`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`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
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`v.
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`MAXIM INTEGRATED PRODUCTS, INC.,
`Patent Owner
`____________
`
`Case CBM2015-000102
`Patent 6,237,095
`____________
`PATENT OWNER MAXIM INTEGRATED PRODUCTS, INC.’S
`MOTION FOR PRO HAC VICE ADMISSION OF NATHAN LOWENSTEIN
`UNDER 37 C.F.R. § 42.10(c)
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`Case CBM2015-00102
`Patent 6,237,095
`Attorney Docket No. 150326-003USCBM
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
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`I.
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`RELIEF REQUESTED
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`Pursuant to 37 C.F.R. § 42.10(c) and the Notice of Filing Date in this
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`proceeding (Paper 3 at 2), Patent Owner Maxim Integrated Products, Inc. (“Patent
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`Owner”) respectfully requests that the Board admit Nathan Lowenstein pro hac
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`vice in this proceeding as back-up counsel.1
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`II. GOVERNING LAW, RULES, AND PRECEDENT
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`Section 42.10(c), 37 C.F.R., provides that:
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`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
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`1 For the convenience of the Board, it is noted that this Motion is identical in its
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`substance to the motions for pro hac vice admission of Mr. Lowenstein filed
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`concurrently today in related proceedings CBM2015-00098 and 2015-00101.
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`Case CBM2015-00102
`Patent 6,237,095
`Attorney Docket No. 150326-003USCBM
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`counsel is an experienced litigating attorney and has an established
`familiarity with the subject matter at issue in the proceeding.
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`The Board has further required that a motion for pro hac vice admission be
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`filed in accordance with the “Order - Authorizing Motion for Pro Hac Vice
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`Admission” entered in Unified Patents, Inc. v. Parallel Iron, LLC, IPR2013-00639,
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`Paper 7 (P.T.A.B. Oct. 15, 2013) (“United Patents Order”).
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`The United Patents Order requires that such motions (1) "[c]ontain a
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`statement of facts showing there is good cause for the Board to recognize counsel
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`pro hac vice during the proceeding[,]" and (2) "[b]e accompanied by an affidavit or
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`declaration of the individual seeking to appear attesting to the following:"
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`i. Membership in good standing of the Bar of at least one State or the
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`District of Columbia;
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`ii. No suspensions or disbarments from practice before any court or
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`administrative body;
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`iii. No application for admission to practice before any court or
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`administrative body ever denied;
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`iv. No sanctions or contempt citations imposed by any court or
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`administrative body;
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`Case CBM2015-00102
`Patent 6,237,095
`Attorney Docket No. 150326-003USCBM
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`v. The individual seeking to appear has read and will comply with the
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`Office Patent Trial Practice Guide and the Board's Rules of Practice for
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`Trials set forth in part 42 of 37 C.F.R.;
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`vi. The individual will be subject to the U.S.P.T.O. Rules of Professional
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`Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary
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`jurisdiction under 37 C.F.R. § 11.19(a);
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`vii. All other proceedings before the Office for which the individual has
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`applied to appear pro hac vice in the last three (3) years; and
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`viii. Familiarity with the subject matter at issue in the proceeding.
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`III. STATEMENT OF FACTS
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`Based on the following statement of facts, and supported by the Declaration
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`of Nathan Lowenstein, submitted herewith as Exhibit 2009, Patent Owner requests
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`the pro hac vice admission of Nathan Lowenstein in this proceeding:
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`1.
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`Patent Owner's lead counsel, Kenneth J. Weatherwax (the
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`undersigned), is a registered practitioner (Reg. No. 54,528).
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`2. Mr. Lowenstein is a partner at the law firm of Lowenstein &
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`Weatherwax LLP (Ex. 2009 ¶ 10). Formerly, Mr. Lowenstein was an
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`attorney at the law firm of Irell & Manella LLP. Id.
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`Case CBM2015-00102
`Patent 6,237,095
`Attorney Docket No. 150326-003USCBM
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`3. Mr. Lowenstein is an experienced litigator, and the majority of his
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`
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`practice has consisted of patent litigation and other patent related
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`matters. Id. ¶ 11. Representative patent litigations where Mr.
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`Lowenstein has been actively involved as patent litigation counsel
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`include Tessera, Inc. v. Micron Technology, Inc. et al., 2:05-cv-
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`00094-JDL (E.D. Tex.); St. Jude Medical, Inc., et al. v. Access
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`Closure, Inc., 4:08-cv-04101 (W.D. Ark.); Microprocessor
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`Enhancement Corp. v. Texas Instruments Inc., 8:08-cv-01123 (C.D.
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`Cal.); Quantum World Corp. v. Atmel Corp. et al., 2:07-cv-00024
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`(E.D. Tex.). Id.
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`4. Mr. Lowenstein has an established familiarity with the subject matter
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`at issue in this proceeding. Id. ¶ 12. He has reviewed the Patent at
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`issue, U.S. Patent No. 6,237,095, as well as two other related patents
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`for which Petitioners have filed a Petition for Covered Business
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`Method Review (U.S. Patent Nos. 6,105,013 and 5,940,510). Id. He
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`has also reviewed the Petitions and the relevant art in the three
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`proceedings. Id. In addition, he participated in drafting of the Patent
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`Owner Preliminary Responses in all three proceedings and, is
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`therefore, intimately familiar with the factual and legal issues in this
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`matter. Id.
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`Case CBM2015-00102
`Patent 6,237,095
`Attorney Docket No. 150326-003USCBM
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`5. Mr. Lowenstein is a member in good standing of the State Bar of
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`California. Id. ¶¶ 1-2.
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`6. Mr. Lowenstein has never been suspended or disbarred from practice
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`before any court or administrative body. Id. ¶ 3.
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`7.
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`No application of Mr. Lowenstein for admission to practice before
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`any court or administrative body has ever been denied. Id. ¶ 4.
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`8.
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`No sanctions or contempt citations have ever been imposed against
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`Mr. Lowenstein by any court or administrative body. Id. ¶ 5.
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`9. Mr. Lowenstein has read and will comply with the Office Patent Trial
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`Practice Guide and the Board’s Rules of Practice for Trials set forth in
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`part 42 of 37 C.F.R. Id. ¶ 6.
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`10. Mr. Lowenstein understands that he will be subject to the U.S.P.T.O.
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`Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq.
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`and disciplinary jurisdiction under 37 C.F.R. § 11.19(a). Id. ¶ 7.
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`11. Mr. Lowenstein intends to apply, concurrent with this application, to
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`appear pro hac vice in the related matters CBM2015-00098 and
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`CBM215-00101. Id. ¶ 8.
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`12. Mr. Lowenstein has applied to appear pro hac vice in two other
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`proceedings before the U.S.P.T.O. in the last three years: IPR2015-
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`Case CBM2015-00102
`Patent 6,237,095
`Attorney Docket No. 150326-003USCBM
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`00095 and IPR2015-00097. Id. ¶ 9. Those proceedings are not
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`related to the proceeding that is the subject of this declaration. Id.
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`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION OF
`NATHAN LOWENSTEIN
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`The Board may recognize counsel pro hac vice upon a showing of good
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`cause, subject to the condition that lead counsel be a registered practitioner and to
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`any other conditions as the Board may impose. 37 C.F.R. § 42.10(c).
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`The facts outlined above in the Statement of Facts, and contained in the
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`Declaration of Nathan Lowenstein (Ex. 2009), establish that there is good cause to
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`admit Mr. Lowenstein pro hac vice in this proceeding. As Patent Owner’s lead
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`counsel, I am a registered practitioner. Mr. Lowenstein has extensive litigation
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`experience and an established familiarity with the subject matter at issue, including
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`the patents, petitions and references.
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`V. CONCLUSION
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`For the foregoing reasons, Patent Owner respectfully requests that the Board
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`admit Mr. Lowenstein pro hac vice in this proceeding.
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`Respectfully submitted,
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`____/ Kenneth J. Weatherwax /_________
`Kenneth J. Weatherwax, Reg. No. 54,528
`Lowenstein & Weatherwax LLP
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`Date: October 14, 2015
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`
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the following documents were served
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`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:
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`David M. Tennant
`dtennant@whitecase.com
`WCAXPMaximCBMTeam@whitecase.com
`
`William F. Long
`blong@mckennalong.com
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`Respectfully submitted,
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`____/ Kenneth J. Weatherwax /______
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`Kenneth J. Weatherwax
`Registration No. 54,528
`Attorney for Patent Owner
`
`Date: October 14, 2015