Unified Patents v. Parallel Iron (IPR2013-00639, Paper 7): Requirements for Pro Hac Vice Admission

Many AIA trials run alongside district court litigation, and parties often want their litigation counsel to take part. Because those lawyers are frequently not registered to practice before the USPTO, they need the Board’s permission to appear. Unified Patents, Inc. v. Parallel Iron, LLC, IPR2013-00639, Paper 7 (entered October 15, 2013), is the order an expanded panel issued to set out how such motions should be made.

Background

When the proceeding was accorded a filing date, the Board’s notice authorized the parties to move for pro hac vice admission following an earlier model order from IPR2013-00010, issued in October 2012. That model order referred to the USPTO’s old disciplinary rules in Part 10 of 37 C.F.R. Those rules were removed when the USPTO Rules of Professional Conduct took effect on May 3, 2013. The panel therefore issued an updated order, which it said superseded the earlier one.

What the Board decided

The order quoted 37 C.F.R. § 42.10(c): the Board may recognize counsel pro hac vice on a showing of good cause, on condition that lead counsel is a registered practitioner, and subject to other conditions it may impose. As an example, the rule says a motion may be granted where lead counsel is registered and the non-registered attorney is an experienced litigator with established familiarity with the subject matter.

The order then set out the procedure.

Timing. Motions could be filed no sooner than twenty-one days after service of the petition, the time for the patent owner’s mandatory notices. Oppositions were due within one week, and no reply was allowed without authorization.

Content. The motion had to state facts showing good cause and be supported by a declaration or affidavit from the attorney attesting to:

• membership in good standing of the bar of at least one state or the District of Columbia;
• no suspension or disbarment by any court or administrative body;
• no denied application for admission to practice;
• no sanctions or contempt citations;
• having read, and agreeing to comply with, the Trial Practice Guide and the Part 42 rules;
• being subject to the USPTO Rules of Professional Conduct and the Office’s disciplinary jurisdiction;
• all other Office proceedings in which the attorney applied to appear pro hac vice in the past three years; and
• familiarity with the subject matter of the proceeding.

An attorney who could not make any of these statements was to give a full explanation in the declaration.

Why it matters

Pro hac vice admission is the route by which non-registered litigators can participate in an inter partes review or other Board trial, but only as back-up counsel; lead counsel must be a registered practitioner. The declaration requirements tie admitted attorneys to the Board’s rules and to the USPTO’s disciplinary authority, which matters because the Board can sanction misconduct and can revoke pro hac vice status. See what we know about sanctions at the PTAB and the overview of the Patent Trial and Appeal Board.

The specific procedure in this order has been revised since 2013, and the Board now addresses pro hac vice motions through its current guidance and notices. Readers should check § 42.10 and current Board guidance rather than relying on the 2013 timing and checklist.

Key takeaways

• Under § 42.10(c), the Board may admit non-registered counsel pro hac vice for good cause, but lead counsel must be registered.
• The order updated the Board’s model procedure after the USPTO Rules of Professional Conduct took effect in May 2013.
• A supporting declaration had to address bar standing, discipline history, prior pro hac vice applications and familiarity with the subject matter.
• Admitted counsel agree to follow the Part 42 rules and are subject to USPTO disciplinary jurisdiction.