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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`STARBUCKS CORPORATION,
`Petitioner,
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`v.
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`AMERANTH, INC.,
`Patent Owner.
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`Case CBM2015-00099
`Patent 6,871,325 B1
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`PETITIONER’S MOTION FOR PRO HAC VICE ADMISSION
`UNDER 37 C.F.R. §42.10(c)
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`PTAB Case No. CBM2015-00099
`Petitioner’s Motion for Pro Hac Vice Admission
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`Petitioner Starbucks Corporation (collectively “Petitioner”) respectfully
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`requests that the Board admit Matthew C. Bernstein as backup counsel pro hac
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`vice in this proceeding. Petitioner is also (under a separate motion) requesting the
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`same in PTAB Case No. CBM2015-00091 regarding related U.S. Patent No.
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`6,384,850. Mr. Bernstein is the litigation counsel for Starbucks Corporation in the
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`district court litigation involving both U.S. Patent Nos. 6,384,850 and 6,871,325
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`and has substantial knowledge in the substantive issues of the invalidity of the
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`challenged claims of the ‘325 Patent in this proceeding. Therefore, Mr. Bernstein
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`meets the requirements of “an experienced litigating attorney and has an
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`established familiarity with the subject matter at issue in the proceeding” under 37
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`C.F.R. §42.10(c).
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`1. Time For Filing
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`This Motion for Pro Hac Vice Admission has been authorized by the Notice
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`of Filing Date Accorded to Petition and Time for Filing Patent Owner Preliminary
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`Response that was mailed on March 24, 2015 (Paper 5). This Motion is filed no
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`sooner than twenty one (21) days after service of the petition.
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`1
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`PTAB Case No. CBM2015-00099
`Petitioner’s Motion for Pro Hac Vice Admission
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`2.
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`Statement of Facts
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`In this proceeding, lead counsel for Petitioner is Bing Ai, a registered
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`practitioner. The following statement of facts shows that there is good cause for
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`the Board to admit Mr. Bernstein pro hac vice.
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`Mr. Bernstein is a patent litigation attorney with more than 16 years of
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`experience representing clients in cases involving computer hardware and
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`software, semiconductors, Internet and e-commerce, hand held computers and
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`other mobile devices. (Affidavit of Matthew C. Bernstein (“Bernstein
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`Affidavit”), ¶ 8 in Exhibit 1062.)
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`Mr. Bernstein regularly litigates patent cases in various forums including
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`the United States Court of Appeals for the Federal Circuit, various federal district
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`courts, and the International Trade Commission (Id.) He has experience
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`representing clients in many phases of litigation including discovery, Markman
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`hearings, jury trials, and appeals. (Id.) Mr. Bernstein ’s biography is attached to
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`the Bernstein Affidavit (Exhibit 1062) as Exhibit A.
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`U.S. Patent Nos. 6,384,850 and 6,871,325, among other patents, are
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`currently asserted against Petitioner in a co-pending litigation, Ameranth, Inc. v.
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`Starbucks Corp., Case No. 3-13-cv-01072 filed in the Southern District of
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`California (“the co-pending litigation”). That litigation led to the covered business
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`2
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`PTAB Case No. CBM2015-00099
`Petitioner’s Motion for Pro Hac Vice Admission
`method review proceedings under PTAB Case Nos. CBM2015-00091 and
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`CBM2015-00099. (Id. at ¶ 9.)
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`Mr. Bernstein is lead counsel for Petitioner in the co-pending litigation and,
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`as such, oversees and handles all phases of the litigation from discovery through
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`trial. (Id. at ¶ 10.) Mr. Bernstein is familiar with the technologies and issued
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`claims in Patent No. 6,871,325, prior art references and invalidity grounds based
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`on the prior art. (Id.) Mr. Bernstein is also familiar with the prior art references
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`cited in the related PTAB Case No. CBM2015-00091 and the associated invalidity
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`grounds before the PTAB. (Id.)
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`Petitioner has invested significant financial resources in the related matter in
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`which Mr. Bernstein serves as lead counsel. Petitioner therefore respectfully
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`submits that there is good cause for the Board to recognize Mr. Bernstein as
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`counsel pro hac vice during this proceeding.
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`3. Affidavit or Declaration of Individual Seeking to Appear
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`This Motion for Pro Hac Vice Admission is accompanied by an Affidavit of
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`Mr. Bernstein (Exhibit 1062), which attests to the requirements for pro hac vice
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`admission set forth in IPR2013-00639, Paper 7, dated Oct. 15, 2013.
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`3
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`PTAB Case No. CBM2015-00099
`Petitioner’s Motion for Pro Hac Vice Admission
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`4. Conclusion
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`Accordingly, Petitioner submits that there is good cause under 37 C.F.R.
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`§ 42.10(c) for the Board to admit Matthew C. Bernstein as counsel pro hac vice
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`and to authorize Mr. Bernstein to represent Petitioner as back-up counsel in this
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`Respectfully submitted,
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` /Bing Ai/
`Lead Counsel
`Bing Ai, Reg. No. 43,312
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`Attorneys for
`STARBUCKS CORPORATION
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`proceeding.
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`Dated: May 14, 2015
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`PERKINS COIE LLP
`11988 El Camino Real, Suite 350
`San Diego, CA 92130
`(858) 720-5700
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`4
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`PTAB Case No. CBM2015-00099
`Petitioner’s Motion for Pro Hac Vice Admission
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true copy of the foregoing
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`PETITIONER’S MOTION FOR PRO HAC VICE ADMISSION UNDER 37
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`C.F.R. § 42.10(c) and Exhibit 1062 were served in its entirety this 14th day of May
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`2015 by electronic mail as agreed upon by the parties on the Patent Owner via its
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`attorneys of record:
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`LEAD COUNSEL
`John W. Osborne
`USPTO Reg. No. 36,231
`OSBORNE LAW LLC
`33 Habitat Lane
`Cortlandt Manor, NY 10567
`Email: josborne@osborneipl.com
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`Dated: May 14, 2015
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`PERKINS COIE LLP
`11988 El Camino Real, Suite 350
`San Diego, CA 92130
`(858) 720-5700
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`BACK-UP COUNSEL
`Michael D. Fabiano
`USPTO Reg. No. 44,675
`Fabiano Law Firm, P.C.
`12526 High Bluff Drive, Suite 300
`San Diego, CA 92130
`Email: mdfabiano@fabianolawfirm.com
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`Respectfully submitted,
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` /Bing Ai/
`Lead Counsel
`Bing Ai, Reg. No. 43,312
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`Attorneys for
`STARBUCKS CORPORATION
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