Takeaway: Non-registered counsel seeking pro hac vice admission should provide specific facts showing that the counsel has experience litigating patent cases and has familiarity with the specific subject matter at issue in this proceeding.
In its Order, the Board denied a Motion for Pro Hac Vice Admission of Scott M. Plamondon without prejudice to allow for filing a revised motion. The Board found the Motion was too vague on Mr. Plamondon’s experience litigating and familiarity with the subject matter at issue in this proceeding. Petitioner did not file an opposition.
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. See 37 C.F.R. § 42.10(c). For example, a non-registered practitioner may be permitted to appear pro hac vice “upon showing that counsel is an experienced litigating attorney and has an established familiarity with the subject matter at issue in the proceeding.” 37 C.F.R. § 42.10(c). Such a motion also requires a statement of facts showing good cause and an affidavit or declaration of the individual seeking to appear.
Patent Owner asserted that Mr. Plamondon has litigated cases for over 13 years, and has litigated patent and other intellectual property cases. Patent Owner also asserted that Mr. Plamondon has familiarity with the subject matter at issue in this proceeding based on previously representing other clients in the area of water treatment and water testing. The Board found that Patent Owner was too vague about Mr. Plamondon’s experience litigating patent cases, and that Patent Owner did not include any information from which the Board could reasonably conclude that he had personally reviewed the patent-at-issue, the Petition, or its accompanying exhibits.
Lenroc Co. v. Enviro Tech Chemical Services, Inc., IPR2014-00382
Paper 84: Order Denying Motion for Pro Hac Vice Admission of Counsel
Dated: May 8, 2014
Before: Linda M. Gaudette, Grace Karaffa Obermann, and Kristina M. Kalan
Written by: Obermann