U.S. Patent No. 6,218,930
`IPR2013-00092
`Customer Number 22,852
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________________________________
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`SONY CORPORATION OF AMERICA; AXIS COMMUNICATIONS AB; and
`AXIS COMMUNICATIONS INC.
`Petitioners
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`v.
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`NETWORK-1 SECURITY SOLUTIONS, INC.
`Patent Owner
`____________________________________________
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 6,218,930
`Case IPR2013-00092
`Administrative Patent Judges Jameson Lee, Joni Y. Chang, and Justin T. Arbes
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`PETITIONERS’ OPPOSITION TO PATENT OWNER’S
`MOTION FOR PRO HAC VICE ADMISSION OF
`GREG DOVEL, ESQ. PURSUANT TO 37 C.F.R. 42.10
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`Mail Stop: Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`IPR2013-00092
`Customer Number 22,852
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________________________________
`
`SONY CORPORATION OF AMERICA; AXIS COMMUNICATIONS AB; and
`AXIS COMMUNICATIONS INC.
`Petitioners
`
`v.
`
`NETWORK-1 SECURITY SOLUTIONS, INC.
`Patent Owner
`____________________________________________
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 6,218,930
`Case IPR2013-00092
`Administrative Patent Judges Jameson Lee, Joni Y. Chang, and Justin T. Arbes
`
`
`
`
`
`
`PETITIONERS’ OPPOSITION TO PATENT OWNER’S
`MOTION FOR PRO HAC VICE ADMISSION OF
`GREG DOVEL, ESQ. PURSUANT TO 37 C.F.R. 42.10
`
`
`
`
`
`
`
`Mail Stop: Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`I.
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`STATEMENT OF THE PRECISE RELIEF REQUESTED
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`Petitioners Sony Corporation of America, Axis Communications AB, and
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`Axis Communications, Inc. (collectively, “Petitioners”) respectfully oppose the
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`Patent Owner’s Motion for Pro Hac Vice Admission of Greg Dovel, Esq. Pursuant
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`to 37 C.F.R. 42.10 (“the Motion”) and ask that the Motion be denied.
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`Mr. Dovel cannot be admitted pro hac vice in this matter under the terms of
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`the Stipulated Protective Order for a district court litigation in which he is lead
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`counsel for the Patent Owner. The Stipulated Protective Order prohibits him from
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`being “counsel of record” in the present inter partes review. The applicable
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`section of the Stipulated Protective Order exists to prevent precisely what the
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`Motion requests—counsel with access to Petitioners’ confidential information
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`from serving as counsel of record in a Patent Office proceeding involving the
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`patent-in-suit, U.S. Patent No. 6,218,930 (“the ’930 patent”).
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`In addition, although Mr. Dovel has experience litigating the ’930 patent, the
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`Motion fails to demonstrate that he has “established familiarity” with all of the
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`prior art and validity issues involved in this inter partes review. Indeed, two of the
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`prior art references presented for inter partes review were not asserted in any of
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`the prior litigations handled by Mr. Dovel. Moreover, the Patent Owner is already
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`represented by registered patent counsel.
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`1
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`II.
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`STATEMENT IDENTIFYING MATERIAL FACTS IN DISPUTE
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`In accordance with 37 C.F.R. § 42.23(a), Petitioners identify the following
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`purported statements of fact in the Motion which are disputed.
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`1.
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` Petitioners dispute the statement in the Motion that its “statement of
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`facts shows that there is good cause for the Board to recognize Mr. Dovel pro hac
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`vice.” See Motion, p. 1. As discussed herein, sufficient good cause is absent in
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`view of the restrictions of the Stipulated Protective Order, which the Motion fails
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`to even acknowledge or address.
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`2.
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`Petitioners dispute the statement in the Motion that Mr. Dovel “has a
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`well-established familiarity with the subject matter at issue in this proceeding.”
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`See Motion, p. 3. This inter partes review involves prior art and validity issues
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`that were not presented in any of the prior litigations related to the ’930 patent.
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`The Patent Owner’s Motion should be denied for two reasons. The primary
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`reason is that Mr. Dovel’s appearance as counsel of record in this inter partes
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`review would violate the Stipulated Protective Order (Ex. 1016) entered in
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`Network-1 Security Solutions, Inc. v. Alcatel-Lucent USA Inc., et al., No.: 6:11-cv-
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`00492-LED-JDL (E.D. Tex.) (“the Litigation”). Secondly, the Motion fails to
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`demonstrate Mr. Dovel’s “established familiarity” with the subject matter at issue
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`in this inter partes review and that there is good cause for granting the Motion,
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`2
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`despite the restrictions in the Stipulated Protective Order. 37 C.F.R. §§ 42.10(c),
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`42.20(c).
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`A. The Stipulated Protective Order Prohibits Mr. Dovel From Being
`Counsel of Record in This Inter Partes Review
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`The Stipulated Protective Order (Ex. 1016) was entered in the Litigation on
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`September 7, 2012. It allows the Patent Owner’s outside litigation counsel to
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`participate in Patent Office proceedings involving the ’930 patent, subject to two
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`important restrictions. See Ex. 1016, ¶ 12. First, the counsel cannot be “counsel of
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`record” in the Patent Office proceeding. Second, the counsel cannot divulge
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`confidential technical information received from any of the defendants (including
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`the Petitioners) to the Patent Owner’s patent counsel or agents in the Patent Office
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`proceeding. In particular, according to the Stipulated Protective Order:
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`[T]he plaintiff shall create an ethical wall between those
`persons with access to technical information (e.g., information
`relating to the functionality of the disclosing parties’ products rather
`than confidential economic information relating to such products)
`designated “CONFIDENTIAL” or “HIGHLY CONFIDENTIAL” and
`those individuals who prepare, prosecute, supervise, or assist in the
`prosecution of any patent application pertaining to Power over
`Ethernet technology. Outside litigation counsel for the plaintiff who
`obtains, receives, accesses, or otherwise learns of, in whole or in part,
`technical information designated “CONFIDENTIAL” or “HIGHLY
`CONFIDENTIAL,” however, may participate in any reexamination
`proceeding of the patent at issue in this Action, except that outside
`3
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`counsel for the plaintiff may not act as counsel of record in any
`reexamination proceeding and may not reveal the contents of any
`“CONFIDENTIAL” or “HIGHLY CONFIDENTIAL” information
`to reexamination patent counsel or agents.
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`Id. (emphases added).1 The Stipulated Protective Order also mandates that
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`confidential materials “shall be used solely for the purposes of [the
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`Litigation]” and not for any other purpose. Id. at ¶ 23.
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`Mr. Dovel is “outside counsel” for the “plaintiff” (the Patent Owner) in the
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`Litigation. Indeed, the Motion and accompanying declaration state that he is “lead
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`counsel.” See Motion, p. 2; Ex. 2001, p. 2. Mr. Dovel is thus prohibited from
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`participating as “counsel of record” in any Patent Office proceeding involving the
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`’930 patent. Although the language of Stipulated Protective Order does not
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`specifically identify “inter partes review” proceedings, the phrase “any
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`reexamination proceeding” is used broadly to encompass all forms of Patent Office
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`1 Petitioners acknowledge that this provision in the Stipulated Protective Order is
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`not completely reciprocal and that counsel for the Petitioners also serve as counsel
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`in the Litigation. See Ex. 1016, ¶ 13. This is not inconsistent because, as
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`explained below, the primary purpose of the provision is to protect defendants’
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`confidential information and any unauthorized disclosure or use thereof
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`(inadvertent or otherwise) during a Patent Office proceeding for the ’930 patent.
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`4
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`proceedings (e.g., ex parte or inter partes) involving the ’930 patent.2 Ex. 1016,
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`¶ 12 (emphasis added). Thus, this inter partes review falls within the restrictions
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`of the Stipulated Protective Order.
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`More importantly, the purpose of these restrictions in the Stipulated
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`Protective Order is to prevent the Patent Owner’s outside litigation counsel,
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`steeped with knowledge of confidential information regarding the defendants’
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`accused products, from improper use or disclosure of such sensitive information
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`during a Patent Office proceeding involving the ’930 patent. Indeed, the basic
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`rationale behind these restrictions is that, even assuming the best of intentions,
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`“certain activities present an unacceptable risk of the inadvertent use or disclosure
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`of sensitive information.” Visto Corp. v. Seven Networks, Inc., No. 2:03-CV-333,
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`2 Even if the Patent Owner asserts a narrow interpretation of “reexamination
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`proceeding” for the purposes of distinguishing reexamination proceedings (ex
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`parte or inter partes) from any other type of Patent Office proceeding involving
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`the ’930 patent, such an interpretation would still be unavailing in view of the
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`scope of the language (i.e., “any”), the purpose of the restriction, and the fact that
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`inter partes review is the successor of inter partes reexamination. Compare Pub.
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`L. No. 112-29, sec. 6, § 311, 125 Stat. 284, 299 (2011) (codified at 35 U.S.C. §
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`311), with 35 U.S.C. § 311 (2002).
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`5
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`2006 WL 3741891, at *5 (E.D. Tex. Dec. 19, 2006) (Ex. 1017). The Patent Trial
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`and Appeal Board has also recently recognized the risks of lead trial counsel
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`serving as counsel of record in post-grant proceedings. See Decision, Versata
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`Motion for Pro Hac Vice Admission 37 C.F.R. § 42.10, CBM2012-00001 (MPT),
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`Paper 21 (Ex. 1018) (denying motion for admission in view of petitioner’s
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`concerns about lead counsel for patent owner complying with district court
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`protective order and evidence of lead counsel’s prior infractions). In this case,
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`Petitioners have each produced “HIGHLY CONFIDENTIAL” technical
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`documents to the Patent Owner in the Litigation. See Production Letter from Axis
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`to Network-1 (December 19, 2013) (Ex. 1019); Production Letter from Sony to
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`Network-1 (December 19, 2013) (Ex. 1020). Moreover, discovery is on-going in
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`the Litigation and Petitioners will produce more confidential documents before the
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`Board decides whether to institute this inter partes review. There would be an
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`unacceptably high risk of improper use or disclosure of Petitioners’ confidential
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`material in the inter partes review if Mr. Dovel is allowed to serve as counsel of
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`record and take an active role in drafting claim amendments, taking depositions,
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`presenting oral arguments, and other activities in connection with the proceeding.
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`Given this serious risk and the restrictions of the Stipulated Protective Order, the
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`Motion fails to establish good cause for Mr. Dovel’s admission.
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`6
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`B.
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`The Motion Fails to Demonstrate Mr. Dovel’s “Established
`Familiarity” with the Subject Matter Involved in this Inter Partes
`Review
`Under 37 C.F.R. § 42.10(c), a pro hac vice motion “may be granted upon
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`showing that counsel is an experienced litigating attorney and has an established
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`familiarity with the subject matter at issue in the proceeding.” (Emphasis added.)
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`The Motion fails to make such a showing.
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`The Motion describes Mr. Dovel’s general litigation experience as well as
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`his experience litigating the ’930 patent in the current Litigation and prior
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`litigations. See Motion, pp. 1-3. The motion is silent, however, regarding the
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`actual subject matter presented in Petitioners’ petition for inter partes review.
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`Petitioners set forth four prior art positions in their petition of December 19,
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`2012. Of those four positions, Petitioners understand (based on information
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`available to them) that two of the positions are based on references never asserted
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`in any of the prior litigations involving the ’930 patent. In particular, the positions
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`that claims 6, 8, and 9 of the ’930 patent are (1) anticipated by U.S. Patent No.
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`5,345,592 to Woodmas and (2) anticipated by Japanese Publication No. H6-
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`189535 to Satou do not appear to have been previously litigated. Thus, not only
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`does the Motion fail to establish Mr. Dovel’s experience with the actual validity
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`issues presented in this inter partes review, the Motion fails to address the newly
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`7
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`asserted prior art references or demonstrate Mr. Dovel’s “established familiarity”
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`with the same.
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`In addition, the Patent Owner is already represented by registered patent
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`counsel in this inter partes review. The Patent Owner is represented by Buchanan
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`Ingersoll & Rooney PC, a law firm with more than 450 attorneys and other
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`professionals. See Martindale-Hubbell, Buchanan Ingersoll & Rooney PC – Firm
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`Profile, http://www.martindale.com/Buchanan-Ingersoll-Rooney-PC/law-firm-
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`293073.htm (Ex. 1021). Its counsel that filed the Motion has been a registered
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`patent attorney for more than 35 years (since May 19, 1977). Its counsel also
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`presumably has some prior experience with the ’930 patent in view of the
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`Buchanan firm’s appearance in the pending (now stayed) ex parte reexamination
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`granted September 5, 2012 (Control No. 90/012,401). Moreover, the ’930 patent
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`contains only seven pages total, including three drawings and less than two pages
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`of written description. The relatively limited disclosure of the ’930 patent
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`decreases the significance of Mr. Dovel’s prior experience with the patent and the
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`value it may have in this inter partes review. For these additional reasons, good
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`cause does not exist for the Motion.
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`IV. CONCLUSION
`For the foregoing reasons, Petitioners respectfully request that the Patent
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`Owner’s Motion be denied.
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`8
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`Dated: February 1, 2013
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` Respectfully submitted,
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`
` /Lionel M. Lavenue/
`Lionel M. Lavenue (Lead Counsel)
`Reg. No. 46,859
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, LLP
`11955 Freedom Dr.
`Two Freedom Square
`Reston, VA 20190
`Tel. 571.203.2750
`Fax. 202.408.4400
`lionel.lavenue@finnegan.com
`
`C. Gregory Gramenopoulos (Backup
`Counsel)
`Reg. No. 36,532
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Tel. 202.408.4263
`Fax. 202.408.4400
`gramenoc@finnegan.com
`
`9
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`U.S. Patent No. 6,218,930
`Petition for Inter Partes Review
`Petitioners’ Certificate of Service
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. §§ 42.6(e), 42.105(a))
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`Pursuant to 37 C.P.R. §§ 42.6(e) and 42.105(a), this is to certify that I
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`
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`caused to be served a true and correct copy of the foregoing “Petitioners’
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`Opposition to Patent Owner’s Motion for Pro Hac Vice Admission of Greg Dovel,
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`Esq. Pursuant to 37 C.F.R. 42.10” by Federal Express delivery, on this 1st day of
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`February, 2013 on the Patent Owner at the correspondence address of the Patent
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`Owner as follows:
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`
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`BUCHANAN, INGERSOLL & ROONEY PC
`1737 KING STREET, SUITE 500
`ALEXANDRIA, VA 22314-2727
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`Dated: February 1, 2013
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`Respectfully submitted,
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`/Troy L. Gwartney/
`Troy L. Gwartney
`Reg. No. 61,388
`(Attorney of Record)
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`11955 Freedom Dr.
`Two Freedom Square
`Reston, VA 20190
`Tel. 571.203.2700
`Fax. 202.408.4400
`
`
`
`
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