Rules : US PTO Litigation Alert™

APJs Deny Pro Hac Vice Admission of Litigation Attorney to PTO Bar

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


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Page Limits – the APJs Send a Message to the Bar

Scott Daniels | November 13, 2012

Page limits, yes, page limits.  A petition seeking to initiate an inter partes review of a patent is limited by the PTO Rules to 60 pages.  Rule 42.24(a)(1)(i).  Waiver of the rule is possible (Rule 42.24(a)(2)), but only after a showing that such a waiver would be in the interests of justice.

But the grant of a waiver, permitting a party to exceed the 60-page limit on petitions, is not automatic, as the parties discovered last Friday in Illumina v. Columbia University, IPR2012.  There, the Petitioner requested waiver, stating essentially that it needed an extra 24 pages because there were so many reasons that the claims were invalid


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