Archive for the ‘pro hac vice admission’ Category

AIA Patent Trials Differ from Reexamination

Saturday, April 20th, 2013

In the past few months, I have had discussions with many different stakeholders about how AIA post-grant review differs from conventional reexamination.  AIA patent trials (post-grant review or PGR, inter partes review or IPR, and covered business method patent review or CBM) are substantially different than traditional reexamination.  Some of these differences are summarized in the table below (click on the table to enlarge it):

Other than legacy inter partes reexaminations, the Central Reexamination Unit (CRU) is currently only charged with processing ex parte reexaminations.  What remains to be seen is how ex parte reexamination will change as the CRU processes the legacy reexaminations and its docket frees up.

Patent Trial and Appeal Board (PTAB) Guidance on Pro Hac Vice Admissions

Monday, November 19th, 2012

The PTAB (“Board”) has already decided some motions for pro hac vice admission in various PTAB case proceedings.  A recent decision in case IPR2012-00035 referenced an earlier decision on motion for pro hac vice admission in case IPR2013-00010.  The relevant part of that decision entered October 15, 2012 (Paper 6) states the rules for pro hac vice admission:

Section 42.10(c) of the Code of Federal Regulations (C.F.R.) provides that:

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 and to any other conditions as the Board may impose. For example, where the lead counsel is a registered practitioner, a motion to appear pro hac vice by counsel who is not a registered practitioner may be granted upon showing that counsel is an experienced litigating attorney and has an established familiarity with the subject matter at issue in the proceeding.

The Board authorizes both parties to file motions for pro hac vice admission under 37 C.F.R. § 42.10(c) as follows:

1. Time for Filing

The time for filing pro hac vice motions is no sooner than twenty one (21) days after service of the petition, which is the time for filing patent owner mandatory notices. Parties seeking to oppose a motion for pro hac vice admission must file their opposition no later than one week after the filing of the underlying motion. No reply to any opposition shall be filed unless authorized by the Board.

2. Content of Motion

A motion for pro hac vice admission must:

a. Contain a statement of facts showing there is good cause for the Board to recognize counsel pro hac vice during the proceeding.

b. Be accompanied by an affidavit or declaration of the individual seeking to appear attesting to the following:

i. Membership in good standing of the Bar of at least one State or the District of Columbia;

ii. No suspensions or disbarments from practice before any court or administrative body;

iii. No application for admission to practice before any court or administrative body ever denied;

iv. No sanctions or contempt citations imposed by any court or administrative body;

v. The individual seeking to appear 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 C.F.R.;

vi. The individual will be subject to the USPTO Code of Professional Responsibility set forth in 37 C.F.R. §§ 10.20 et seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a);

vii. All other proceedings before the Office for which the individual has applied to appear pro hac vice in the last three (3) years; and

viii. Familiarity with the subject matter at issue in the proceeding.

c. Where the affiant or declarant is unable to provide any of the information requested above in part 2(b) or make any of the required statements or representations under oath, the individual should provide a full explanation of the circumstances as part of the affidavit or declaration.

Pro Hac Vice Admission Denied in SAP v. Versata CBM Patent Review

Friday, November 9th, 2012

My prior post described the pro hac vice admission dispute between SAP and Versata Development Group in PTAB matter CBM2012-00001.  The PTAB wasted no time and issued an order denying the motion for pro hac vice admission of Versata’s litigation trial counsel on November 6, 2012.  The PTAB essentially found that Versata failed to demonstrate “good cause” for why its litigation counsel should be admitted pro hac vice in the PTAB proceeding.

Versata, as the party moving for pro hac vice admission, bears the burden of showing there is good cause for the Board to recognize counsel pro hac vice during the proceeding. Based upon the facts presented, the Board concludes that Versata has failed to meet its burden.

It is:

Ordered that Versata’s motion for pro hac vice admission of Mr. Scott L. Cole is denied.

The Board also referenced documents from the earlier litigation that indicated some sort of noted violations of a protective order in that litigation, and noted that Versata did not identify or explain the noted violations in its motion for admission:

Versata’s motion for pro hac vice admission of Mr. Cole and Mr. Cole’s declaration in support thereof are premised in part on Mr. Cole’s position as lead counsel in the related Versata v. SAP litigation. Versata’s motion and Mr. Cole’s declaration do not address or mention the district court’s finding of a pattern of protective order violations in the related litigation for which Mr. Cole was lead counsel.

As of this posting, no other entries were found in the record after this order, so this might be the final word on this dispute.