`571-272-7822
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` Paper: 14
`
`Entered: May 25, 2018
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.,
`Patent Owner.
`_______________
`
`Case PGR2018-00029 (Patent 9,636,583 B2)
`Case PGR2018-00047 (Patent 9,770,659 B2)1
`_______________
`
`
`
`Before MICHAEL W. KIM, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Petitioner’s Motion for Pro Hac Vice
`Admission of Mr. Michael J. Sacksteder
`37 C.F.R. § 42.10
`
`
`
`
`
`
`
`1 This Order applies to both of the listed cases. We exercise our discretion
`to issue one Order to be filed in each case. The parties, however, are not
`authorized to use this style heading in subsequent papers.
`
`
`
`PGR2018-00029 (Patent 9,636,583 B2)
`PGR2018-00047 (Patent 9,770,659 B2)
`
`
`
`
`
`Petitioner moves to have Mr. Michael J. Sacksteder admitted pro hac
`
`vice in this proceeding. Paper 12 (“Motion”).2 Petitioner submitted a
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`Declaration of Mr. Sacksteder in support of this Motion. Ex. 1007
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`(“Declaration”). Patent Owner did not oppose the Motion within the
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`requisite time period.
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`
`
`In accordance with 37 C.F.R. § 42.10(c), we may recognize counsel
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`pro hac vice during a proceeding upon a showing of good cause. In
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`authorizing a motion for pro hac vice admission, the Board requires the
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`moving party to provide a statement of facts showing there is good cause for
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`the Board to recognize counsel pro hac vice, and an affidavit or declaration
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`of the individual seeking to appear in the proceeding. See Paper 3, 2 (citing
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`Unified Patents, Inc. v. Parallel Iron, LLC, Case IPR2013-00639 (PTAB
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`Oct. 15, 2013) (Paper 7) (representative “Order – Authorizing Motion for
`
`Pro Hac Vice Admission”)).
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`
`
`In the Motion, Petitioner states there is good cause for the Board to
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`recognize Mr. Sacksteder pro hac vice during this proceeding, because, inter
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`alia, Mr. Sacksteder is an experienced litigating attorney and has established
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`familiarity with the subject matter at issue in this proceeding, as he is
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`serving as a consulting attorney in a related, co-pending action before the
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`
`
`2 For purposes of expediency, we refer to paper and exhibit numbers for
`PGR2018-00029. Petitioner filed a similar Motion (Paper 11) and
`Declaration (Ex. 1009) of Mr. Sacksteder in PGR2018-00047.
`
` 2
`
`
`
`
`
`PGR2018-00029 (Patent 9,636,583 B2)
`PGR2018-00047 (Patent 9,770,659 B2)
`
`Tokyo District Court involving the Japanese counterpart to the patent at
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`issue in this case. Motion ¶¶ 4, 5; Ex. 1007 ¶¶ 4, 11, 12.3 Accordingly,
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`Petitioner has established good cause for the admission of Mr. Sacksteder
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`pro hac vice. Mr. Sacksteder will be permitted to serve as back-up counsel
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`only. See 37 C.F.R. § 42.10(c).
`
`
`
`
`
`
`
`Accordingly, it is hereby:
`
`ORDERED that Petitioner’s Motion to admit Mr. Michael J.
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`Sacksteder pro hac vice is granted; and Mr. Sacksteder is authorized to
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`represent Petitioner as back-up counsel in this proceeding;
`
`
`
`FURTHER ORDERED that Petitioner continue to have a registered
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`practitioner serve as lead counsel in this proceeding;
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`
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`FURTHER ORDERED that Mr. Sacksteder 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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`
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`FURTHER ORDERED that Mr. Sacksteder is subject to the Office’s
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`disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and to the USPTO
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`Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq.
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`
`
`
`
`3 The Declaration states that Mr. Sacksteder has “read and will comply with
`the Office Patent Trial Practice Guide and the Board’s Rules of Practice for
`Trials set forth in part 42 of the Code of Federal Regulations.” Ex. 1007 ¶ 8
`(emphasis added). We note that the Board’s Rules of Practice for Trials are
`set forth in Part 42 of 37 C.F.R.
`
` 3
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`
`
`
`
`PGR2018-00029 (Patent 9,636,583 B2)
`PGR2018-00047 (Patent 9,770,659 B2)
`
`
`For PETITIONER:
`
`Jennifer Bush
`Michael J. Sacksteder
`FENWICK & WEST LLP
`jbush-ptab@fenwick.com
`msacksteder@fenwick.com
`
`
`For PATENT OWNER:
`
`John Alemanni
`Andrew Rinehart
`Scot Kolassa
`KILPATRIC TOWNSEND & STOCKTON LLP
`jalemanni@kilpatricktownsend.com
`arinehart@kilpatricktownsend.com
`skolassa@kilpatricktownsend.com
`
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` 4
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`