UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________________
`
`AVAYA INC.
`Petitioner
`
`v.
`
`NETWORK-1 SECURITY SOLUTIONS, INC.
`Patent Owner
`____________________
`
`CASE IPR2013-00071
`U.S. Patent No. 6,218,930
`____________________
`
`Before the honorable Jameson Lee, Joni Y. Chang, And Justin T. Arbes
`
`AVAYA’S OPPOSITION TO MOTION
`FOR PRO HAC ADMISSION OF GREG DOVEL
`
`Petitioner Avaya Inc. (“Avaya”) opposes the Motion [Paper No. 11] of
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`Patent Owner Network-1 Security Solutions, Inc. (“Network-1”) for pro hac vice
`
`admission of its lead district court counsel, Greg Dovel (“Dovel”). Admitting
`
`Dovel pro hac vice would violate two protective orders entered by the United
`
`States District Court for the Eastern District of Texas (“District Court”). First, in
`
`the co-pending litigation between Network-1 and Avaya, the protective order
`
`prohibits Dovel from being “counsel of record” in the present inter partes review.
`
`Second, in a prior litigation brought by Network-1 against Cisco Systems, Inc. and
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`DCACTIVE-22324367.4
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`
`_______________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________________
`
`AVAYA INC.
`Petitioner
`
`v.
`
`NETWORK-1 SECURITY SOLUTIONS, INC.
`Patent Owner
`____________________
`
`CASE IPR2013-00071
`U.S. Patent No. 6,218,930
`____________________
`
`Before the honorable Jameson Lee, Joni Y. Chang, And Justin T. Arbes
`
`AVAYA’S OPPOSITION TO MOTION
`FOR PRO HAC ADMISSION OF GREG DOVEL
`
`Petitioner Avaya Inc. (“Avaya”) opposes the Motion [Paper No. 11] of
`
`Patent Owner Network-1 Security Solutions, Inc. (“Network-1”) for pro hac vice
`
`admission of its lead district court counsel, Greg Dovel (“Dovel”). Admitting
`
`Dovel pro hac vice would violate two protective orders entered by the United
`
`States District Court for the Eastern District of Texas (“District Court”). First, in
`
`the co-pending litigation between Network-1 and Avaya, the protective order
`
`prohibits Dovel from being “counsel of record” in the present inter partes review.
`
`Second, in a prior litigation brought by Network-1 against Cisco Systems, Inc. and
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`DCACTIVE-22324367.4
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`
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`others, the protective order prohibits Dovel from “participat[ion] in any aspect of
`
`any reexamination proceedings” with the narrow exception that he is allowed to
`
`forward certain prior art references to reexamination counsel. Accordingly, the
`
`two protective orders doubly bar Dovel from appearing as counsel of record in the
`
`inter partes review, and his motion for pro hac vice admission should be denied.
`
`I.
`
`STATEMENT OF COUNTER MATERIAL FACTS
`
`Avaya provides the following material facts in opposition to the Motion:
`
`1.
`
`Network-1 is an “intellectual property licensing company” that
`
`“focuses on the acquisition, development, licensing and protection of intellectual
`
`property assets.” No Longer a Security Software Company, Network-1 Security
`
`Solutions, Inc. is Helping Other Companies Monetize Their Intellectual Property –
`
`the First Being a Patent Covering Power Over Ethernet, Which is a New Solution
`
`to Bringing Operating Power to Network Devices, CFOCEO Magazine (January
`
`28, 2011 Issue), available at http://www.ceocfointerviews.com/interviews/NSSI-
`
`Network-111.htm (Exhibit AV-1014). Network-1 has no products (let alone
`
`products that compete with Avaya) and its entire revenue stream is based on the
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`royalties for the ’930 patent. Form 10-Q, Network-1 Security Solutions, Inc. (Nov.
`
`14, 2012) (Exhibit AV-1015).
`
`2.
`
`On September 15, 2011, Network-1 sued Avaya and others in the
`
`District Court asserting infringement of U.S. Patent No. 6,218,930 (“the ’930
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`DCACTIVE-22324367.4
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`patent”). See Network-1 Security Solutions, Inc. v. Alcatel-Lucent USA Inc., Case
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`No. 6:11-cv-492 (E.D. Tex.) (“Litigation”).
`
`3.
`
`Throughout the Litigation, Dovel has been outside counsel to
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`Network-1, and his name has appeared on the signature block on Network-1
`
`filings, including its complaint. See, e.g., Agreed Motion for Entry Of Docket
`
`Control Order, Discovery Order, Order Regarding E-Discovery in Patent Cases,
`
`and Protective Order and Agreed Motion for Extension Regarding Submission of
`
`Agreed Mediator (Exhibit AV-1016).
`
`4.
`
`On September 5, 2012, Network-1 submitted a filing in the Litigation
`
`noting that the parties (including Network-1) had “met and conferred and reached
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`an agreement as to the form and substance of the … [Stipulated] Protective Order,”
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`“reached an agreement regarding [the Stipulated Protective Order],” and asked the
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`District Court to enter the Stipulated Protective Order. See Ex. AV-1016, at 1.
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`5.
`
`On September 7, 2012, the District Court entered the Stipulated
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`Protective Order. See Stipulated Protective Order (Exhibit AV-1017).
`
`6.
`
`On December 19, 2012, Avaya served technical documents on
`
`Dovel’s law firm designating certain of those documents HIGHLY
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`CONFIDENTIAL under the Stipulated Protective Order. See Ltr. from Koide to
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`Luner of 12/19/12 (Exhibit AV-1018).
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`DCACTIVE-22324367.4
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`7.
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`On its website (http://dovellaw.com/who_we_are.php), Dovel’s firm,
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`Dovel & Luner LLP, currently lists seven (7) attorneys. (Exhibit AV-1019). Of its
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`seven attorneys, only Dovel and his partner, Sean Luner, have appeared on
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`pleadings and/or made appearances in the Litigation. See, e.g., Ex. AV-1016.
`
`8.
`
`In a prior litigation in which Network-1 asserted the ’930 patent
`
`against Cisco Systems, Inc. and others, the District Court entered a different
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`Stipulated Protective Order (Exhibit AV-1020) (“Cisco Stipulated Protective
`
`Order”).
`
`II. MATERIAL FACTS IN DISPUTE
`
`Avaya disputes the following purported statements of fact in the Motion:
`
`1.
`
`Avaya disputes that the “statement of facts shows that there is good
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`cause for the Board to recognize Dovel pro hac vice.” See Motion, at 1. As
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`discussed herein, Network-1 has failed to show good cause as Dovel’s appearance
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`in this proceeding would violate the Stipulated Protective Order.
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`2.
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`Avaya disputes that “[Network-1] has expended significant financial
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`resources in the co-pending litigation and prior litigation with [Dovel] as lead
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`counsel.” See Motion, at 3. Dovel’s declaration provides no basis for this
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`statement, Network-1 has not quantified the financial resources that were
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`purportedly expended, and Network-1 has failed to provide any other support.
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`DCACTIVE-22324367.4
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`3.
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`Avaya disputes that Dovel “has a well-established familiarity with the
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`subject matter at issue in this proceeding.” See Motion, at 3. This inter partes
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`review involves prior art and validity issues that were not presented in any of the
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`prior litigations related to the ’930 patent.
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`III. REASONS FOR RELIEF REQUESTED
`
`A. The Stipulated Protective Order in the Current Litigation
`Prohibits Dovel From Being Counsel of Record in This Inter
`Partes Review
`
`The Stipulated Protective Order in the pending litigation allows Network-1’s
`
`outside litigation counsel to participate in Patent Office proceedings involving the
`
`’930 patent, subject to two important restrictions. See Ex. AV-1017, ¶ 12. First,
`
`the district court counsel cannot be “counsel of record” in the Patent Office
`
`proceeding. Second, the district court counsel cannot divulge confidential
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`technical information received from any of the defendants (including Avaya) to
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`Network-1’s patent counsel or agents in the Patent Office proceeding. In
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`particular, the Stipulated Protective Order states:
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`[Network-1] shall create an ethical wall between those
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`persons with access to technical information (e.g.,
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`information relating to the functionality of the disclosing
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`parties’ products rather than confidential economic
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`information
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`relating
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`to such products) designated
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`DCACTIVE-22324367.4
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`“CONFIDENTIAL” or “HIGHLY CONFIDENTIAL”
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`and those individuals who prepare, prosecute, supervise,
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`or assist in the prosecution of any patent application
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`pertaining to Power over Ethernet technology. Outside
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`litigation counsel for [Network-1] who obtains, receives,
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`accesses, or otherwise learns of, in whole or in part,
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`technical information designated “CONFIDENTIAL” or
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`“HIGHLY CONFIDENTIAL,” however, may participate
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`in any reexamination proceeding of the patent at issue in
`
`this Action, except that outside counsel for [Network-1]
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`may not act as counsel of record in any reexamination
`
`proceeding and may not reveal the contents of any
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`“CONFIDENTIAL” or “HIGHLY CONFIDENTIAL”
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`information to reexamination patent counsel or agents.
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`Id. (emphases added).1
`
`
`1 The Stipulated Protective Order is not symmetrical in the sense that counsel
`
`for Avaya can serve as counsel in the Litigation. See Ex. 1017, ¶ 13. This is not
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`inconsistent because, as explained below, the primary purpose of the provision is
`
`to protect defendants’ confidential information and any unauthorized use
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`(continued…)
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`DCACTIVE-22324367.4
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`The Stipulated Protective Order also mandates that confidential materials
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`“shall be used solely for the purposes of [the Litigation]” and not for any other
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`purpose. Id. at ¶ 23.
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`Dovel is “outside counsel” for Network-1in the Litigation. Indeed, the
`
`Motion and his accompanying declaration state that he is “lead counsel.” See
`
`Motion, at 2; Ex. 2001, at 2. Dovel is thus prohibited from participating as
`
`“counsel of record” in any Patent Office proceeding involving the ’930 patent.
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`Although the language of Stipulated Protective Order does not specifically identify
`
`“inter partes review” proceedings, the phrase “any reexamination proceeding” was
`
`used broadly to encompass all forms of Patent Office proceedings (e.g., ex parte or
`
`inter partes) involving the ’930 patent.2 Ex. AV-1017, ¶ 12 (emphasis added).
`
`
`(continued…)
`(inadvertent or otherwise) during a Patent Office proceeding involving the ’930
`
`
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`patent. Network-1 is also a “intellectual property licensing company” without any
`
`products of its own as noted above. Therefore, there is no risk that Avaya’s
`
`attorneys would amend claims in pending applications to encompass Network-1’s
`
`non-existent products.
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`2 Even if Network-1 narrowly interprets “reexamination proceeding” to
`
`exclude inter partes reviews, such an interpretation would still be unavailing in
`
`(continued…)
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`DCACTIVE-22324367.4
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`Thus, this inter partes review falls within the restrictions of the Stipulated
`
`Protective Order.
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`Network-1 is in no place to complain about these restrictions now when it
`
`had met and conferred to negotiate these restrictions, agreed to the “form and
`
`substance” of the Stipulated Protective Order, and asked the District Court to enter
`
`it. See Ex. AV-1016, at 1.
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`More importantly, the purpose of these restrictions in the Stipulated
`
`Protective Order is to prevent Network-1’s outside litigation counsel, steeped with
`
`knowledge of confidential information regarding the defendants’ accused products,
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`from improper use or disclosure of such sensitive information during a Patent
`
`Office proceeding involving the ’930 patent. Indeed, the basic rationale behind
`
`these restrictions is that, even assuming the best of intentions, “certain activities
`
`present an unacceptable risk of the inadvertent use or disclosure of sensitive
`
`information.” Visto Corp. v. Seven Networks, Inc., No. 2:03-CV-333, 2006 WL
`
`
`(continued…)
`view of the scope of the language (i.e., “any”), and the fact that inter partes review
`
`
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`is the recent and direct successor of inter partes reexamination. Compare Pub. L.
`
`No. 112-29, sec. 6, § 311, 125 Stat. 284, 299 (2011) (codified at 35 U.S.C. § 311),
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`with 35 U.S.C. § 311 (2002).
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`DCACTIVE-22324367.4
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`3741891, at *5 (E.D. Tex. Dec. 19, 2006). The Patent Trial and Appeal Board has
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`also recently recognized the risks of lead trial counsel serving as counsel of record
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`in post-grant proceedings. See Decision, Versata Motion for Pro Hac Vice
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`Admission 37 C.F.R. § 42.10, CBM2012-00001 (MPT), Paper No. 21 (denying
`
`motion for admission in view of petitioner’s concerns about lead counsel for patent
`
`owner complying with district court protective order and evidence of lead
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`counsel’s prior infractions).
`
`In this case, Avaya has produced “HIGHLY CONFIDENTIAL” technical
`
`documents to Network-1 in the Litigation. There would be an unacceptably high
`
`risk of improper use or disclosure of Avaya’s confidential material in the inter
`
`partes review if Dovel is allowed to serve as counsel of record and take an active
`
`role in drafting claim amendments, taking depositions, presenting oral arguments,
`
`and other activities in connection with the proceeding. Give his “lead” role and the
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`fact that only one other attorney at his firm has appeared before the District Court,
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`Dovel has undoubtedly gained access to Avaya’s HIGHLY CONFIDENTIAL
`
`information to the extent he has not already. Given this serious risk and the
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`restrictions of the Stipulated Protective Order, the Motion fails to establish good
`
`cause for Dovel’s admission.
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`DCACTIVE-22324367.4
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`B.
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`Except for Transmitting Prior Art, the Cisco Stipulated
`Protective Order Bars Dovel From Any Participation in This Inter
`Partes Review
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`The Cisco Stipulated Protective Order provided for even a narrower role for
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`litigation counsel, such as Dovel, in reexamination proceedings:
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`[O]utside litigation counsel for plaintiff and defendants
`
`who obtain, receive, have access to, or otherwise learn of,
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`in whole or in part, technical information designated
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`CONFIDENTIAL or HIGHLY CONFIDENTIAL may
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`not participate in any aspect of any reexamination
`
`proceedings involving any patent at issue in this
`
`litigation, except that outside counsel for plaintiff and
`
`defendants may forward to reexamination counsel the
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`prior art references themselves that are produced during
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`the course of this litigation.
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`Id., ¶ 12.
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`The Cisco Stipulated Protective Order remains in effect even though that
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`litigation has ended. Id. at 1 (stating that it shall “remain in effect through the
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`conclusion of the litigation and thereafter as set forth below”). Given Dovel’s
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`“lead counsel” role in the Cisco litigation it is inconceivable that he did not
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`“obtain, receive, have access to, or otherwise learn of” CONFIDENTIAL or
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`DCACTIVE-22324367.4
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`HIGHLY CONFIDENTIAL information. See Motion, at 2; Ex. 2001, at 2.
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`Accordingly, Dovel—except for the limited exception of providing certain prior art
`
`references to litigation counsel—should not participate in any aspect of the inter
`
`partes review. And in no event should he participate as counsel of record.
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`IV. CONCLUSION
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`For these reasons, Avaya requests that Network-1’s Motion be denied.
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`Respectfully submitted,
`
`
`February 1, 2013
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`/Jonathan M. Lindsay, Reg. No. 45,810/
`Jeffrey D. Sanok, Reg. No. 32,169
`Jonathan M. Lindsay, Reg. No. 45,810
`CROWELL & MORING LLP
`Intellectual Property Group
`1001 Pennsylvania Avenue, N.W.
`Washington, DC 20004-2595
`Telephone No.: (202) 624-2500
`Facsimile No.: (202) 628-8844
`ATTORNEYS FOR PETITIONER
`
`DCACTIVE-22324367.4
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`- 11 -
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. §§ 42.6(e), 42.105(a))
`
`I hereby certify that on this 1st day of February 2013, true and correct copies
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`of the foregoing “AVAYA’S OPPOSITION TO MOTION FOR PRO HAC
`
`ADMISSION OF GREG DOVEL” was served, in accordance with the parties’
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`electronic service agreement, by electronic mail upon the following lead and
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`backup counsel of record for the Patent Owner:
`
`Robert G. Mukai, Lead Counsel
`Buchanan, Ingersoll & Rooney P.C.
`1737 King St., Suite 500
`Alexandria, VA 22314
`Service E-mail: Robert.Mukai@BIPC.com
`
`Charles F. Wieland III, Back-up Counsel
`Buchanan, Ingersoll & Rooney P.C.
`1737 King St., Suite 500
`Alexandria, VA 22314
`Service E-mail: Charles.Wieland@BIPC.com
`
`
`Respectfully submitted,
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`February 1, 2013
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`Jonathan M. Lindsay, Reg. No. 45,810
`(Back-up Counsel)
`CROWELL & MORING LLP
`Intellectual Property Group
`1001 Pennsylvania Avenue, N.W.
`Washington, DC 20004-2595
`
`
`DCACTIVE-22324367.4
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