In a proceeding before the Patent Trial and Appeal Board (“PTAB”), a party may be represented by counsel. If so, then the party must designate a lead counsel and at least one back-up counsel who can conduct business on behalf of the lead counsel. 37 C.F.R. § 42.10(a). Lead counsel must be a registered patent attorney. 37 C.F.R. § 42.10(c). Back-up counsel, however, need not be a registered patent attorney, but that attorney must file a motion to appear pro hac vice (that is, to appear as counsel for this one case only) upon a showing of good cause, subject to the condition that lead counsel be a registered practitioner. Good cause would include being an experienced litigating attorney with an established familiarity with the subject matter at issue in the proceeding before the PTAB.

The content for a motion for pro hac vice admission is set forth in Unified Patents, Inc. v. Parallel Iron, LLC, IPR2013-00639, Paper 7 (PTAB Oct. 15, 2013), which includes attesting that that applying attorney has had no application for admission to practice denied by any court or administrative body; and no sanctions or contempt citations imposed by any court or administrative body. If such attestation cannot be made, then “a full explanation of the circumstances” should be provided.

Cautionary Tale

The PTAB recently denied pro hac vice admission to an attorney in Palo Alto Networks, Inc. v. Centripetal Networks, Inc., IPR2022-00182, Paper 56 (PTAB Feb. 7, 2023).

The attorney who sought pro hac vice admission is a partner at his firm and an experienced litigation attorney with over twenty-five years practicing law including litigating patent cases in district courts. He also was involved in litigation pertaining to the subject patent (U.S. Patent No. 9,917,856) at the district court and the Federal Circuit.

The PTAB was not bothered by the fact that the attorney previously had been denied pro hac vice admission in another PTAB proceeding. His declaration explained that the denial had been due to “an unintentional procedural error” on his part.

Prior Sanction

More concerning, however, was the sanction imposed by Judge Albright of the Western District of Texas in Freshub, Inc. v. Amazon.com Inc., 576 F. Supp. 3d 458 (W.D. Tex. 2021). The sanction was to complete 30 hours of Continuing Legal Education in legal ethics within six months, which the attorney completed.

In Freshub, the attorney represented the plaintiff in that patent infringement suit where the jury found no infringement. The plaintiff then filed a motion for new trial, arguing that “Defendants blew this Jewish stereotype ‘dog whistle' at every opportunity to unfairly bias the jury” because plaintiff was an Israeli company. But the attorney admitted at the hearing on the motion that the plaintiff “did not make a single objection on the basis that Defendants were pitting a community against a foreign company during either the trial or the closing argument.”

The Court did not turn a blind eye to any racist or anti-Semitic conduct, because indeed there was none. Throughout the October 19, 2021 hearing, Freshub's counsel could not point to any concrete evidence—or indeed, any evidence at all—that Defendants made arguments that intentionally played into Freshub's Israeli ties or any Freshub witnesses' race, heritage, or religion. Dkt. 296 (Hearing Transcript) at 19–21. Freshub's counsel failed to articulate any coherent argument as to how Defendants' counsel engaged in any racist or anti-Semitic conduct at trial. Without any evidentiary support, these serious allegations are particularly disturbing.

            The Court finds that Freshub's inflammatory allegations are nothing but baseless attacks on the integrity of this Court and the reputation of Defendants' counsel. Freshub's motion is apparently the result of its dissatisfaction with the verdict and counsel's difficulty in making sense of the unfavorable outcome, which is apparent from Mr. Andre's statements during the October 19 hearing: “I cannot explain the . . . jury verdict. I just simply can't explain it because the evidence was so overwhelming.” Dkt. 296 (Hearing Transcript) at 29. However, a bitter losing party's difficulty in explaining its loss is never a proper basis for counsel to invoke baseless allegations of racism and anti-Semitism to request a new trial. Such vitriolic and unsubstantiated allegations are not only shocking, but also offensive to this Court. And accusing Defendants' counsel of engaging in this conduct, without any evidentiary support, is similarly unacceptable.

Judge Albright further noted that “this is not the first time that Freshub's national counsel improperly conducted themselves before a federal district court,” citing Finjan Inc. v. Juniper Networks, Inc., No. C 17- 05659 WHA, Dkt. 669 at *7–8 (N.D. Cal. July 26, 2021) (“In no way does this order vindicate attorneys James R. Hannah, Lisa Kobialka, and Paul J. Andre. Their conduct was improper and frustrated the fairness of the proceedings. Judges in the future should take this into account when dealing with them in future cases.”).

Filing Without Being Admitted to Practice

The nail in the coffin, however, was the fact that, the day after the pro hac vice motion was filed, the attorney signed and filed a Motion for Recusal, as well the reply, “without being admitted to practice before the Board.”

An attorney with Mr. Andre's years of experience should have known better than to do that.

Furthermore, seeking to recuse the entire panel and vacate the decision to institute, the attorney argued in the Motion for Recusal that one of the PTAB judges had a personal bias against the patent owner, Centripetal Networks. The motion was denied, and was found to be a “reckless” attack based on nothing more than “unsupported rumor, conjecture, and speculation.”

The arguments Mr. Andre has already presented in this case (before being admitted) thus appear to bear more than a passing resemblance to the “baseless attacks on the integrity of [the] Court” that resulted in the sanctions imposed by Judge Albright.

Finding this conduct “quite troubling,” the PTAB denied the pro hac vice motion for the attorney to be back-up counsel. The PTAB noted that Centripetal Networks was still represented by six other attorneys, include three from the attorney's firm. The denial also was without prejudice, so that if the attorney's participation was “for some reason critical,” then another motion for pro hac vice admission could be filed “and explain why we should approve his participation despite the concerns identified above.”

The registered patent attorneys at Thomas P. Howard, LLC handle patent matters nationwide including in Colorado.