Pro Hac Vice Guidelines Now Well-Established in Inter Partes Review Proceedings

Now that the first over 130 inter partes review petitions have been filed, significant guidance has been provided regarding pro hac vice practice. While at the outset, there was some worry that the “patent guild” would dominate these proceedings, the Board’s rulings have made clear that properly drafted motions seeking admission pro hac vice will be granted for a limited number of back-up counsel.

The typical timeline for obtaining admission pro hac vice first requires a conference call to the Board requesting authorization to file such a motion pursuant to 37 CFR §42.10(c). The Board’s Order authorizing such motion has become fairly standard (see, e.g., HERE). In general, though, the Board requires a statement of facts showing there is good cause to recognize counsel pro hac vice and an affidavit or declaration from the individual seeking to appear must accompany the filing. That affidavit/declaration must further contain specific information, including that they are a member of good standing in at least one state, etc.

So long as these requirements are met, the Board has been lenient and accommodating in its grants of these motions. Where the requirements are not met, however, less leniency is shown. An example of a very detailed motion, that was granted by the Board, can be found HERE, and the accompanying declaration HERE.

As an example of a party failing to follow the guidelines of the Board, a set of attorneys seeking admission pro hac vice in the case styled as Monsanto Co. v. Pioneer Hi-Bred Int’l (IPR2013-00022) neglected to present their affidavit testimony under oath and, as such, the testimony was inadmissible. Those attorneys were given 6 days, however, to provide compliant testimony.

The Board has not set forth any concrete limitations on the number of backup counsel who may be admitted pro hac vice. For example, in the Illumina v. Columbia Univ. case, IPR2012-00006, Patent Owner was granted three backup counsel via motions pro hac vice. In the case of Apotex Inc. v. Alcon Pharma., Ltd., IPR2013-00012, Patent Owner sought to file five motions seeking admission pro hac vice, but the Board ruled that only two such motions would be allowed. The Board appears to be taking this issue, therefore, on a case by case basis.

In the end, the Board is allowing some leniency in the number of backup counsel allowed, and is certainly not restricting the proceedings only to those members of the patent guild. Parties are merely cautioned to follow the requirements for such admission closely to ensure counsel is admitted to the proceeding.

Reexamination versus Inter Partes Review – Pro Hac Vice Order Points Out Key Difference

A seemingly innocuous motion for admission pro hac vice turned into a battleground recently that ultimately turned on the differences between inter partes review and reexamination proceedings.  The issues arose in the IPR styled as Avaya Inv. V. Network-1 Security Solutions, Inc. (IPR2013-00071), involving US Patent No. 6,218,930.

The underlying motion for admission pro hac vice, filed by Patent Owner, was standard on its face, if not more detailed than the standard motion of this type.  In general, the attorney that was subject of the motion was Patent Owner’s lead litigation counsel, had significant experience with both the technology at issue and litigation in general.

Patent Challenger opposed the motion on the grounds that the counsel-at-issue was prohibited from participating in the inter partes review in light of two protective orders that were entered in related district court litigation. Specifically, one of those protective orders stated that outside counsel who obtained confidential information “may not act as counsel of record in any reexamination proceeding…”  Arguing that inter partes review was used broadly in that order to encompass all forms of Patent Office proceedings, Patent Challenger sought to keep litigation counsel out of the IPR proceeding.

The Board disagreed with Patent Challenger’s argument, focusing on the differences between inter partes review and reexamination proceedings. For example, the Board pointed out that IPR is an administrative trial that is considered a “contested case” per Patent Office rules.  Order at 5.  Reexaminations, on the other hand, are merely another examination of the claims and are conducted pursuant to the same standards used in initial examination.  Id.  As such, the Board concluded, on the face of the protective order, the prohibition against counsel serving as reexamination counsel does not apply to IPR.

The Board further pointed out that there had been no showing by Patent Challenger that litigation counsel for Patent Owner had violated the protective order, and any suggestion that the order might later be violated is pure speculation.  Additionally, the Board distinguished a Covered Business Method case, in which a risk of trial counsel also acting as post-grant counsel served as the basis to deny a motion seeking admission pro hac vice.  In that case, the district court had found a pattern of protective order violations in the underlying litigation.  There being no such finding by the district court related to the parties to this IPR, the Board’s earlier decision in this regard was distinguishable.

Lastly, on the issue of the overall fitness of litigation counsel to appear in this IPR proceeding, Patent Challenger argued that, since certain prior art and validity issues that are at issue in the inter partes review were not presented in the district court cases handled by litigation counsel, he did not have established familiarity with the subject matter at issue.  The Board did not accept this argument, finding that his litigation experience with this patent and its subject matter were sufficient to meet this threshold of pro hac vice admission.

In the end, this is another example of the Board’s leniency toward allowing non-patent practitioners to participate in inter partes review.  We also gain some insight into the Board’s view of the distinction between inter partes review and inter partes reexamination.

Multiple Back-Up Counsel Allowed in Inter Partes Review

Despite the wording of 37 CFR § 42.10, as well as the accompanying comments thereto, that seem to limit parties to a single back-up counsel, the PTAB has recently granted concurrent pro hac vice motions that allow a patent owner to have two back-up counsel participate in a single Inter Partes Review proceeding.  It remains to be seen whether the PTAB will or will not place a restriction on the number of back-up counsel that are able to participate in an IPR.

[pullquote align=”left|center|right” textalign=”left|center|right” width=”30%”]37 CFR § 42.10(a) – “If a party is represented by counsel, the party must designate a lead counsel and a back-up counsel who can conduct business on behalf of the lead counsel.”[/pullquote]

More specifically, the express wording of § 42.10 seems to suggest that only a single lead counsel and single back-up counsel is allowed in any Inter Partes Review proceeding.  Further, the comments accompanying the rule only reinforce this limitation.  To that end, one of the comments to the proposed Trial Practice Rules contained a proposal for multiple back-up counsel.  In response, the Patent Office stated only one lead and one back-up counsel would be required in any proceeding:

The comment suggesting multiple back-up counsel is not adopted.  Based on the experience of the Office in contested cases, designating one lead counsel and one back-up counsel by each party should result in more efficient and effective case management.  “Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial review of Patent Trial and Appeal Board Decisions; Final Rule,”  77 Federal Register 157 (14 August 2012), p. 48630.

The imposition of such a limitation could be, in some circumstances, unduly burdensome to parties in an Inter Partes Review proceeding.  Given the schedules of busy attorneys, as well as the potential in Inter Partes Review and Post Grant Review proceedings of multiple depositions within an abbreviated 3 month discovery period, having the ability to designate more than one back-up counsel could be advantageous and reasonable.

Despite the limitation in § 42.10 and the accompanying comments to a single back-up counsel, however, the PTAB recently granted two motions for pro hac vice admission in the ongoing IPR styled as Nissan N. Am., Inc. v. Carl B. Collins and Farzin Davanloo (IPR2012-00035). In that case, therefore, the PTAB tacitly over-ruled § 42.10 by allowing two separate back-up counsel.  The Board’s Order speaks of the patent challenger having “shown good cause why [counsel] should be recognized pro hac vice for purposes of this proceeding,” but the Order does not discuss whether good cause was shown to admit two separate back-up counsel.  Indeed, the issue was avoided entirely by virtue of the fact that the grant of the motions for pro hac vice admission were made in two separate Orders.

It is also interesting to view this order in light of a Notice of Defective Petition entered in Midland Radio Corp. v. Anthony Mirabelli (IPR2013-00021) wherein the PTAB stated that the Midland Radio Petition was defective because it listed as back-up counsel “all counsel” associated with a particular PTO customer number.  The PTAB instructed that “Per 37 CFR § 42.10(a), ‘the party must designate . . . a back-up counsel who can conduct business on behalf of the lead counsel.’” (emphasis in original).  Thus, to receive a filing date for its petition, Midland Radio filed an amended petition that listed only a single back-up counsel.

In the end, time will tell whether two or more back-up counsel will be allowed on regular basis, or whether the Board will continue with its early practice in other contexts of sticking to the letter of the Trial Practice Rules.

Pro Hac Vice Motions in Inter Partes Review Are Commonplace, Non-Controversial

iStock_000009156726XSmallAs previously discussed, only time will tell whether or not the worst case scenario arises and Inter Partes Review and Post Grant Review Practice become part of the “patent guild” – excluding non-practitioners in all but the rarest of cases.  To date, however, the PTAB has not shown any reluctance to consider motions for admittance pro hac vice.  And now, the Board has granted its first Motion for Pro Hac Vice Admission in IPR2013-00020 LKQ Corp. v. Clearlamp, LLC (Harness Dickey Represents Clearlamp in this IPR).

The basis for the Board’s ruling was that good cause was indeed shown since the petitioning attorney: (1) is an experienced litigation attorney, (2) is counsel in litigation related to the IPR, (3) has represented LKQ in the past, and (4) has counseled LKQ on intellectual property matters in the past.  Because the petitioning attorney attested to each of these facts, the Board found good cause existed for the admission of the petitioning attorney.  More specifically, the Board found that there is a need for LKQ to have its related litigation counsel involved in the IPR proceeding.  Order at 2.  Notably, even though the motion was not contested, the PTAB did not seemingly place any weight on that fact at all in coming to its decision.

All is not lost, however, for those worried about the “patent guild,” the PTAB did require that LKQ must continue to have a registered practitioner as its lead counsel in the inter partes review.

Inter Partes Reviews Drawing Many Pro Hac Vice Motions

There has been some concern that the “patent lawyer guild” has run amok in light of the requirement that lead counsel in Inter Partes Review and Post Grant Review be patent practitioners (i.e., registered patent attorneys).  It will be interesting to watch, therefore, how stringent the PTAB will be with regard motions to appear pro hac vice – an option for non-practitioners to appear in IPR/PGR proceedings as backup counsel, per 37 CFR 42.10(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.”

[pullquote align=”left|center|right” textalign=”left|center|right” width=”30%”]”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.” — 37 CFR 42.10(c)[/pullquote]

Thus far, the Board seems receptive to allowing non-practitioners to participate in inter partes review proceedings, though, to date, the Board has only authorized the filing of a motion pro hac vice, but has not actually granted any such motions.  For example, in a recent order from the PTAB in IPR2013-00010 (Motorola Mobility LLC v. Arnouse), authorization was granted for Motorola to file a motion for pro hac vice admission.  This authorization offers insight into the Board’s thought process both from the perspective of the timing of briefing relating to the motion, as well as the content of such a motion.

First, with regard to timing, the Board instructed that such a motion seeking admission pro hac vice should not be filed any sooner than 21 days after the service of the petition (when patent owner mandatory notices are due).  Order at 2.  Any opposition is due within one week of the filing of the underlying motion.  Order at 3.  But, no opposition can be filed without authorization of the Board.  Id.  As such, this is another reminder that parties must have authorization to make most filings in inter partes review proceedings.

Second, with regard to content of a motion seeking admission pro hac vice, the board instructed that the motion must contain facts showing there is good cause to recognize counsel.  Order at 3.  Also, the motion must contain a declaration of the individual seeking to be admitted that includes requirements similar to requests for admission to appear pro hac vice that have been a mainstay in district court litigation (member of good standing in at least one bar, no suspensions or disbarments, etc.).

Time will tell whether the inter partes review and post grant review procedures become a largely patent bar-centric practice or whether non-practitioners will be freely allowed to participate.  At the outset, the Board seems more than willing to consider the latter course.