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.