the Board’s Rules of Practice for Trials, as
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`set forth in Title 37, Part 42 of the Code of Federal Regulations; and
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`FURTHER ORDERED that Mr. Krevitt is subject to the USPTO
`
`
`
`
`
`3
`
`

`

`IPR2019-00844 (Patent 8,631,120 B2)
`IPR2019-00845 (Patent 9,148,493 B2)
`
`Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101–11.901 and
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`the Office’s disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
`
`
`
`4
`
`

`

`IPR2019-00844 (Patent 8,631,120 B2)
`IPR2019-00845 (Patent 9,148,493 B2)
`
`PETITIONER:
`
`Y. Ernest Hsin
`EHsin@gibsondunn.com
`
`Ryan Iwahashi
`RIwahashi@gibsondunn.com
`
`
`PATENT OWNER:
`
`Stephen J. Tytran
`stephen.tytran@citrix.com
`
`Lesley A. Hamlin
`lesley.hamlin@citrix.com
`
`
`
`
`
`
`5
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`