The United States Patent and Trademark Office’s new post-grant proceedings, including Inter Partes Review, are akin to litigation proceedings in several respects. As a result, the PTO Rules provide for the pro hac vice admission of litigation lawyers not licensed to practice before the Patent Office. However, practitioners should be aware that the grant of admission is not automatic and the application represents more than a mere formality.
Pursuant to 37 C.F.R. 42.10(c):
(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 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 a showing that counsel is an experienced litigating attorney and has an established familiarity with the subject matter at issue in the proceeding.
While the rules do not provide specific requirements for grant of pro hac vice admission, decisions of the Board have provided applicable guidance. In particular, the order issued in IPR2013-00010, sets forth the criteria for grant of a pro hac vice motion. See Motorola Mobility, LLC v. Michael Arnouse, IPR2013-00010, notice 8, internally identified as paper 6 (PTAB 10/15/2012). The order authorizes the filing of motions for pro hac vice admission under the following conditions:
With respect to the timing of motion, the order sets forth the following criteria:
- The motion must be filed only after 21 days after the service of the petition;
- Oppositions to such motions be filed within one week of motion’s filing; and
- Reply motions are not authorized.
As to the content of motion, the following criteria apply:
- The motion must contain “a statement of facts showing there is good cause for the Board to recognize counsel pro hac vice during the proceeding”; and
- The motion must be accompanied by an affidavit or declaration of the individual seeking to appear attesting to:
- Membership in good standing to the Bar of at least one State of the District of Columbia;
- No suspensions or disbarments from practice before any court or administrative body;
- No application for admission to practice before any court or administrative body ever denied;
- No sanctions of contempt citations imposed by any court or administrative body;
- 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.;
- The individual will be subject to the USPTO Code of Professional Responsibility;
- All other proceedings before the Office for which the individual has applied to appear pro hac vice in the last three (3) years; and
- Familiarity with the subject matter at issue in the proceeding.
If the affiant or declarant is unable to provide any of the requested information or representations under oath then a full explanation should be provided as part of the affidavit or declaration. In showing good standing, the declaration should include any findings of misconduct in related litigations. See e.g., SAP America, Inc. et al. v. Versata Development Group, Inc., CBM2012-00001, notice 21 (PTAB 11/06/2012).
In SAP America, patent owner Versata moved for pro hac vice admission of its counsel who was lead counsel in a parallel infringement action. Versata made the standard assertions that attorneys make to gain admission in District Court cases, such as familiarity with the instant case, bar admissions, and the lack of a criminal record. The petitioner SAP opposed the admission, arguing that the participation of the patent owner’s litigation counsel in the PTO proceeding could effectively circumvent the restrictions of the District Court’s protective order in the parallel infringement action. SAP also pointed out that the District Court judge had found that there had already been violations of the protective order. The administrative patent judge (APJ) held that 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 … .” The APJ noted that Versata failed to satisfy its burden because the motion and accompanying declaration did not address the protective order violations in the related litigation (in which the applying attorney served as lead counsel). Accordingly, the application for pro hac vice admission was denied.
The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Ali Shalchi at 949.623.7247 or AShalchi@jmbm.com.