Trials@uspto.gov
`571.272.7822
`
`
`
`
`
` Paper No. 44
`
`Entered: September 23, 2021
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SATCO PRODUCTS, INC.,
`Petitioner,
`
`v.
`
`SEOUL VIOSYS CO., LTD.,
`Patent Owner.
`____________
`
`IPR2020-00704
`Patent 8,860,331 B2
`____________
`
`
`
`Before ERICA A. FRANKLIN, JEFFREY W. ABRAHAM, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`
`PER CURIAM.
`
`
`
`
`ORDER
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`571.272.7822
`
`
`
`
`
` Paper No. 44
`
`Entered: September 23, 2021
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SATCO PRODUCTS, INC.,
`Petitioner,
`
`v.
`
`SEOUL VIOSYS CO., LTD.,
`Patent Owner.
`____________
`
`IPR2020-00704
`Patent 8,860,331 B2
`____________
`
`
`
`Before ERICA A. FRANKLIN, JEFFREY W. ABRAHAM, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`
`PER CURIAM.
`
`
`
`
`ORDER
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`IPR2020-00704
`Patent 8,860,331 B2
`
`
`I.
`
`INTRODUCTION
`
`Petitioner requests a rehearing of our Order (Paper 26) withdrawing
`
`pro hac vice admission of Nicholas A. Brown. Paper 30 (“Reh’g Req.”).
`
`Initially, we granted Petitioner’s motion for pro hac vice admission of
`
`Nicholas A. Brown, based upon the motion, Paper 15, and the Declaration of
`
`Nicholas A. Brown, Exhibit 1036, submitted in support of the motion.
`
`Paper 17. In his declaration, Mr. Brown declared that “[n]o sanction or
`
`contempt citation has been imposed against [him] by any court or
`
`administrative body.” Ex. 1036 ¶ 4. Referring to that declaration statement,
`
`the motion similarly asserts that Mr. Brown has “never had any sanctions or
`
`contempt citations imposed against him.” Paper 17, 2 (citing Ex. 1036 ¶ 4).
`
`Subsequently, while considering a motion for pro hac vice admission
`
`of Mr. Brown in IPR2020-00836, supported by a similar Declaration of
`
`Nicholas A. Brown, the Board determined Mr. Brown’s statement that “[n]o
`
`sanction or contempt citation has been imposed against me by any court or
`
`administrative body,” appeared to be inconsistent with the records of the
`
`State Bar Court of the State Bar of California. Satco Products, Inc. v. Seoul
`
`Semiconductor Co., Ltd., IPR2020-00836, Exhibit 3002. After being
`
`presented with an opportunity to address the statement, Mr. Brown failed to
`
`provide a reasonable explanation in his supplemental declaration for making
`
`that false statement. IPR2020-00836, Paper 23, 3–5 (citing Ex. 1014). As
`
`acknowledged by Mr. Brown in that proceeding, he received a public
`
`reproval from the State Bar of California in 2004. IPR2020-00836, Ex. 1014
`
`¶ 1. As discussed in IPR2020-00836, the State Bar of California categorizes
`
`a public reproval as a sanction. IPR2020-00836, Paper 23 at 3–4. Upon
`
`consideration of the motion, the declaration testimony of Mr. Brown, and the
`
`2
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`
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`IPR2020-00704
`Patent 8,860,331 B2
`
`additional evidence of record, the Board denied the motion for his pro hac
`
`vice recognition in IPR2020-00836. Id.
`
`Because Mr. Brown made the same false statement in his pro hac vice
`
`declaration in this proceeding, we issued an Order withdrawing Mr. Brown’s
`
`pro hac vice recognition here. Paper 26. In the Rehearing Request,
`
`Petitioner seeks reconsideration of that Order. Paper 30.
`
`II. DISCUSSION
`
`In a rehearing request, “[t]he burden of showing a decision should be
`
`modified lies with the party challenging the decision. The request must
`
`specifically identify all matters the party believes the Board misapprehended
`
`or overlooked, and the place where each matter was previously addressed in
`
`a motion, an opposition, a reply, or a sur-reply.” 37 C.F.R. § 42.71(d).
`
`Petitioner asserts that a rehearing is warranted because, allegedly:
`
`(1) the Board’s Order withdrawing Mr. Brown’s pro hac vice recognition
`
`was “issued without notice or an opportunity of a hearing, in violation of the
`
`mandate of 37 C.F.R. § 42.10(d)”; (2) the Board incorrectly determined that
`
`Mr. Brown’s public reproval was the type of “sanction” that needed to be
`
`disclosed as part of his pro hac vice application; and (3) the Board
`
`“misapprehended Mr. Brown’s explanation that he had identified his
`
`reproval in other pro hac vice applications” as confirming that he understood
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`the reproval is a sanction. Reh’g Req. 1–4.
`
`To begin, we address Petitioner’s assertion that our withdrawal of
`
`Mr. Brown’s pro hac vice recognition was in violation of 37 C.F.R.
`
`§ 42.10(d). Id. at 1–2, 5. That rule states, “[a] panel of the Board may
`
`disqualify counsel for cause after notice and opportunity for hearing. A
`
`decision to disqualify is not final for the purposes of judicial review until
`
`3
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`
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`IPR2020-00704
`Patent 8,860,331 B2
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`certified by the Chief Administrative Patent Judge.” 37 C.F.R. § 42.10(d)
`
`(emphasis added). Rule 42.10(d) addresses the disqualification of counsel,
`
`not admission pro hac vice. Disqualification of counsel under Rule 42.10(d)
`
`requires the Board to apply the Office’s Rules of Professional Conduct,
`
`37 C.F.R. §§ 11.101 et seq., such as the rules governing the attorney-client
`
`relationship, conflicts of interest, and duty to preserve client confidences.
`
`Anderson v. Eppstein, 59 U.S.P.Q.2d 1280, 1286 (BPAI 2001) (informative)
`
`(“[G]enerally the provisions of the PTO Code of Professional
`
`Responsibility, aided by decisions of federal courts, govern resolution of a
`
`disqualification.”).
`
`To be clear, we have not “disqualified” Mr. Brown from representing
`
`Petitioner in this inter partes review or any other matter. Rather, we have
`
`withdrawn pro hac vice admission in this and other inter partes reviews
`
`based on our finding that the motion and the declaration he submitted to
`
`support the motion contained a false statement. In other words, the decision
`
`to withdraw Mr. Brown’s pro hac vice recognition was not based on his
`
`qualifications as counsel or any violation of the rules governing the attorney-
`
`client relationship, conflicts of interest, or duty to preserve client
`
`confidences, but due to the submission of a defective declaration in support
`
`of the motion for pro hac vice recognition. Thus, we determine that 37
`
`C.F.R. § 42.10(d) does not apply.
`
`Apart from that rule, and in terms of notice and an opportunity to be
`
`heard, generally, the Board provided Petitioner and Mr. Brown notice on
`
`January 25, 2021, that it considered Mr. Brown’s declaration statement to be
`
`inconsistent with records from the State Bar Court of the State Bar of
`
`California. IPR2020-00836, Ex. 3002. That communication served as
`
`4
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`
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`IPR2020-00704
`Patent 8,860,331 B2
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`notice in that case, as well as any case before the Board in which Mr. Brown
`
`submitted a pro hac vice declaration containing the same statement. In the
`
`notice, Mr. Brown was provided an opportunity to address the statement at
`
`issue in his declaration. Id. Mr. Brown responded by submitting a
`
`supplemental declaration, which we considered and addressed in our
`
`decision denying the pro hac vice motion in IPR2020-00836. IPR2020-
`
`00836, Paper 23.
`
`We did not undertake a new or different analysis in this case because
`
`the Petitioner, the pro hac vice motion, the pro hac vice declarant, and the
`
`pro hac vice declaration statement are the same here as in IPR2020-00836.
`
`In IPR2020-00836, Mr. Brown had prior notice of the issue, was extended
`
`an opportunity to address the issue, and did so in a supplemental declaration.
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`IPR2020-00836, Ex. 1014 (Supplemental Declaration of Nicholas A. Brown
`
`in support of Motion For Pro Hac Vice Admission). The facts and issues
`
`involved are not case-specific. Rather, both cases involve the same public
`
`reproval, the same declaration statement, and the same issue of whether
`
`Mr. Brown failed to disclose that reproval as a sanction. Just as those facts
`
`and issues resulted in the denial of the pro hac vice motion in IPR2020-
`
`00836, they also resulted in the withdrawal of Mr. Brown’s pro hac vice
`
`recognition here. Paper 26.
`
`In any event, we consider Petitioner’s Rehearing Request to provide
`
`Petitioner and Mr. Brown an opportunity to be heard again on the matter of
`
`the pro hac vice motion for Mr. Brown, and to address the Order
`
`withdrawing pro hac vice admission of Mr. Brown. 37 C.F.R. 42.5 (a)
`
`(“The Board may determine a proper course of conduct in a proceeding for
`
`any situation not specifically covered by this part and may enter non-final
`
`5
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`
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`IPR2020-00704
`Patent 8,860,331 B2
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`orders to administer the proceeding.”). Further, we determine that the
`
`Rehearing Request and the circumstances involved in this case establish
`
`good cause for considering the evidence submitted to support the Rehearing
`
`Request.
`
`Accordingly, we next consider Petitioner’s argument that the Board
`
`erred in determining that Mr. Brown’s public reproval is a “sanction” that
`
`should have been disclosed in his declaration supporting the motion for pro
`
`hac vice admission before the Board. Reh’g Req. 2–3, 6–12.
`
`Mr. Brown acknowledges that when submitting his pro hac vice
`
`declaration, he understood its contents were governed by the rules set forth
`
`in Unified Patents, Inc. v. Parallel Iron, LLC, IPR2013-00639, Paper 7
`
`(PTAB Oct. 15, 2013) (“Unified Patents”). See Ex. 1038 ¶ 4 (“In submitting
`
`my pro hac vice declaration, I understood its contents were governed by the
`
`rules set out in Unified Patents, Inc. v. Parallel Iron, IPR2013-00639,
`
`Paper 7 (Oct. 15, 2013).”). In Unified Patents, the Board set forth a number
`
`of requirements for a pro hac vice motion, including that it be accompanied
`
`by an affidavit or declaration attesting to, among other things:
`
`ii. No suspensions or disbarments from practice before any court
`or administrative body1;
`
`iii. No application for admission to practice before any court or
`administrative body ever denied;
`
`
`1 Petitioner’s Rehearing Request mistakenly quotes this provision as stating
`“administrative tribunal,” rather than “administrative body.” Reh’g Req. 4.
`Petitioner’s arguments do not appear to turn on this distinction, but we note
`that “administrative body” is broader than “administrative tribunal,” in that it
`encompasses bodies such as a state bar.
`
`6
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`IPR2020-00704
`Patent 8,860,331 B2
`
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`iv. No sanctions or contempt citations imposed by any court or
`administrative body;
`
`Unified Patents at 3. Petitioner and Mr. Brown do not contend that
`
`Mr. Brown’s public reproval from the State Bar of California was not a
`
`disciplinary sanction. Indeed, Petitioner acknowledges that, “[u]nder
`
`California law, a ‘public reproval’ is a public censure or reprimand” and “all
`
`forms of disciplinary penalties are labeled ‘sanctions.’” Reh’g Req. 7, n.1.
`
`However, Petitioner asserts that Mr. Brown reasonably construed the term
`
`“sanctions,” in the context of his pro hac vice application in IPR2020-00836
`
`and here, as referring only to “litigation sanctions,” i.e., “penalties imposed
`
`by a tribunal in a litigated matter,” and not disciplinary sanctions. Id. at 2–3,
`
`9; see also Ex. 1038 ¶ 6 (Mr. Brown declaring that he “did not think section
`
`(iv) regarding ‘sanctions or contempt citations imposed by any court or
`
`administrative body’ was intended to include punishments resulting from
`
`state, federal or administrative Bar disciplinary proceedings.”).
`
`Petitioner asserts that Mr. Brown’s construction is “supported by
`
`multiple rules of interpretation.” Reh’g Req. 2. In particular, Petitioner
`
`asserts that application of the “ordinary” meaning of the term “sanctions”
`
`would lead to absurd results because such meaning broadly encompasses
`
`any “penalty for noncompliance specified in a law or decree.” Id. at 6
`
`(quoting THE AMERICA HERITAGE DICTIONARY 1088 (2d ed. 1985); citing
`
`WEBSTER’S II NEW RIVERSIDE UNIVERSITY DICTIONARY 1035 (1994)).
`
`Petitioner’s argument is not compelling, as the issue in this case is whether
`
`the term “sanctions” referenced in Unified Patents excludes attorney
`
`disciplinary sanctions imposed by a state bar.
`
`7
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`IPR2020-00704
`Patent 8,860,331 B2
`
`
`Petitioner asserts that interpreting the pro hac vice certification
`
`requirements in Unified Patents “holistically” supports the conclusion that
`
`its reference to “sanctions or contempt citations” was not intended to
`
`encompass disciplinary sanctions because “disbarments or suspensions” was
`
`set forth separately in the list of required declaration statements. Reh’g
`
`Req. 8. Petitioner asserts also that “[i]f disciplinary sanctions were included
`
`in ‘sanctions,’ then a separate provision requiring disclosure of disbarments
`
`or suspensions would be unnecessary” and superfluous. Id. (emphasis
`
`omitted). Additionally, according to Petitioner, because Unified Patents
`
`used the phrase “no sanctions or contempt citations,” and contempt may be
`
`viewed as a type of sanction arising only from litigation, the reference to
`
`“sanction” in that phrase may be reasonably interpreted to mean only
`
`litigation sanctions. Id. at 8–9.
`
`We are not persuaded by Petitioner’s rationale for limiting the term
`
`“sanctions” in Unified Patents to litigation sanctions or “penalties imposed
`
`by a tribunal in a litigated matter.” See Reh’g Req. 9–10. In particular,
`
`Petitioner’s argument lacks merit, as “disbarments” and “suspensions”
`
`represent only two types of disciplinary actions that may be imposed upon
`
`an attorney, and it is does not serve to cover all such disciplinary actions and
`
`sanctions. Further, “disbarments” and “suspensions” represent a specific
`
`category of penalties that may result in an attorney being denied
`
`authorization to practice law, at least temporarily. Thus, Unified Patents
`
`specifically and separately lists those disclosure requirements for a declarant
`
`seeking to practice before the Board as pro hac vice counsel. Moreover,
`
`Petitioner’s attempt to limit “sanctions” to litigation sanctions because it is
`
`categorized with “contempt citations” in Unified Patents is curious and
`
`8
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`
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`IPR2020-00704
`Patent 8,860,331 B2
`
`unpersuasive, as Petitioner’s rationale for doing so involves construing
`
`“contempt as a type of ‘sanction,’” in contravention of the rule against
`
`superfluities discussed earlier by Petitioner. See id. at 8.
`
`Petitioner alleges also that Mr. Brown’s narrow interpretation of
`
`“sanctions” is supported by The American Bar Association Model Rule on
`
`Pro Hac Vice Admission (the “ABA Model Rule”). Reh’g Req. 10–11.
`
`According to Petitioner, the ABA Model Rule distinguishes “sanctions”
`
`from “discipline” and courts interpreting the ABA Model Rule confirm that
`
`those terms are different concepts in pro hac vice applications. Id. That
`
`comparison is unavailing, as Petitioner has not shown, nor do we find, that
`
`Unified Patents refers to “discipline” and “sanctions” as separate concepts in
`
`the same manner as the ABA Model Rule pro hac vice application. Id. at 10
`
`(citing Ex. 1054, 5; Ex. 1055, 5–6) (referring to the ABA Model Rule pro
`
`hac vice application addressing whether an applicant has “formally been
`
`disciplined or sanctioned by any court in this state”).
`
`Additionally, Petitioner alleges that our Office rule, 37 C.F.R. §11.18,
`
`supports Mr. Brown’s interpretation. Reh’g Req. 11–12. Petitioner asserts
`
`that, “[p]ursuant to 37 C.F.R. §11.18(c), a violation of counsel’s certification
`
`subjects the offending practitioner to ‘sanctions’ that include” a list of
`
`actions that do not constitute discipline. Id. (citing and quoting 37 C.F.R.
`
`§11.18(c)(1)–(5)). In particular, Petitioner contends that
`
`Section 11.18(c)(2), which states, “[r]eferring a practitioner’s conduct to the
`
`Director of the Office of Enrollment and Discipline for appropriate action,”
`
`is a referral and not “discipline.” Id. at 12. Based on that contention,
`
`Petitioner asserts that “Section 11.18(d) confirms that sanctions and
`
`discipline differ” because it states “[a]ny practitioner violating the provisions
`
`9
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`
`
`IPR2020-00704
`Patent 8,860,331 B2
`
`of this section may also be subject to disciplinary action.” Id. (quoting
`
`37 C.F.R. §11.18(d)).
`
`We find Petitioner’s analysis of our Rule is flawed and deficient, as
`
`Petitioner fails to recognize that Section 11.18(c) explicitly states that
`
`“[v]iolations of any of paragraphs (b)(2)(i) through (iv) of this section are
`
`. . . subject to such sanctions or actions as deemed appropriate by the
`
`USPTO Director, which may include, but are not limited to, any
`
`combination of” the listed actions. Thus, the list of “sanctions or actions” is
`
`explicitly not exclusive. Further, even if the act of referring a practitioner’s
`
`conduct to the Director of the Office of Enrollment and Discipline (“OED”)
`
`for appropriate action is not itself a disciplinary action, it may certainly be
`
`viewed as a referral for disciplinary action if deemed appropriate by the
`
`OED Director.
`
`Moreover, we note that Rule 11.20 is directed to “Disciplinary
`
`sanctions,” and lists “Reprimand or censure” as such a sanction. See
`
`37 C.F.R. § 11.20(a)(3). As Petitioner has acknowledged, “a ‘public
`
`reproval’ is a public censure or reprimand.” Reh’g Req. 7 n.1. In other
`
`words, our Rules recognize a “disciplinary sanction” as a type of “sanction”
`
`in a similar fashion as the State Bar of California. Further, we note that
`
`other provisions of our Rules refer to the result of disciplinary proceedings
`
`as simply “sanctions.” See, e.g., 37 C.F.R. § 11.54 (describing factors
`
`considered “in determining any sanction”); § 11.59(b) (referring to “records
`
`of every disciplinary proceeding where a practitioner is reprimanded,
`
`suspended, or excluded, including when said sanction is imposed by default
`
`judgment”).
`
`10
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`
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`IPR2020-00704
`Patent 8,860,331 B2
`
`
`Next, Petitioner asserts that the Board erred in finding that Mr. Brown
`
`“has not identified anything unique about the Board’s requirements for a
`
`declaration in support of a pro hac vice motion . . . that would merit his
`
`concealing a sanction that he has disclosed to federal courts when seeking
`
`pro hac vice admission.” Reh’g Req. 12 (quoting IPR2020-00836, Paper 23
`
`at 4). Petitioner supports that assertion by noting instances when Mr. Brown
`
`either disclosed or did not disclose his public reproval in applications for pro
`
`hac vice admission in federal courts based on the information requested in
`
`those respective applications. Id. at 12–14. Based on those examples,
`
`Petitioner contends that “[t]he most reasonable inference is that [Mr. Brown]
`
`interpreted ‘sanctions’ in good faith and determined that the reproval did not
`
`qualify.” Id. at 14–15.
`
`As in IPR2020-00836, we recognize that Mr. Brown was aware of his
`
`public reproval and made a conscious decision not to disclose it to the
`
`Board. In this rehearing, we have considered Petitioner’s asserted rationale
`
`for that decision, along with the arguments and evidence submitted. For the
`
`reasons discussed above, we determine that Petitioner has not demonstrated
`
`persuasively that Mr. Brown’s decision to not disclose his public reproval in
`
`his declaration in support of motion for his pro hac vice recognition was
`
`reasonable or justified in view of Unified Patents or our Office rules
`
`addressing sanctions.
`
`III. CONCLUSION
`
`For the foregoing reasons, Petitioner has not demonstrated that we
`
`erred in withdrawing Mr. Brown’s pro hac vice recognition in this case.
`
`Accordingly, we deny Petitioner’s Request for Rehearing. See 37 C.F.R.
`
`§ 42.71(d).
`
`11
`
`
`
`IPR2020-00704
`Patent 8,860,331 B2
`
`
`Accordingly, it is
`
`IV. ORDER
`
`ORDERED that Petitioner’s Request for Rehearing is denied.
`
`12
`
`
`
`IPR2020-00704
`Patent 8,860,331 B2
`
`For PETITIONER:
`
`Heath Briggs
`Barry Schindler
`Andrew Sommer
`Scott J. Bornstein
`Stephen M. Ullmer
`Joshua L. Raskin
`Julie P. Bookbinder
`GREENBERG TRAURIG, LLP
`briggsh@gtlaw.com
`schindlerb@gtlaw.com
`sommera@gtlaw.com
`bornsteins@gtlaw.com
`ullmers@gtlaw.com
`raskinj@gtlaw.com
`bookbinderj@gtlaw.com
`
`Michael E. McCabe, Jr.
`mike@mccabeali.com
`
`
`
`For PATENT OWNER:
`
`Charles H. Sanders
`Jonathan M. Strang
`Emre B. Yuzak
`LATHAM & WATKINS LLP
`charles.sanders@lw.com
`jonathan.strang@lw.com
`emre.yuzak@lw.com
`
`
`Michael B. Eisenberg
`STEPTOE & JOHNSON LLP
`meisenberg@steptoe.com
`
`
`13
`
`
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