In QSC Audio Products, Inc. v. Crest Audio, Inc., the PTAB denied the Petitioner’s unopposed motion for pro hac vice admission because the affidavit in support of the motion failed to meet certain requirements. IPR2014-00127, Paper 32 (December 23, 2014).
37 C.F.R. § 42.10(c) provides that where lead counsel in a PTAB trial proceeding is a registered PTO practitioner, a motion to appear pro hac vice by counsel who is not a registered practitioner may be granted upon a showing that such counsel “is an experienced litigating attorney and has an established familiarity with the subject matter at issue in the proceeding.” Conveniently, the PTAB outlined a template listing the requirements for pro hac vice submissions in Unified Patents v. Parallel Iron, IPR2013-00639, Paper 7 (Oct. 15, 2013). Included in the Unified Patents template is a list of eight items that must be included in the affidavit of the individual seeking to appear pro hac vice.
In denying the pro hac vice motion in QSC, the Board found that the accompanying affidavit of the individual seeking pro hac vice admission failed to show two of the items required by the Unified Patents template, namely “[f]amiliarity with the subject matter at issue in the proceeding” and “[a]ll other proceedings before the Office for which the individual has applied to appear pro hac vice in the last three (3) years.”
A review of the affidavit in question reveals no description of the practitioner’s familiarity with the subject matter, although the motion itself asserted that the attorney was the “lead trial lawyer” in the underlying district court case and that the attorney was familiar with the overlapping fact and legal issues between the district court case and the IPR. The affidavit in question also contained no discussion of whether the attorney had applied to appear pro hac vice in any other PTAB proceedings in the previous three years.
A few takeaways from this decision are that:
- the PTAB expects pro hac vice motions and accompanying affidavits to strictly conform to the Unified Patents template, and
- a pro hac vice submission requires more than a naked assertion in the motion that a practitioner is familiar with the facts and legal issues in the IPR.