Trials@uspto.gov
`571-272-7822
`
`
`Paper 18
`Entered: February 22, 2013
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`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
`____________
`
`Case IPR2013-00092
`Patent 6,218,930
`
`
`
`Before JAMESON LEE, JONI Y. CHANG, and JUSTIN T. ARBES,
`Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`
`DECISION
`Network-1 Motion for Pro Hac Vice Admission of Greg Dovel
`37 C.F.R. § 42.10
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`Patent Owner Network-1 Security Solutions, Inc. (“Network-1”)
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`requests pro hac vice admission of Mr. Greg Dovel. Paper 13. Network-1
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`provides a declaration from Mr. Dovel in support of its request. Ex. 2001.
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`Petitioners oppose Network-1’s motion. Paper 16. For the reasons stated
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`Case IPR2013-00092
`Patent 6,218,930
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`below, Network-1’s motion is granted.
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`The Board may recognize counsel pro hac vice during a proceeding
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`“upon a showing of good cause, subject to the condition that lead counsel be
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`a registered practitioner and to any other conditions as the Board may
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`impose.” 37 C.F.R. § 42.10(c). For example, where the lead counsel is a
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`registered practitioner, a non-registered practitioner may be permitted to
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`appear pro hac vice “upon showing that counsel is an experienced litigating
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`attorney and has an established familiarity with the subject matter at issue in
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`the proceeding.” Id. In authorizing motions for pro hac vice admission, the
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`Board requires the moving party to provide a statement of facts showing
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`there is good cause for the Board to recognize counsel pro hac vice and an
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`affidavit or declaration of the individual seeking to appear. Paper 9
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`(referencing the “Order – Authorizing Motion for Pro Hac Vice Admission”
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`in IPR2013-00010, at 3-4).
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`In its motion, Network-1 argues that there is good cause for Mr.
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`Dovel’s pro hac vice admission because Mr. Dovel is an experienced
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`litigation attorney and has been involved in numerous patent infringement
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`cases. Paper 13 at 1-2. Network-1 also asserts that as its lead counsel in two
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`litigations where Patent 6,218,930 (the “‘930 patent”) – the patent being
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`challenged in this proceeding – was asserted, Mr. Dovel has an established
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`familiarity with the subject matter at issue in this proceeding. Id. at 2-3. In
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`particular, Network-1 states that Mr. Dovel is lead counsel in Network-1
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`Security Solutions, Inc. v. Alcatel-Lucent USA Inc., et al., E.D. Tex. Case
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`No. 6:11-cv-00492-LED-JDL (the “pending litigation”), filed in 2011 and
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`currently pending, and was lead counsel in Network-1 Security Solutions,
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`Inc. v. Cisco Systems, Inc., et al., E.D. Tex. Case No. 6:08-cv-00030-LED
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`(the “Cisco litigation”), which has settled. Paper 13 at 2.
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`In his declaration, Mr. Dovel attests that:
`
`(1) he has “been primarily litigating patent cases since 2000,” has
`“been lead counsel on over 30 patent cases” and “litigated a
`number of them through trial,” and has “conducted oral
`arguments on 6 patent cases before the Federal Circuit”;
`
`(2)
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`in the Cisco litigation, he “conduct[ed] the Markman hearing,”
`“depos[ed] the Defendant’s technical expert relating to the
`validity of the ‘930 Patent,” and tried the case to a jury,
`including “opening statement, direct examination of Network-
`1’s technical expert and cross-examination of the Defendant’s
`technical expert,” before the case settled on the fourth day of
`trial;
`
`(3) he is a “member in good standing of the Bar of the State of
`California and . . . admitted to practice before the United States
`Supreme Court, United States Courts of Appeals for the Ninth
`Circuit and the Federal Circuit, and six federal District Courts”;
`
`(4) he has “never been suspended, disbarred, sanctioned or cited for
`contempt by any court or administrative body”;
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`(5) he has “never had a court or administrative body deny [his]
`application for admission to practice” and has “never had
`sanctions or contempt citations imposed on [him] by any court
`or administrative body”; and
`
`(6) he has “read and will comply with [the] Office Patent Trial
`Practice Guide and the Board’s Rules of Practice for Trials, as
`set forth in Part 42 of the C.F.R. § § 10.20 et seq. and
`disciplinary jurisdiction under 37 C.F.R. § 11.19(a),” and
`“agree[s] to be subject to the United States Patent and
`Trademark Office Code of Professional Responsibility set forth
`in 37 C.F.R. § § 10.20 et seq. and disciplinary jurisdiction
`under 37 C.F.R. § 11.19(a).”
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`Ex. 2001 ¶¶ 2, 7-13.
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`Based on the facts set forth above, we find that Mr. Dovel is
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`competent to represent Network-1 in this proceeding and that there is a need
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`for Network-1 to have its lead counsel in the litigations involved in this
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`proceeding. We turn now to Petitioners’ arguments as to why good cause
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`does not exist for Mr. Dovel’s pro hac vice admission.
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`Petitioners make three arguments. First, Petitioners argue that a
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`Stipulated Protective Order (Ex. 1016) in the pending litigation prohibits Mr.
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`Dovel from being “counsel of record” in this proceeding and from divulging
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`confidential information received from the defendants, including Petitioners,
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`to Network-1’s other counsel in this proceeding. Paper 16 at 3-6.
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`Petitioners cite the following portion of the Stipulated Protective Order:
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`[Network-1] 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 [Network-1] 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 counsel for [Network-1] 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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`Ex. 1016 ¶ 12 (emphasis added). According to Petitioners, the language of
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`the protective order applies to Mr. Dovel in this inter partes review
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`proceeding because “the phrase ‘any reexamination proceeding’ is used
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`broadly to encompass all forms of Patent Office proceedings (e.g., ex parte
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`or inter partes) involving the ‘930 patent” and “inter partes review is the
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`successor of inter partes reexamination.” Paper 16 at 3-6 & n.2. Petitioners
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`also cite paragraph 23 of the protective order, which states that “Confidential
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`Materials shall be used solely for the purposes of [the pending litigation],”
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`and argue that there would be “an unacceptably high risk of improper use or
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`disclosure” of Petitioners’ confidential information if Mr. Dovel is permitted
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`to appear in this proceeding. Id. at 4-6 (citing Ex. 1016 ¶ 23).
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`We disagree that the presence of the protective order in the pending
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`litigation means there is not good cause to recognize Mr. Dovel pro hac vice.
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`An inter partes review proceeding is not a reexamination proceeding. In an
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`inter partes review proceeding, a petitioner files a petition “request[ing] to
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`cancel as unpatentable 1 or more claims of a patent.” 35 U.S.C. § 311. An
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`inter partes review is an administrative trial (i.e., a “contested case instituted
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`by the Board based upon a petition”) conducted by the Board according to
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`Board rules. 37 C.F.R. §§ 42.2, 42.100(a), 42.100-.123. By contrast,
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`reexaminations are another examination of the claims of a patent and are
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`conducted by a patent examiner according to the procedures established for
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`initial examination. See, e.g., 37 C.F.R. §§ 1.510-.565. Consequently, on its
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`face the protective order’s prohibition on certain litigation counsel acting as
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`counsel of record in “any reexamination proceeding” of the ‘930 patent and
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`revealing confidential information to “reexamination” counsel does not
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`apply to this proceeding.
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`Further, we do not agree with Petitioners that the “risk” that Mr.
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`Dovel might violate the protective order by receiving and improperly using
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`or disclosing confidential information in this proceeding justifies denying his
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`pro hac vice admission. See Paper 16 at 6. Petitioners have not established
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`any violation of the protective order by Mr. Dovel that would indicate a lack
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`of fitness or ability to represent Network-1 in this proceeding, and
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`Petitioners’ argument that he might violate the order at some point in the
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`future is mere speculation. We also note that violators of the protective
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`order may be subject to sanctions or other remedies imposed by the district
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`court. See, e.g., Ex. 1016 ¶ 21 (“Each recipient of any Confidential Material
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`hereby agrees to be subject to the jurisdiction of this Court for purposes of
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`the implementation and enforcement of this Protective Order.”).
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`Petitioners also point to a prior decision in another proceeding
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`denying pro hac vice admission as “recogniz[ing] the risks of lead trial
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`counsel serving as counsel of record in post-grant proceedings.” Paper 16 at
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`6 (citing Paper 21, “Decision – Versata Motion for Pro Hac Vice Admission
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`– 37 C.F.R. § 42.10,” in CBM2012-00001). The decision in
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`CBM2012-00001, however, does not support Petitioners’ position. In that
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`case, the panel found that the patent owner had not met its burden to show
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`good cause for recognizing a particular attorney pro hac vice, noting “the
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`district court’s finding of a pattern of protective order violations in the
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`related litigation for which [the attorney] was lead counsel.” CBM2012-
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`00001, Paper 21 at 4. No such finding by the district court exists here.
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`Second, Petitioners contend that Mr. Dovel does not have an
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`established familiarity with the subject matter at issue in this proceeding
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`because this proceeding “involves prior art and validity issues that were not
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`presented in any of the prior litigations related to the ‘930 patent.” Paper 16
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`at 2, 7-8. According to Petitioners, two of the four prior art references cited
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`in the petition were never asserted in the two litigations. Id. at 7. We find,
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`however, that based on his participation as lead counsel for Network-1 in the
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`pending litigation and Cisco litigation, Mr. Dovel has sufficient knowledge
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`of the ‘930 patent and the technology to which it relates to represent
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`Network-1 in this proceeding. The fact that an attorney may not have been
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`familiar with a subset of the prior art references cited in a petition prior to
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`the filing of the petition does not automatically mean there is not good cause
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`to recognize him or her pro hac vice, particularly when the attorney has
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`significant litigation experience with the challenged patent as Mr. Dovel
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`does here.
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`Third, Petitioners argue that there is no need for Mr. Dovel to
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`participate in this proceeding because Network-1 is already represented by
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`two registered practitioners from a large law firm. Id. at 8. Petitioners
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`further argue that the ‘930 patent has a “relatively limited disclosure” of
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`only seven pages, which “decreases the significance of Mr. Dovel’s prior
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`experience with the patent and the value it may have” in this proceeding. Id.
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`We see no basis to restrict Network-1 to representation by only two
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`attorneys in this proceeding. Nor do we see why the seven-page disclosure
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`of the ‘930 patent lessens Network-1’s need for competent counsel of its
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`choice. As demonstrated by the length and detail of Petitioners’ petition
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`(Paper 8), there will undoubtedly be complex claim construction and
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`patentability issues to be decided in this proceeding, regardless of the length
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`of the ‘930 patent.
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`Network-1 has met its burden to show good cause for Mr. Dovel’s pro
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`hac vice admission in this proceeding. Mr. Dovel will be permitted to
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`appear pro hac vice in this proceeding as back-up counsel only. See 37
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`C.F.R. § 42.10(c).
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`In consideration of the foregoing, it is hereby:
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`ORDERED that Network-1’s motion for pro hac vice admission is
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`Case IPR2013-00092
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`granted and Mr. Greg Dovel is authorized to represent Network-1 as back-up
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`counsel in the instant proceeding;
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`FURTHER ORDERED that Network-1 is to continue to have a
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`registered practitioner as lead counsel in the instant proceeding; and
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`FURTHER ORDERED that Mr. Dovel is to comply with the Office
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`Patent Trial Practice Guide and the Board’s Rules of Practice for Trials, as
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`set forth in Part 42 of the C.F.R., and to be subject to the Office’s Code of
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`Professional Responsibility set forth in 37 C.F.R. §§ 10.20 et seq. and
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`disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
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`Case IPR2013-00092
`Patent 6,218,930
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`PETITIONERS:
`
`Lionel M. Lavenue
`C. Gregory Gramenopoulos
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`lionel.lavenue@finnegan.com
`gramenoc@finnegan.com
`
`PATENT OWNER:
`
`Robert G. Mukai
`Charles F. Wieland III
`Buchanan, Ingersoll & Rooney P.C.
`1737 King St., Suite 500
`Alexandria, VA 22314
`Robert.Mukai@BIPC.com
`Charles.Wieland@BIPC.com
`
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`lb
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`9
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