UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`EBAY ENTERPRISE, INC.
`Petitioner
`v.
`LAWRENCE B. LOCKWOOD
`Patent Owner
`_____________________
`CASE NO: CBM2014-00025
`Patent No. 7,010,508
`_____________________
`
`EBAY ENTERPRISE, INC.’S
`UNOPPOSED MOTION FOR PRO HAC VICE
`ADMISSION OF MARK P. WINE
`
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`EBAY ENTERPRISE, INC.
`Petitioner
`v.
`LAWRENCE B. LOCKWOOD
`Patent Owner
`_____________________
`CASE NO: CBM2014-00025
`Patent No. 7,010,508
`_____________________
`
`EBAY ENTERPRISE, INC.’S
`UNOPPOSED MOTION FOR PRO HAC VICE
`ADMISSION OF MARK P. WINE
`
`
`
`I. RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. § 42.10(c), Petitioner, eBay Enterprise, Inc. (“eBay”)
`
`respectfully requests the pro hac vice admission of Mark P. Wine in this
`
`proceeding.
`
`II. GOVERNING LAWS, RULES AND PRECEDENT
`
`Section 42.10(c) states as follows:
`
`The Board may 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.
`For example, where the lead counsel
`is a registered
`practitioner, a motion to appear pro hac vice by counsel
`who is not a registered practitioner may be granted upon
`showing that counsel is an experienced litigating attorney
`and has an established familiarity with the subject matter
`at issue in the proceeding.
`
`The Board’s Notice of Filing Date Accorded to Petition, Paper No. 7 in this
`
`proceeding (“Filing Date Notice”), states that motions for pro hac vice admission
`
`under 37 C.F.R. § 42.10(c) must be filed in accordance with the “Order –
`
`Authorizing Motion for Pro Hac Vice Admission” entered in Case
`
`IPR2013-00639, Paper No. 7 (MPT)” (“Pro Hac Vice Order”). Filing Date Notice,
`
`Paper No. 7, at 2. In accordance with the Pro Hac Vice Order, this motion is being
`
`1
`
`
`
`filed no sooner than twenty-one (21) days after service of the petition. Pro Hac
`
`Vice Order, at 2. The Filing Date Notice authorizes the parties to file motions for
`
`pro hac vice admission in this proceeding. Filing Date Notice, Paper No. 7, at 2.
`
`The Pro Hac Vice Order requires that such motions (a) “[c]ontain a
`
`statement of facts showing there is good cause for the Board to recognize counsel
`
`pro hac vice during the proceeding,” and (b) “[b]e accompanied by an affidavit or
`
`declaration of the individual seeking to appear attesting to the following:
`
`i. Membership in good standing of the Bar of at least one State or the
`
`District of Columbia;
`
`ii. No suspensions or disbarments from practice before any court or
`
`administrative body;
`
`iii. No application for admission to practice before any court or
`
`administrative body ever denied;
`
`iv. No sanctions or contempt citations imposed by any court or
`
`administrative body;
`
`v.
`
`The individual seeking to appear has read and will comply with the
`
`Office Patent Trial Practice Guide and the Board’s Rules of Practice
`
`for Trials set forth in part 42 of 37 C.F.R.;
`
`2
`
`
`
`vi.
`
`The individual will be subject to the USPTO Rules of Professional
`
`Conduct set forth in 37 C.F.R. §§ 10.20 et seq. and disciplinary
`
`jurisdiction under 37 C.F.R. § 11.19(a);
`
`vii. All other proceedings before the Office for which the individual has
`
`applied to appear pro hac vice in the last three (3) years; and
`
`viii.
`
`Familiarity with the subject matter at issue in the proceeding.” Pro
`
`Hac Vice Order, at 3-4.
`
`III.
`
`STATEMENT OF FACTS
`
`Based on the following facts, and supported by the Affidavit of Mark P.
`
`Wine (Ex. eBay 1013) (“Wine Affidavit”) submitted herewith, Petitioner eBay
`
`requests the pro hac vice admission of Mark P. Wine in this proceeding.
`
`1.
`
`eBay’s lead counsel, Don Daybell, is a registered practitioner (Reg.
`
`No. 50,877).
`
`2.
`
`Mr. Wine is a partner at the law firm of Orrick Herrington & Sutcliffe
`
`LLP. (Ex. eBay 1013, ¶ 3)
`
`3.
`
`Mr. Wine is an experienced litigating attorney and has been a
`
`litigating attorney for more than thirty-nine years. (Id., ¶ 3). Mr.
`
`Wine has been litigating patent cases for over thirty years. (Id., ¶ 4).
`
`4.
`
`Mr. Wine has established familiarity with the subject matter at issue in
`
`this proceeding.
`
`(Id., ¶ 5). Mr. Wine has litigated cases in area of
`
`3
`
`
`
`electronic commerce. He has become familiar with U.S. Patent No.
`
`7,010,508 (the “’508 Patent”) and with its prosecution history.
`
`(Id.)
`
`He also has in-depth familiarity with Lockwood’s related U.S. Patent
`
`No. 5,576,951 (the “’951 Patent”) and its file history. (Id.)
`
`5.
`
`Mr. Wine was counsel for eBay in a co-pending district court
`
`litigation against eBay Enterprise, Inc. That litigation is captioned
`
`Landmark Technology. LLC v. iRobot Corporation, Civil Action No.
`
`6:13-cv-0411 (E.D. Tex.) and involved the ’508 and ’951 patents also
`
`at issue in these covered business method review proceedings. As
`
`counsel for eBay, he had been actively involved in all aspects of its
`
`district court litigation. (Id., ¶ 6)
`
`6.
`
`Mr. Wine is a member in good standing of the State Bar of California.
`
`(Id., ¶ 7).
`
`7.
`
`Mr. Wine has never been suspended or disbarred from practice before
`
`any court or administrative body. (Id., ¶ 8).
`
`8.
`
`Mr. Wine was once administratively suspended by the Minnesota
`
`Supreme Court for failure to pay annual registration dues. (Id.).
`
`However, as further explained in the Affidavit of Mark P. Wine, this
`
`administrative suspension occurred without Mr. Wine’s knowledge,
`
`4
`
`
`
`and Mr. Wine promptly corrected the situation upon being made
`
`aware of it. (Id., ¶¶ 8-15).
`
`9.
`
`No application of Mr. Wine for admission to practice before any court
`
`or administrative body has ever been denied. (Id., ¶ 16).
`
`10. No sanctions or contempt citations have ever been imposed against
`
`Mr. Wine by any court or administrative body. (Id., ¶ 17).
`
`11. Mr. Wine has read and will comply with the Office Patent Trial
`
`Practice Guide and the Board’s Rules of Practice for Trials set forth in
`
`part 42 of Section 37 of the Code of Federal Regulations. (Id., ¶ 18).
`
`12. Mr. Wine understands that he will be subject to the USPTO Rules of
`
`Professional Conduct set forth in 37 C.F.R. §§ 10.20 et seq. and
`
`disciplinary jurisdiction under 37 C.F.R. § 11.19(a). (Id., ¶ 19).
`
`13. Mr. Wine has applied and has been admitted to appear pro hac vice in
`
`IPR2013-00433 and IPR2013-00436 before the Office in the last three
`
`(3) years. (Id., ¶ 20). Mr. Wine is concurrently applying to appear
`
`pro hac vice before the Office in the following covered business
`
`method review proceedings:
`
`Proceeding
`
`CBM2014-00026
`
`CBM2014-00025
`
`U.S. Patent No.
`
`5,576,951
`
`7,010,508
`
`5
`
`
`
`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE
`ADMISSION OF MR. MARK P. WINE IN THIS PROCEEDING
`
`The Board may 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). eBay’s lead counsel, Don Daybell, is a registered practitioner. Based
`
`on the facts contained herein, as supported by the Wine Affidavit, eBay submits
`
`that good cause exists to admit Mr. Wine pro hac vice in this proceeding.
`
`As supported by his Affidavit, Mr. Wine is an experienced litigating attorney
`
`with over thirty years of patent litigation experience. Mr. Wine also has an
`
`established familiarity with the subject matter at issue in this proceeding.
`
`In representing eBay, Mr. Wine has been actively involved in all aspects of
`
`the litigating the covered business method review petitions involving the patent at
`
`issue here and the related patent. In view of Mr. Wine’s knowledge of the subject
`
`matter at issue in this proceeding, Petitioner eBay has a substantial need for Mr.
`
`Wine’s pro hac vice admission and involvement in this proceeding. Given Mr.
`
`Wine’s experience with the involved patent and parties, and Petitioner eBay’s
`
`desire to be represented by the counsel of its choice, the need for admission of Mr.
`
`Wine substantially outweighs any potential prejudice to Patent Owner Lockwood.
`
`6
`
`
`
`Undersigned counsel met and conferred with counsel for Patent Owner, who
`
`indicated that Patent Owner does not oppose eBay’s motions for pro hac vice in
`
`this case.
`
`V. CONCLUSION
`
`For the foregoing reasons, eBay respectfully requests that Mr. Wine be
`
`admitted pro hac vice in this proceeding.
`
`The Patent Trial and Appeal Board is hereby authorized to charge any fees
`
`associated with this filing to Deposit Account 15-0665 (Customer ID No. 34313).
`
`Respectfully submitted,
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`
`Dated: July 21, 2014
`
`By:
`
`/Don Daybell/
`Don Daybell, Lead Counsel for Petitioner
`eBay Enterprise, Inc.
`Reg. No. 50,877
`
`Orrick, Herrington & Sutcliffe LLP
`2050 Main Street, Suite 1100
`Irvine, CA 92614-8255
`Tel: 949-567-6700
`Fax: 949-567-6710
`
`7
`
`
`
`CERTIFICATION OF SERVICE (37 C.F.R. § 42.6(e))
`
`The undersigned hereby certifies
`
`that
`
`the above-captioned “EBAY
`
`ENTERPRISE, INC.’S MOTION FOR PRO HAC VICE ADMISSION OF MARK
`
`P. WINE” with exhibits and updated Exhibit List was served in its entirety on July
`
`21, 2014, upon the following parties via electronic mail:
`
`Robert Greene Sterne
`rsterne@skgf.com
`Donald J. Featherstone
`donf-PTAB@skgf.com
`Jason D. Eisenberg
`jasone-PTAB@skgf.com
`Byron L. Pickard
`bpickard-PTAB@skgf.com
`Richard M. Bemben
`rbemben-PTAB@skgf.com
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`Attorneys for Patent Owner
`
`/Veronica Hayashi/
`Veronica Hayashi
`
`8
`
`
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