SAP America, Inc. v. Versata Development Group, Inc.


Paper 21, November 6, 2012

CBM2012-00001(MPT) (Patent 6,553,350)

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FACTS

Patent Owner Versata requested pro hac vice admission in the CBM review of its lead counsel in the infringement suit.

HOLDING

Request for pro hac vice admission denied. In authorizing motions for pro hac vice, the Board required the parties to provide 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 showing of good cause, Versata claims that the counsel is a Texas Bar member in good standing, that he is familiar with the matter and hand and represented Versata as a lead counsel in its patent suit against SAP for the infringement of patent at issue in these CBM proceedings. ┬áIn its opposition to Versata’s request for pro hac vice admission, SAP point to the fact that Versata was sanctioned in the infringement proceeding for violating the protective order. The Board found that because of this violation and because Versata failed to disclose the violation in its petition, it did not meet the burden of showing of good cause for pro hac vice admission.

TAKEAWAY

A party requesting pro hac vice admission has the burden of showing good cause for such an admission. The Board may deny the request if the party was sanctioned in the underlying infringement action where it was represented by the counsel for who the admission is sought.

 

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