`571-272-7822 Date Entered: August 8, 2013
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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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`KYOCERA CORPORATION
`MOTORLOA MOBILITY LLC
`Petitioner
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`v.
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`SOFTVIEW LLC
`Patent Owner
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`Case IPR2013-00007
`Patent 7,461,353
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`Before BRIAN J. McNAMARA, Administrative Patent Judge.
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`ORDER GRANTNG MOTION FOR ADMISSION PRO HAC VICE OF
`ALAN J. HEINRICH
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`37 C.F.R. § 42.10
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`Case IPR2013-00007
`Patent 7,461,353
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`Softview LLC (Patent Owner) moves for the pro hac vice admission of
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`attorney Alan J. Heinrich in accordance with 37 CFR 42.10. (Motion, Paper No
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`24, filed July 8, 2013). The Motion is unopposed. We grant the Motion.
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`I. Discussion
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`As set forth in 37 C.F.R. § 42.10(c), the Board may recognize counsel pro
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`hac vice during a proceeding upon a showing of good cause, subject to the
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`condition that lead counsel be a registered practitioner. For example, where the
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`lead counsel is a registered practitioner, a non-registered practitioner may be
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`permitted to appear pro hac vice “upon showing that counsel is an experienced
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`litigating attorney and has an established familiarity with the subject matter at issue
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`in the proceeding.” 37 C.F.R. § 42.10(c). In authorizing motions for pro hac vice
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`admission, the Board also requires a statement of facts showing, among other
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`requirements, that there is good cause for the Board to recognize counsel pro hac
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`vice and an affidavit or declaration of the individual seeking to appear in this
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`proceeding. (See, Paper 8, referencing the “Order – Authorizing Motion for Pro
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`Hac Vice Admission” in IPR2013-00010, at 3-4.)
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`Patent Owner represents and provides testimony from Alan J. Heinrich
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`indicating that Alan J. Heinrich is an experienced litigating attorney who has
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`litigated patent cases for the past 12 years. (Ex. 2002). Moreover, Mr. Heinrich
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`testifies that he has particular familiarity with the subject matter at issue in the
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`Case IPR2013-00007
`Patent 7,461,353
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`proceeding, as he has acquired a substantial understanding of the relevant legal and
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`technical issues in his role as counsel for Patent Owner in the pending case,
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`Softview LLC v. Kyocera Corp., et al., Civil Action No. 1:12-cv-00989-LPS (D.
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`Del. Filed July 26, 2012), which Patent Owner represents involves the same patent
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`at issue in the current proceeding. (Ex. 2002).
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` Patent Owner has shown good cause why Alan J. Heinrich should be
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`recognized pro hac vice for purposes of this proceeding. The unchallenged
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`testimony of Mr. Heinrich establishes on this record that Mr. Heinrich is an
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`experienced attorney who is familiar with patent litigation and the subject matter at
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`issue and who is otherwise qualified to appear before the Board in this proceeding.
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`Moreover, Alan J. Heinrich’s familiarity with the subject matter of, and
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`involvement
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`in
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`litigation related
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`to,
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`the present proceeding supports a
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`determination that Patent Owner has a sufficient need for Mr. Heinrich’s
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`admission. Patent Owner, through the testimony of Alan J. Heinrich (Ex. 2002),
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`has otherwise complied with the requirements for admission.
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`II. Order
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`It is
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`ORDERED that the Motion seeking admission pro hac vice for Alan J.
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`Heinrich is GRANTED;
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`Case IPR2013-00007
`Patent 7,461,353
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`FURTHER ORDERED that Alan J. Heinrich may not act as lead counsel in
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`the proceeding;
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`FURTHER ORDERED that a registered practitioner must remain as lead
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`counsel throughout the proceeding; and
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`FURTHER ORDERED that Alan J. Heinrich is to comply with the Office
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`Patent Trial Practice Guide and the Board’s Rules of Practice for Trials, as set forth
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`in Part 42 of the C.F.R.; and
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`FURTHER ORDERED that Alan J. Heinrich is to be subject to the
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`Office’s disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and the USPTO
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`Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et. seq., which took
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`effect on May 3, 2013.
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`Case IPR2013-00007
`Patent 7,461,353
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`PETITIONER KYOCERA: (via electronic transmission)
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`Richard P. Bauer (richard.bauer@kattenlaw.com)
`Michael Tomsa (michael.tomsa@kattenlaw.com)
`Eric C. Cohen (eric.cohen@kattenlaw.com)
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`PETITIONER MOTOROLA MOBILITY LLC
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`John C. Alemanni (jalemanni@kilpatricktownsend.com)
`Candice C. Decaire (CDecaire@kilpatricktownsend.com)
`David A. Reed (DaReed@kilpatricktownsend.com)
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`PATENT OWNER: (via electronic transmission)
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`Ben Yorks (byorks@irell.com)
`Babak Redjaian (bredjaian@irell.com)
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