`571-272-7822
`
`Paper 31
`Entered: September 29, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NEUMODX MOLECULAR, INC.,
`Petitioner,
`
`v.
`
`HANDYLAB, INC.,
`Patent Owner.
`____________
`
`IPR2020-01133
`Patent 8,415,103 B2
`____________
`
`
`
`Before SHERIDAN K. SNEDDEN, JO-ANNE M. KOKOSKI, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Patent Owner’s Motions for Admission
`Pro Hac Vice of Omar A. Khan and Laura Macro
`37 C.F.R. § 42.10
`
`
`
`
`
`IPR2020-01133
`Patent 8,415,103 B2
`
`
`On August 28, 2020, Patent Owner filed Motions for Admission Pro
`Hac Vice of Omar A. Khan and Laura Macro. Papers 11, 12 (collectively,
`“Motions”). Patent Owner also filed Declarations of Omar A. Khan
`(Ex. 2001) and Laura Macro (Ex. 2002) (collectively, “Declarations”) in
`support of the Motions. Patent Owner attests that Petitioner does not oppose
`the Motions. Paper 11, 1; Paper 12, 1. For the reasons provided below,
`Patent Owner’s Motions are granted.
`Pursuant to 37 C.F.R. § 42.10(c), the Board may recognize counsel
`pro hac vice during a proceeding upon a showing of good cause, subject to
`the condition that lead counsel be a registered practitioner. In its notice
`authorizing motions for pro hac vice admission, the Board requires 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 this proceeding. See Paper 8, 3 (citing Unified Patents, Inc. v.
`Parallel Iron, LLC, IPR2013-00639, Paper 7 (PTAB Oct. 15, 2013)
`(representative “Order – Authorizing Motion for Pro Hac Vice
`Admission”)).
`Based on the facts set forth in the Motion and the accompanying
`Declarations,1 we conclude that Mr. Khan and Dr. Macro (1) have sufficient
`legal and technical qualifications to represent Patent Owner in this
`
`
`1 Unified Patents indicates that “A motion for pro hac vice admission must: .
`. . Be accompanied by an affidavit or declaration of the individual seeking to
`appear attesting to the following: . . . All other proceedings before the Office
`for which the individual has applied to appear pro hac vice in the last three
`(3) years.” Unified Patents, Paper 7 at 3. The Declarations of Mr. Khan and
`Dr. Macro fail to identify all other proceedings before the Office for which
`Mr. Khan and Dr. Macro have applied to appear pro hac vice. See Ex. 2001;
`Ex. 2002. For purposes of this Order, we deem this harmless error.
`2
`
`
`
`
`
`IPR2020-01133
`Patent 8,415,103 B2
`
`proceeding, (2) have demonstrated sufficient familiarity with the subject
`matter of this proceeding, and (3) meet all other requirements for admission
`pro hac vice, and that Patent Owner’s intent to be represented by counsel
`with litigation experience is warranted. Accordingly, Patent Owner
`establishes good cause for pro hac vice admission of Mr. Khan and
`Dr. Macro. Mr. Khan and Dr. Macro will be permitted to serve as back-up
`counsel only. See 37 C.F.R. § 42.10(c).
`We note that Patent Owner filed a Power of Attorney including
`Mr. Khan and Dr. Macro in accordance with 37 C.F.R. § 42.10(b). Paper 4.
`However, Mandatory Notices identifying Mr. Kahn and Dr. Macro as back-
`up counsel have not been submitted. Accordingly, Patent Owner must
`update its in Mandatory Notices as required by 37 C.F.R. § 42.8(b)(3), to
`identify Mr. Khan and Dr. Macro as back-up counsel.
`Accordingly, it is:
`ORDERED that Patent Owner’s Motions for pro hac vice admission
`of Omar A. Khan and Laura Macro are granted;
`FURTHER ORDERED that Patent Owner is to continue to have a
`registered practitioner represent it as lead counsel for this proceeding;
`FURTHER ORDERED that Mr. Khan and Dr. Macro are authorized
`to represent Patent Owner as back-up counsel only in this proceeding;
`FURTHER ORDERED that Mr. Khan and Dr. Macro are to comply
`with the Consolidated Trial Practice Guide2 (84 Fed. Reg. 64,280 (Nov. 21,
`2019)), and the Board’s Rules of Practice for Trials, as set forth in Part 42 of
`Title 37, Code of Federal Regulations;
`
`
`2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`3
`
`
`
`
`
`IPR2020-01133
`Patent 8,415,103 B2
`
`
`FURTHER ORDERED that Mr. Khan and Dr. Macro shall be 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; and
`FURTHER ORDERED that Patent Owner shall file an updated
`Mandatory Notice in this proceeding in accordance with 37 C.F.R.
`§ 42.8(b)(3), identifying Mr. Khan and Dr. Macro as back-up counsel.
`
`
`
`For PETITIONER:
`
`James K. Cleland
`Michael N. Spink
`Keith Weiss
`DICKINSON WRIGHT, PLLC
`jcleland@dickison-wright.com
`mspink@dickinson-wright.com
`kweiss@dickinson-wright.com
`
`
`For PATENT OWNER:
`
`Heather M. Petruzzi
`Barish Ozdamar, Ph.D.
`WILMER CUTLER PICKERING HALE and DORR LLP
`heather.petruzzi@wilmerhale.com
`barish.ozdamar@wilmerhale.com
`
`
`
`
`4
`
`
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