UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMERICAN EXPRESS COMPANY, AMERICAN EXPRESS TRAVEL
`RELATED SERVICES COMPANY, INC., COMPASS BANK, DISCOVER
`FINANCIAL SERVICES, DISCOVER BANK, DISCOVER PRODUCTS INC.,
`AND STATE FARM MUTUAL AUTOMOBILE INSURANCE COMPANY,
`Petitioners
`
`v.
`
`MAXIM INTEGRATED PRODUCTS, INC.,
`Patent Owner
`____________
`
`Case CBM2015-000101
`Patent 6,105,013
`____________
`PATENT OWNER MAXIM INTEGRATED PRODUCTS, INC.’S
`MOTION FOR PRO HAC VICE ADMISSION OF NATHAN LOWENSTEIN
`UNDER 37 C.F.R. § 42.10(c)
`
`
`
`
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMERICAN EXPRESS COMPANY, AMERICAN EXPRESS TRAVEL
`RELATED SERVICES COMPANY, INC., COMPASS BANK, DISCOVER
`FINANCIAL SERVICES, DISCOVER BANK, DISCOVER PRODUCTS INC.,
`AND STATE FARM MUTUAL AUTOMOBILE INSURANCE COMPANY,
`Petitioners
`
`v.
`
`MAXIM INTEGRATED PRODUCTS, INC.,
`Patent Owner
`____________
`
`Case CBM2015-000101
`Patent 6,105,013
`____________
`PATENT OWNER MAXIM INTEGRATED PRODUCTS, INC.’S
`MOTION FOR PRO HAC VICE ADMISSION OF NATHAN LOWENSTEIN
`UNDER 37 C.F.R. § 42.10(c)
`
`
`
`
`
`
`
`
`
`Case CBM2015-00101
`Patent 6,105,013
`Attorney Docket No. 150326-002USCBM
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`I.
`
`RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. § 42.10(c) and the Notice of Filing Date in this
`
`proceeding (Paper 3 at 2), Patent Owner Maxim Integrated Products, Inc. (“Patent
`
`Owner”) respectfully requests that the Board admit Nathan Lowenstein pro hac
`
`vice in this proceeding as back-up counsel.1
`
`II. GOVERNING LAW, RULES, AND PRECEDENT
`
`Section 42.10(c), 37 C.F.R., provides that:
`
`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
`
`
`1 For the convenience of the Board, it is noted that this Motion is identical in its
`
`substance to the motions for pro hac vice admission of Mr. Lowenstein filed
`
`concurrently today in related proceedings CBM2015-00098 and 2015-00102.
`
`
`
`- 1 -
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`Case CBM2015-00101
`Patent 6,105,013
`Attorney Docket No. 150326-002USCBM
`
`counsel is an experienced litigating attorney and has an established
`familiarity with the subject matter at issue in the proceeding.
`
`The Board has further required that a motion for pro hac vice admission be
`
`filed in accordance with the “Order - Authorizing Motion for Pro Hac Vice
`
`Admission” entered in Unified Patents, Inc. v. Parallel Iron, LLC, IPR2013-00639,
`
`Paper 7 (P.T.A.B. Oct. 15, 2013) (“United Patents Order”).
`
`The United Patents Order requires that such motions (1) "[c]ontain a
`
`statement of facts showing there is good cause for the Board to recognize counsel
`
`pro hac vice during the proceeding[,]" and (2) "[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;
`
`- 2 -
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`Case CBM2015-00101
`Patent 6,105,013
`Attorney Docket No. 150326-002USCBM
`
`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.;
`
`vi. The individual will be subject to the U.S.P.T.O. Rules of Professional
`
`Conduct set forth in 37 C.F.R. §§ 11.101 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.
`
`III. STATEMENT OF FACTS
`
`Based on the following statement of facts, and supported by the Declaration
`
`of Nathan Lowenstein, submitted herewith as Exhibit 2009, Patent Owner requests
`
`the pro hac vice admission of Nathan Lowenstein in this proceeding:
`
`1.
`
`Patent Owner's lead counsel, Kenneth J. Weatherwax (the
`
`undersigned), is a registered practitioner (Reg. No. 54,528).
`
`2. Mr. Lowenstein is a partner at the law firm of Lowenstein &
`
`Weatherwax LLP (Ex. 2009 ¶ 10). Formerly, Mr. Lowenstein was an
`
`attorney at the law firm of Irell & Manella LLP. Id.
`
`- 3 -
`
`
`
`Case CBM2015-00101
`Patent 6,105,013
`Attorney Docket No. 150326-002USCBM
`
`3. Mr. Lowenstein is an experienced litigator, and the majority of his
`
`
`
`practice has consisted of patent litigation and other patent related
`
`matters. Id. ¶ 11. Representative patent litigations where Mr.
`
`Lowenstein has been actively involved as patent litigation counsel
`
`include Tessera, Inc. v. Micron Technology, Inc. et al., 2:05-cv-
`
`00094-JDL (E.D. Tex.); St. Jude Medical, Inc., et al. v. Access
`
`Closure, Inc., 4:08-cv-04101 (W.D. Ark.); Microprocessor
`
`Enhancement Corp. v. Texas Instruments Inc., 8:08-cv-01123 (C.D.
`
`Cal.); Quantum World Corp. v. Atmel Corp. et al., 2:07-cv-00024
`
`(E.D. Tex.). Id.
`
`4. Mr. Lowenstein has an established familiarity with the subject matter
`
`at issue in this proceeding. Id. ¶ 12. He has reviewed the Patent at
`
`issue, U.S. Patent No. 6,105,013, as well as two other related patents
`
`for which Petitioners have filed a Petition for Covered Business
`
`Method Review (U.S. Patent Nos. 5,940,510 and 6,237,095). Id. He
`
`has also reviewed the Petitions and the relevant art in the three
`
`proceedings. Id. In addition, he participated in drafting of the Patent
`
`Owner Preliminary Responses in all three proceedings and, is
`
`therefore, intimately familiar with the factual and legal issues in this
`
`matter. Id.
`
`- 4 -
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`Case CBM2015-00101
`Patent 6,105,013
`Attorney Docket No. 150326-002USCBM
`
`5. Mr. Lowenstein is a member in good standing of the State Bar of
`
`California. Id. ¶¶ 1-2.
`
`6. Mr. Lowenstein has never been suspended or disbarred from practice
`
`before any court or administrative body. Id. ¶ 3.
`
`7.
`
`No application of Mr. Lowenstein for admission to practice before
`
`any court or administrative body has ever been denied. Id. ¶ 4.
`
`8.
`
`No sanctions or contempt citations have ever been imposed against
`
`Mr. Lowenstein by any court or administrative body. Id. ¶ 5.
`
`9. Mr. Lowenstein 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. Id. ¶ 6.
`
`10. Mr. Lowenstein understands that he will be subject to the U.S.P.T.O.
`
`Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq.
`
`and disciplinary jurisdiction under 37 C.F.R. § 11.19(a). Id. ¶ 7.
`
`11. Mr. Lowenstein intends to apply, concurrent with this application, to
`
`appear pro hac vice in the related matters CBM2015-00098 and
`
`CBM215-00102. Id. ¶ 8.
`
`12. Mr. Lowenstein has applied to appear pro hac vice in two other
`
`proceedings before the U.S.P.T.O. in the last three years: IPR2015-
`
`- 5 -
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`
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`Case CBM2015-00101
`Patent 6,105,013
`Attorney Docket No. 150326-002USCBM
`
`00095 and IPR2015-00097. Id. ¶ 9. Those proceedings are not
`
`related to the proceeding that is the subject of this declaration. Id.
`
`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION OF
`NATHAN LOWENSTEIN
`
`The Board may recognize counsel pro hac vice 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).
`
`The facts outlined above in the Statement of Facts, and contained in the
`
`Declaration of Nathan Lowenstein (Ex. 2005), establish that there is good cause to
`
`admit Mr. Lowenstein pro hac vice in this proceeding. As Patent Owner’s lead
`
`counsel, I am a registered practitioner. Mr. Lowenstein has extensive litigation
`
`experience and an established familiarity with the subject matter at issue, including
`
`the patents, petitions and references.
`
`V. CONCLUSION
`
`For the foregoing reasons, Patent Owner respectfully requests that the Board
`
`admit Mr. Lowenstein pro hac vice in this proceeding.
`
`Respectfully submitted,
`
`
`____/ Kenneth J. Weatherwax /_________
`Kenneth J. Weatherwax, Reg. No. 54,528
`Lowenstein & Weatherwax LLP
`
`- 6 -
`
`Date: October 14, 2015
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the following documents were served
`
`by electronic mail on October 14, 2015:
`
`
`PATENT OWNER MAXIM INTEGRATED PRODUCT, INC.’S
`MOTION FOR PRO HAC VICE ADMISSION OF NATHAN
`LOWENSTEIN UNDER 37 C.F.R. § 42.10(c)
`
`Ex. 2009: DECLARATION OF NATHAN LOWENSTEIN IN
`SUPPORT OF PATENT OWNER MAXIM INTEGRATED
`PRODUCT, INC.’S MOTION FOR PRO HAC VICE ADMISSION OF
`NATHAN LOWENSTEIN UNDER 37 C.F.R. § 42.10(c)
`
`The names and address of the parties being served are as follows:
`
`David M. Tennant
`dtennant@whitecase.com
`WCAXPMaximCBMTeam@whitecase.com
`
`William F. Long
`blong@mckennalong.com
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`____/ Kenneth J. Weatherwax /______
`
`Kenneth J. Weatherwax
`Registration No. 54,528
`Attorney for Patent Owner
`
`Date: October 14, 2015
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