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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`
`KYOCERA CORPORATION
`MOTOROLA MOBILITY LLC
`Petitioners
`
`
`v.
`
`
`SOFTVIEW LLC
`Patent Owner
`
`___________________
`
`CASE IPR2013-00007
`Patent 7,461,353.
`___________________
`
`
`
`SOFTVIEW'S UNOPPOSED MOTION FOR PRO HAC VICE ADMISSION
`OF MORGAN CHU UNDER 37 C.F.R. § 42.10(c)
`
`
`
`
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`2827078
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`Case IPR2013-00007
`Patent 7,461,353
`I.
`RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. § 42.10(c), Patent Owner SoftView LLC
`
`("SoftView"), by and through its attorneys, respectfully requests that the Board
`
`admit Morgan Chu pro hac vice in this proceeding.
`
`II.
`
`GOVERNING LAW, 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.
`
`Further, the Board requires that a motion for pro hac vice admission be filed
`
`in accordance with the "ORDER-AUTHORIZING MOTION FOR PRO HAC
`
`VICE ADMISSION – 37 C.F.R. § 42.10" in Motorola Mobility LLC v. Patent of
`
`Michael Arnouse, Case No. IPR2013-00010 ("Representative Order"). The
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`Representative Order states that the motion must "[c]ontain a statement of facts
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`showing there is good cause for the Board to recognize counsel pro hac vice during
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`Case IPR2013-00007
`Patent 7,461,353
`the proceeding," and "[b]e accompanied by an affidavit or declaration of the
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`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 the C.F.R.;
`vi. The individual will be subject to the USPTO Code
`of Professional Responsibility set forth in 37
`C.F.R. §§ 10.20 et seq.1 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.
`
`
`1 The USPTO Code of Professional Responsibility in 37 C.F.R. § 10.20 et
`seq. was replaced by the USPTO Rules of Professional Conduct in 37 C.F.R. §
`11.101 et seq., effective May 3, 2013.
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`Case IPR2013-00007
`Patent 7,461,353
`III.
`STATEMENT OF FACTS
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`Based on the following statement of facts, and supported by the Declaration
`
`of Morgan Chu submitted herewith, SoftView submits that a showing of good
`
`cause has been made and respectfully requests the pro hac vice admission of
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`Morgan Chu in this proceeding:
`
`1.
`
`Patent Owner’s lead counsel, Ben J. Yorks, is a registered practitioner
`
`(Reg. No. 33,609).
`
`2.
`
`Patent Owner’s backup counsel, Babak Redjaian, is a registered
`
`practitioner (Reg. No. 42,096).
`
`3. Mr. Chu is a Partner at the law firm of Irell & Manella LLP ("Irell").
`
`Mr. Chu is presently the Chair of the Litigation Group at Irell. Mr.
`
`Chu joined Irell as an associate in 1977, and became partner in 1982.
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`Mr. Chu was Co-Managing Partner of Irell for two terms from 1997 to
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`2003. (Declaration of Morgan Chu in Support of SoftView's
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`Unopposed Motions for Pro Hac Vice Admission in IPR2013-00004
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`and IPR2013-00007).
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`4. Mr. Chu is an experienced litigating attorney and has extensive
`
`experience in patent law and has litigated patent cases for the past 35
`
`years. Mr. Chu has been lead trial counsel in numerous patent cases
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`and has litigated many of them through trial. Mr. Chu has also
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`Case IPR2013-00007
`Patent 7,461,353
`conducted oral arguments on patent cases before the Federal Circuit.
`
`(Id.)
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`5. Mr. Chu is a member in good standing of the California State Bar.
`
`(Id.)
`
`6. Mr. Chu has never been suspended or disbarred from practice before
`
`any court or administrative body. (Id.)
`
`7.
`
`No application filed by Mr. Chu for admission to practice before any
`
`court or administrative body has ever been denied. (Id.)
`
`8.
`
`No sanctions or contempt citations have been imposed against Mr.
`
`Chu by any court or administrative body. (Id.)
`
`9. Mr. Chu has read and agrees to comply with the Office Patent Trial
`
`Practice Guide and the Board’s Rules of Practice for Trials set forth in
`
`part 42 of the C.F.R. (Id.)
`
`10. Mr. Chu understands that he will be subject to the USPTO Rules of
`
`Professional Conduct 37 C.F.R. §§ 11.101 et seq. and disciplinary
`
`jurisdiction under 37 C.F.R. § 11.19(a). (Id.)
`
`11. Mr. Chu is currently seeking pro hac vice admission in the co-
`
`pending, related matter filed by Petitioners, Case No. IPR2013-00004.
`
`Mr. Chu has not applied to appear pro hac vice in any other
`
`proceedings before the United States Patent and Trademark Office in
`
`the last three (3) years. (Id.)
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`Case IPR2013-00007
`Patent 7,461,353
`12. Mr. Chu has an established familiarity with the subject matter at issue
`
`in this proceeding. U.S. Patent No. 7,461,353 ("the ‘353 patent") is
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`currently asserted by SoftView against Petitioners Kyocera Corp. and
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`Motorola Mobility LLC in a co-pending litigation, Softview LLC v.
`
`Kyocera Corp. et al., Civil Action No. 1:12-cv-00989-LPS (D. Del.
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`Filed July 26, 2012), Hon. Leonard P. Stark presiding ("the co-
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`pending litigation"). Mr. Chu is the lead trial counsel for SoftView in
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`the co-pending litigation against Petitioners and oversees the
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`litigation. Mr. Chu was the lead attorney at the Markman hearing for
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`the '926 and '353 patents in the co-pending litigation. As a result, Mr.
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`Chu has acquired substantial understanding of the underlying legal
`
`and technological issues at stake in this proceeding. Petitioners have
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`raised similar invalidity arguments in the co-pending litigation as in
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`this proceeding. (Id.) Patent Owner has expended significant time
`
`and resources with Mr. Chu as counsel in the co-pending litigation,
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`and wishes to continue using Mr. Chu as counsel in this proceeding.
`
`IV.
`
`GOOD CAUSE EXISTS FOR PRO HAC VICE ADMISSION OF
`MORGAN CHU
`
`The facts outlined above in the Statement of Facts, and contained in the
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`Declaration of Morgan Chu, establish that there is good cause to admit Mr. Chu
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`pro hac vice in this proceeding under 37 C.F.R. § 42.10. Patent Owner's lead and
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`Case IPR2013-00007
`Patent 7,461,353
`backup counsel are registered practitioners. As supported by Mr. Chu's
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`Declaration, Mr. Chu is an experienced patent litigation attorney with 35 years of
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`patent litigation experience. Mr. Chu has an established familiarity with the
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`subject matter at issue, being that he is the lead trial counsel for SoftView against
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`Petitioners in the co-pending litigation. The co-pending litigation involves U.S.
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`Patent No. 7,461,353 and similar invalidity arguments as in this proceeding.
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`V.
`
`NO OPPOSITION TO THIS MOTION
`
`Patent Owner has conferred with Petitioners with regard to this Motion, and
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`Petitioners have confirmed that they will not oppose it.
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`VI.
`
`CONCLUSION
`
`In light of the foregoing, Patent Owner respectfully requests that the Board
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`admit Morgan Chu pro hac vice in this proceeding.
`
`
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`
`
` Respectfully submitted,
`
`Dated: July 8, 2013
`
`By: /Ben Yorks/
`
`
`
`
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`2827078
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`
` Ben Yorks
`
`IRELL & MANELLA LLP
`Ben Yorks, Esq. (Reg. No. 33,609)
`Babak Redjaian, Esq. (Reg. No. 42,096)
`840 Newport Center Drive, Suite 400
`Newport Beach, CA 92660
`Telephone: (949) 760-0991
`Fax: (949) 760-5200
`
`Attorneys for Patent Owner
`SoftView LLC
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`Case IPR2013-00007
`Patent 7,461,353
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on July 8, 2013,
`
`a copy of the foregoing document "SOFTVIEW'S UNOPPOSED MOTION FOR
`PRO HAC VICE ADMISSION OF MORGAN CHU UNDER 37 C.F.R. §
`42.10(c)" was served by electronic mail, as agreed to by the parties, upon the
`following:
`
`
`Richard P. Bauer (richard.bauer@kattenlaw.com)
`Michael Tomsa (michael.tomsa@kattenlaw.com)
`Eric C. Cohen (eric.cohen@kattenlaw.com)
`Katten Muchin Rosenman LLP
`2900 K Street NW – Suite 200
`Washington, DC 20007-5118
`(202) 625-3500 (tel)
`(202) 298-7570 (fax)
`
`
`Counsel for Kyocera Corporation.
`
`
`
`
`John C. Alemanni (jalemanni@kilpatricktownsend.com)
`Candice C. Decaire (CDecaire@kilpatricktownsend.com)
`David A. Reed (DaReed@kilpatricktownsend.com)
`KILPATRICK TOWNSEND & STOCKTON LLP
`1001 West Fourth Street
`Winston-Salem, NC 27101-2400
`(336) 607-7311 (tel)
`(336) 734-2621 (fax)
`
`
`Counsel for Motorola Mobility LLC.
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`2827078
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`/Babak Redjaian/
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