Scott Daniels | November 14, 2012
Because the new post-grant proceedings resemble infringement litigation in a number of ways, the PTO Rules provide for the pro hac vice admission of lawyers not licensed to practice before the Patent Office, i.e., litigators. 37 C.F.R § 42.10(c). Such admission to the “Patent Office Bar,” however, is by no means automatic, as was demonstrated last week by an order in SAP America v. Versata Development Group, CBM2012-00001.
There, the Patent Owner moved for pro hac vice admission of the lawyer who was its lead counsel in a parallel infringement action. The Patent Owner made the assertions normally sufficient to secure such admission in District Court cases: working on the instant case, bar admissions and absence of a criminal record. The Petitioner opposed the admission, stating that the participation of the Patent Owner’s litigation counsel at the PTO could effectively circumvent the restrictions of the underlying District Court’s protective order in the parallel infringement action. The Petitioner also noted findings by the District Court judge that there had already been violations of the protective order. The District Court judge’s comments were quoted by the APJ’s
Pending before the Court is Defendant’s motion to strike [the Patent Owner’s] equitable claims as sanction for [the Patent Owner’s] violation of the March 6, 2008 Protective Order and February 26, 2008 Order. (Dkt. No. 144.) The Court held an evidentiary hearing on this issue on May 14, 2009, The Court finds that [the Patent Owner] breached the plain language of the Protective Order through a pattern of violations involving several members of its litigation team and discovery vendor. Given [the Patent Owner’s] violation of the Court’s order, it is fair to stay the injunction the Court has issued in this case. As a result, the Court exercises its equitable discretion in a manner adverse to [the Patent Owner] and stays the injunction pending the disposition of any appeal.
(Emphasis added by APJs).
The APJs were clearly concerned that the admission of the Patent Owner’s litigation counsel could compromise the PTO proceeding. Notably, the APJs looked to the Patent Owner, who, “as 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 … .” However, the “Patent Owner’s motion and the declaration of its litigation counsel do not address or mention the district court’s finding of a pattern of protective order violations in the related litigation … .” Pro hac vice admission was therefore denied.
What do we learn from the APJs’ ruling? Nothing will be automatic in these proceedings. The parties must recognize who bears the burden of proof and act accordingly. And finally, the APJs will act aggressively to ensure that the proceedings work smoothly.