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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 ALAN J. HEINRICH 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
`
`
`
`2827077
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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 Alan J. Heinrich 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
`
`Representative Order states that the motion must "[c]ontain a statement of facts
`
`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
`
`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
`
`Based on the following statement of facts, and supported by the Declaration
`
`of Alan J. Heinrich submitted herewith, SoftView submits that a showing of good
`
`cause has been made and respectfully requests the pro hac vice admission of Alan
`
`J. Heinrich 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. Heinrich is a Partner at the law firm of Irell & Manella LLP.
`
`(Declaration of Alan J. Heinrich in Support of SoftView's Unopposed
`
`Motions for Pro Hac Vice Admission in IPR2013-00004 and
`
`IPR2013-00007).
`
`4. Mr. Heinrich is an experienced litigating attorney and has extensive
`
`experience in patent law and has litigated patent cases for the past 12
`
`years. (Id.)
`
`5. Mr. Heinrich is a member in good standing of the California State
`
`Bar. (Id.)
`
`6. Mr. Heinrich has never been suspended or disbarred from practice
`
`before any court or administrative body. (Id.)
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`Case IPR2013-00007
`Patent 7,461,353
`7.
`No application filed by Mr. Heinrich 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.
`
`Heinrich by any court or administrative body. (Id.)
`
`9. Mr. Heinrich 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. Heinrich 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. Heinrich is currently seeking pro hac vice admission in the co-
`
`pending, related matter filed by Petitioners, Case No. IPR2013-00004.
`
`Mr. Heinrich 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.)
`
`12. Mr. Heinrich has an established familiarity with the subject matter at
`
`issue in this proceeding. U.S. Patent No. 7,461,353 ("the ‘353
`
`patent") is currently asserted by SoftView against Petitioners Kyocera
`
`Corp. and 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. Filed July 26, 2012), Hon. Leonard P. Stark presiding ("the co-
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`Patent 7,461,353
`pending litigation"). Mr. Heinrich is counsel for SoftView in the co-
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`pending litigation against Petitioners and has engaged closely in
`
`various aspects of the case including depositions of persons involved
`
`in prior art that defendants have asserted against the '353 patent. As a
`
`result, Mr. Heinrich has acquired substantial understanding of the
`
`underlying legal and technological issues at stake in this proceeding.
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`Petitioners have raised similar invalidity arguments in the co-pending
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`litigation as in this proceeding. (Id.) Patent Owner has expended
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`significant time and resources with Mr. Heinrich as counsel in the co-
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`pending litigation, and wishes to continue using Mr. Heinrich as
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`counsel in this proceeding.
`
`IV.
`
`GOOD CAUSE EXISTS FOR PRO HAC VICE ADMISSION OF
`ALAN J. HEINRICH
`
`The facts outlined above in the Statement of Facts, and contained in the
`
`Declaration of Alan J. Heinrich, establish that there is good cause to admit Mr.
`
`Heinrich pro hac vice in this proceeding under 37 C.F.R. § 42.10. Patent Owner's
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`lead and backup counsel are registered practitioners. As supported by Mr.
`
`Heinrich's Declaration, Mr. Heinrich is an experienced litigation attorney with 12
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`years of patent litigation experience. Mr. Heinrich has an established familiarity
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`with the subject matter at issue, being that he is a trial counsel for SoftView against
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`Case IPR2013-00007
`Patent 7,461,353
`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 petition.
`
`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.
`
`VI.
`
`CONCLUSION
`
`In light of the foregoing, Patent Owner respectfully requests that the Board
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`admit Alan J. Heinrich pro hac vice in this proceeding.
`
`
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` Respectfully submitted,
`
`Dated: July 8, 2013
`
`By: /Ben Yorks/
`
`
`
` Ben Yorks
`
`IRELL & MANELLA LLP
`Ben Yorks, Esq.
`PTO Reg. No. 33,609
`Babak Redjaian, Esq.
`PTO 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
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`
`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 ALAN J. HEINRICH 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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`/Babak Redjaian/
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