The new trial proceedings before the Patent Trial and Appeal Board (“the Board”) permit the Board in its discretion to “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 C.F.R. § 42.10(c). While the terminology “showing of good cause” and “subject to … any other conditions as the Board may impose” might appear nebulous in an isolated reading of Rule 42.10(c), implementation of the Rule in actual cases is giving some shape to this terminology.
Prior to implementation, the U.S. Patent and Trademark Office (“the Office”) discussed Rule 42.10(c) in the “Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions” (77 Fed. Reg. 48612‐48678 (14 Aug. 2012)), and in the “Office Patent Trial Practice Guide” (77 Fed. Reg. 48756‐48773 (14 Aug. 2012)). Both documents specify that “the grant of a motion [for a nonregistered practitioner] to appear pro hac vice is a discretionary action taking into account the specifics of the proceedings.” 77 Fed. Reg. at 48618. Further, in response to the public comments provided when Rule 42.10 was proposed, the Office indicated that “a motion to appear pro hac vice by counsel who is not a registered practitioner will be granted in limited circumstances, e.g., where a practitioner is an experienced litigator who is familiar with the subject matter involved in the proceeding.” 77 Fed. Reg. at 48629.
Now that actual cases are before the Board, we are beginning to see how the Board implements Rule 42.10(c). For example, the Board issued an Order authorizing a motion for pro hac vice admission in case IPR2013‐00010 (MPT), which enumerated the Board’s requirements for parties in filing such a motion. The Board has referenced these requirements in several trial proceedings to date, and placed a copy of the Order on the Board’s website (available here). As set forth in IPR2013‐00010 (MPT), the content of a motion must: (1) contain “a statement of facts showing there is good cause for the Board to recognize counsel pro hac vice during the proceeding,” and (2) be accompanied by an affidavit or declaration of the person seeking to appear pro hac vice attesting to:
- membership in good standing of the Bar of at least one State/D.C.,
- no suspensions or disbarments from practice,
- no denial of an application for admission to practice,
- no sanctions or contempt citations,
- that the person has read and will comply with the Office Patent Trial Practice Guide and the Board’s Rules of Practice for Trials set forth in Rule 42,
- that the person will be subject to the Office’s Code of Professional Responsibility and disciplinary jurisdiction,
- identification of all other proceedings before the Office for which the person has applied to appear pro hac vice in the last three years, and
- familiarity with the subject matter at issue in the proceeding.
The Board has identified on its website two exemplary cases applying these requirements (available here)—one granting and one denying the underlying pro hac vice motion. In the exemplary granted motion (CBM2013‐00005 (JYC)), the Board addressed Rule 42.10(c) and the required statement of facts to conclude that there was good cause to admit the individual pro hac vice as back‐up counsel in the proceeding.
In the exemplary denied motion (CBM2012‐00001 (MPT)), however, the Board acknowledged a dispute between the parties over a pro hac vice motion for admission of the patent owner’s litigation counsel, and requested additional information from the parties before rendering a decision. The additional information provided to the Board included a district court’s opinion and order in a related litigation involving the same patent. It identified a breach by the patent owner of the “plain language of the Protective Order [in place in the district court litigation] through a pattern of violations involving several members of its litigation team and discovery vendor.” CBM2012‐00001 (MPT), Paper No. 21 at p. 4. In considering this information, the Board noted that the pro hac vice motion and accompanying declaration by patent owner’s litigation counsel did “not address or mention the district court’s finding of a pattern of protective order violations in the related litigation for which [patent owner’s litigation counsel] was lead counsel.” Id. The Board also noted that the party moving for pro hac vice admission “bears the burden of showing there is good cause for the Board to recognize counsel pro hac vice during the proceeding,” and decided that the patent owner “failed to meet its burden.” Id. at pp. 4‐5.
Beyond these examples, the Board distinguished CBM2012‐00001 (MPT) in granting a pro hac vice motion over petitioners’ objections in IPR2013‐00092. In IPR2013‐00092, a portion of petitioners’ opposition motion noted that the Board “has also recently recognized the risks of lead trial counsel serving as counsel of record in post‐grant proceedings,” citing the Board’s decision denying the pro hac vice motion in CBM2012‐00001 (MPT) in support of its position. IPR2013‐00092, Paper No. 16, p. 6. The Board indicated, however, that the cited decision “does not support Petitioners’ position.” IPR2013‐00092, Paper No. 18, p. 6. Specifically, the Board noted the pattern of protective order violations discussed in its decision in CBM2012‐00001 (MPT), but pointed out that “[n]o such finding by the district court exists here.” Id. at p. 6. The Board decided that the patent owner in IPR2013‐00092 met its burden to show good cause, and proceeded to grant the pro hac vice motion. See id. at pp. 7‐8.
Thus, as we can observe from some of the new trial proceedings to date, the Board is exercising its discretion in granting pro hac vice motions, and is taking into account the specifics of the proceedings in determining whether or not good cause exists to grant such motions. It remains to be seen, however, just how limited the “limited circumstances” will be in which the Board will grant pro hac vice motions—especially if most motions involve nonregistered practitioners who are experienced litigators familiar with the subject matter involved in the proceeding. See 77 Fed. Reg. at 48629. Nevertheless, whether counsel is a registered practitioner or is recognized pro hac vice in any of these new trial proceedings, 37 C.F.R. § 42.11 reminds us that “[p]arties and individuals involved in the proceeding have a duty of candor and good faith to the Office during the course of a proceeding.”