UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`RICOH AMERICAS CORPORATION and XEROX CORPORATION
`Petitioners
`
`V.
`
`MPHJ TECHNOLOGY INVESTMENTS, LLC
`Patent Owner
`
`Case 1PR2013-00302
`Patent 7,986,426
`
`RICOH AMERICAS CORPORATION AND XEROX CORPORATION’S
`MOTION FOR PRO HA VICE ADMISSION OF
`H. KEETO SABHARWAL 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
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`RICOH AMERICAS CORPORATION and XEROX CORPORATION
`Petitioners
`
`V.
`
`MPHJ TECHNOLOGY INVESTMENTS, LLC
`Patent Owner
`
`Case 1PR2013-00302
`Patent 7,986,426
`
`RICOH AMERICAS CORPORATION AND XEROX CORPORATION’S
`MOTION FOR PRO HA VICE ADMISSION OF
`H. KEETO SABHARWAL 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
`
`
`
`Case 1PR2013-00302 of
`U.S. Patent No. 7,986,426
`
`I.
`
`RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. § 42.10(c) and the Notice of Filing Date Accorded to
`
`Petition in this proceeding (Paper 4, p. 2), Petitioners Ricoh Americas Corporation
`
`and Xerox Corporation ("Petitioners") respectfully request the pro hac vice
`
`admission of H. Keeto Sabharwal in this proceeding.
`
`II.
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`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
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`showing that counsel is an experienced litigating attorney
`
`and has an established familiarity with the subject matter
`
`at issue in the proceeding.
`
`The Authorizing Order requires that any motion for pro hac vice admission
`
`under 37 C.F.R. § 42.10(c) must be filed in accordance with the "Order -
`
`Authorizing Motion for Pro Hac Vice Admission" entered in Case 1PR2013-00010
`
`(MPT) ("Motorola Order"). (See Authorizing Order at 2.)
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`-2-
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`
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`Case 1PR2013-00302 of
`U.S. Patent No. 7,986,426
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`The Motorola Order requires that such motions (1) "[c]ontain a statement of
`
`facts showing there is good cause for the Board to recognize counsel pro hac vice
`
`during the proceeding"; and (2) "[b]e accompanied by an affidavit or declaration of
`
`the individual seeking to appear attesting to the following":
`
`Membership in good standing of the Bar of at least
`
`one State or the District of Columbia;
`
`No suspensions or disbarments from practice
`
`before any court or administrative body;
`
`No application for admission to practice before
`
`any court or administrative body ever denied;
`
`No sanctions or contempt citations imposed by any
`
`court or administrative body;
`
`ii.
`
`iii.
`
`iv.
`
`V. (cid:9)
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`The individual seeking to appear has read and will
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`comply with the Office Patent Trial Practice Guide
`
`and the Board’s Rules of Practice for Trials set
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`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. 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
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`-3-
`
`
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`Case 1PR2013-00302 of
`U.S. Patent No. 7,986,426
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`viii. Familiarity with the subject matter at issue in the
`
`proceeding.
`
`III. STATEMENT OF FACTS
`
`Based on the following facts, and supported by the Affidavit of Mr.
`
`Sabharwal (RIC 10 12) submitted herewith, Petitioners request the pro hac vice
`
`admission of H. Keeto Sabharwal in this proceeding:
`
`1.
`
`Petitioner’s lead counsel, Michael D. Specht, is a registered
`
`practitioner (Reg. No. 54,463).
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`Mr. Sabharwal is a Director at the law firm Sterne, Kessler, Goldstein
`
`and Fox P.L.L.C. (RIC 1012, ¶3.)
`
`Mr. Sabharwal is an experienced litigating attorney. Mr. Sabharwal
`
`has been a litigating attorney for more than nineteen years.
`
`(Id., ¶4.)
`
`Mr. Sabharwal is a member in good standing of the State Bar of New
`
`York and the Bar of the District of Columbia. (Id., ¶5.)
`
`Mr. Sabharwal has never been suspended or disbarred from practice
`
`before any court or administrative body. (Id.)
`
`Aside from the Patent Trial and Appeal Board’s July 16, 2013,
`
`decisions in Case 1PR2012-00022 and Case 1PR2013-00250, no
`
`application of Mr. Sabharwal for admission to practice before any
`
`
`
`Case 1PR2013-00302 of
`U.S. Patent No. 7,986,426
`
`court or administrative body has ever been denied. The Patent Trial
`
`and Appeal Board subsequently granted Mr. Sabharwal pro hac vice
`
`admission in August 7, 2013, decisions. (Id., 16.)
`
`7.
`
`No sanctions or contempt citations have ever been imposed against
`
`Mr. Sabharwal by any court or administrative body.
`
`(Id., ¶7.)
`
`8.
`
`Mr. Sabharwal 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. (Id., ¶8.)
`
`9.
`
`Mr. Sabharwal understands that he will be subject to the USPTO 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).
`
`(Id., ¶9.)
`
`10. Mr. Sabharwal has applied to appear pro hac vice in four other
`
`proceedings before the Office in the last three years:
`
`Case IPR20 12-00022, Case JPR20 13-00012, Case IPR20 13-00015,
`
`and Case 1PR2013-00250. He was admitted pro hac vice in all four
`
`proceedings. (Id., ¶10.)
`
`11.
`
`There is a need for the admission of Mr. Sabharwal so that the real
`
`parties in interest can be represented by counsel of its choice and so as
`
`-5-
`
`
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`Case 1PR2013-00302 of
`U.S. Patent No. 7,986,426
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`to permit Mr. Sabharwal to fully assist with this proceeding (e.g.
`
`depositions).
`
`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION OF
`MR. SABHARWAL IN THIS PROCEEDING
`
`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. 37 C.F.R. §
`
`42.10(c). Petitioner’s lead counsel, Michael D. Specht, is a registered practitioner.
`
`Based on the facts contained herein, as supported by Mr. Sabharwal’s Affidavit,
`
`good cause exists to admit Mr. Sabharwal pro hac vice in this proceeding.
`
`As supported by his affidavit, Mr. Sabharwal is an experienced litigating
`
`attorney with over nineteen years of patent litigation experience. Mr. Sabharwal
`
`also has an established familiarity with the subject matter at issue in this
`
`proceeding. (RIC 1012, ¶4).
`
`Mr. Sabharwal has reviewed in detail the pleadings submitted by Ricoh
`
`Americas Corporation and Xerox Corporation in this proceeding.
`
`(Id., ¶11.) Mr.
`
`Sabharwal’s extensive patent litigation experience provides him with a thorough
`
`understanding of anticipation and obviousness, the legal theories advanced in this
`
`proceeding. (Id.) Mr. Sabharwal has reviewed in detail the patent-in-suit, U.S.
`
`S
`
`
`
`Case 1PR2013-00302 of
`U.S. Patent No. 7,986,426
`
`Patent No. 7,986,426 ("426 patent"). (Id., ¶12.) He has also reviewed documents
`
`from other proceedings concerning the ’426 Patent, including the now-terminated
`
`district court litigation between Engineering & Inspection Services, LLC v. IntPar,
`
`LLC et al., the ongoing litigation filed by the Vermont Attorney General against
`
`MPHJ Technologies Investments, LLC ("MPHJ"), the Assurance of
`
`Discontinuance between the Minnesota Attorney General and MPHJ, and the
`
`Assurance of Discontinuance between the New York Attorney General and MPHJ..
`
`(Id.)
`
`Mr. Sabharwal has engaged in hours of strategic and substantive discussions
`
`regarding this proceeding with the undersigned.
`
`(Id., ¶13.) Mr. Sabharwal is the
`
`primary counsel and advisor to Ricoh Americas Corporation and Xerox
`
`Corporation with respect to this dispute and controversy.
`
`(Id., ¶14.) Mr. Sabharwal
`
`has litigated many patent cases in the fields of electrical engineering and computer
`
`science, involving complex technologies in the consumer & business electronics
`
`industry. For example, he has litigated or is currently litigating cases involving:
`
`telecommunications technology, telecommunications expense management
`
`software, Power over Ethernet technology, Radio-frequency Identification
`
`("RFID") devices, touch screen technology, and mobile computing.
`
`(Id., ¶15.) And,
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`-7-
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`
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`Case 1PR2013-00302 of
`U.S. Patent No. 7,986,426
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`through his many years of litigating patent cases in the fields of electrical
`
`engineering and computer science, he is familiar with network scanning
`
`technology, which is the predominant technology in this proceeding.
`
`(Id., ¶16.)
`
`Thus, Mr. Sabharwal has an established familiarity with the subject matter at
`
`issue in this proceeding.
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`
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`Case 1PR2013-00302 of
`U.S. Patent No. 7,986,426
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`V. CONCLUSION
`
`For the foregoing reasons, there is a need for Ricoh Americas Corporation
`
`and Xerox Corporation to have Mr. Sabharwal involved in this proceeding, thereby
`
`establishing that there is good cause for admitting Mr. Sabharwal. Accordingly,
`
`Ricoh Americas Corporation and Xerox Corporation respectfully requests that Mr.
`
`Sabharwal be admitted pro hac vice in this proceeding.
`
`The Patent Trial and Appeal Board is hereby authorized to charge any fees
`
`associated with this filing to Deposit Account 19-0036 (Customer ID No.
`
`45324).
`
`Respectfully Submitted,
`
`STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
`
`Michael D. Specht (Reg. No. 54,463)
`Jason D. Eisenberg (Reg. No. 43,447)
`Attorneys for Petitioners - Ricoh Americas
`Corporation and Xerox Corporation
`
`Date: January 16, 2014
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`17890191
`
`-9-
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`
`
`Case 1PR2013-00302 of
`U.S. Patent No. 7,986,426
`
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6())
`
`The undersigned hereby certifies that the above-captioned "Ricoh Americas
`
`Corporation and Xerox Corporation’s Motion for Pro Hac Vice Admission of H.
`
`Keeto Sabharwal under 37 C.F.R. § 42.10(c)" and accompanying Affidavit and
`
`Exhibit List were served electronically via e-mail on January 16, 2014, in their
`
`entireties on Attorneys for Patent Owner - MPHJ Technology Investments, LLC:
`
`Scott A. Horstemeyer
`N. Andrew Cram
`Vivek Ganti
`THOMAS I HORSTEMEYER, LLP
`400 Interstate North Parkway, SW
`Suite 1500
`Atlanta, GA 30339
`scott. horsterneyerthomashorsterneyer. corn
`andrew. crain@thornashorstemeyer.com
`vivek. ganti @thornashorstemeyer. corn
`
`STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
`
`Michael D. Specht
`Lead Attorney for Petitioners
`Registration No. 54,463
`
`Date: January 16, 2014
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`- 10-
`
`
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