Takeaway: In order to establish the requisite familiarity with the subject matter of a proceeding in a motion for admission pro hac vice, one must provide specific information such as having read the patent or the petition, being familiar with the prosecution history of the patent, having a technological background or particular experience related to the technology covered by the patent, or having played a substantive role in any co-pending litigation.
In its Order, the Board denied without prejudice Patent Owner’s Unopposed Motion for Admission of Attorney Stephen E. Roth Pro Hac Vice. The Board began by stating that it may recognize counsel pro hac vice during a proceeding upon a showing of good cause provided that the lead counsel is a registered practitioner. The non-registered practitioner may appear pro hac vice “upon a showing that counsel is an experienced litigating attorney and has established familiarity with the subject matter at issue in the proceeding.” 37 C.F.R. § 42.10(c).
Pursuant to that rule, Attorney Roth provided a declaration stating that he is a member of good standing of the Tennessee State Bar who has never been subject to any discipline or has never been denied any application for admission to practice before any court or administrative body, is familiar with and will comply with the Board’s Rules in this proceeding, and has familiarity with the subject matter at issue in this proceeding. Lead counsel also stated that Attorney Roth directs all activities with regard to the ’211 Patent and through that has established familiarity with the subject matter at issue in this proceeding.
The Board stated that neither lead counsel’s statements nor Attorney Roth’s declaration sufficiently addresses the scope of Attorney Roth’s familiarity with the subject matter at issue in this proceeding – the patentability of claims under 35 U.S.C. § 101. Specifically, the Board noted that neither the Motion nor Attorney Roth’s declaration represents that Attorney Roth has read the ’211 Patent or the Petition, that he is familiar with the prosecution history of the ’211 Patent, that he has any technical background or particular experience related to the technology covered by the ’211 Patent, or that he has played any substantive role in the co-pending litigation.
The Jewelry Channel, Inc. USA d/b/a Liquidation Channel v. America’s Collectibles Network, Inc., CBM2014-00119
Paper 7: Order Denying Without Prejudice Motion for Admission of Stephen E. Roth Pro Hac Vice
Dated: May 23, 2014
Before: Linda M. Gaudette, Brian J. McNamara, and David C. McKone
Written by: McNamara