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`Paper No. 17
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`PNY TECHNOLOGIES, INC.
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`Petitioner
`
`V.
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`PHISON ELECTRONICS CORP.
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`Patent Owner
`
`Case IPR2013-00472
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`Patent 7,518,879
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`PETITIONER’S MOTION FOR PRO HAC VICE ADMISSION OF
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`JONATHAN SHORT UNDER 37 C.F.R. § 42.10
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`E—FiZed Via PRPS
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`Patent Trial and Appeal Board
`United States Patent and Trademark Office
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`P. O. Box 1450
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`Alexandria, VA 22313-1450
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`To the Honorable Patent Judge Turner:
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`PNY Technologies, Inc. (“Petitioner”) respectfully requests the pro hac vice
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`admission of Jonathan Short into the present proceeding (IPR2013—00472).
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`MEI 1749014lv.2
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`I.
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`Introduction
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`This motion is filed further to the Notice of Filing Date Accorded to Petition
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`and Time for Filing Patent Owner Preliminary Response, Paper No. 4 (the
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`“Notice”), which authorizes motions for pro hac vice admission under 37 C.F.R. §
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`42.10. Further to the Notice, this motion is filed in accordance with the “Order —
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`Authorizing Motion for Pro Hac Vice Admission” in Case IPR 2013-00010 (the
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`“Order”) and no sooner than tw_enty—one (21) days after service of the petition.
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`In
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`accordance with the Order, this motion includes the following Statement of Facts,
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`as well as a Declaration of Jonathan Short in Support of Motion for Pro Hac Vice
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`Admission, attached hereto and made a part hereof (the “Short Declaration”).
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`II.
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`Statement of the Facts
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`Lead counsel for Petitioner, Mark Nikolsky, is a patent attorney registered to
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`practice before the USPTO. Mr. Nikolsky will remain as lead counsel. Mr. Short
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`will become back—up counsel.
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`Mr. Short is an experienced patent litigator with an extensive background in
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`the fields of intellectual property and information technology law.
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`Mr. Short has an established familiarity with the subject matter at issue in
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`this proceeding, e.g., U.S. Patent No. 7,518,879 (the “’879 Patent”), at least by
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`virtue of Mr. Short’s active role as co—counsel in the co—pending patent litigation of
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`the ‘879 Patent and another related patent before the United States District Court
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`MEl l7490l4lv.2
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`for the District of Delaware, Civil Action No.
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`l:l2—cv—01478—GMS. Mr. Short has
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`been substantially involved with this litigation and is familiar with all facets of the
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`dispute, including but not limited to, the subject matter of the ‘879 Patent and its
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`relationship with the prior art.
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`Mr. Short works closely with the undersigned lead and back~up counsel in
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`this matter. Mr. Short has reviewed, and is familiar with, the Petition for Inter
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`Partes Review of the ‘879 Patent (Paper No. 1), the prior art cited by this petition,
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`the arguments and factual assertions made by this petition, and the file history of
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`the ‘879 Patent.
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`III. Argument
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`Upon a showing of good cause, the Board may admit counsel who are not
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`register practitioners to appear pro hac vice in IPR and other Board proceedings.
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`The applicable rule provides as follows:
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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
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`counsel be a registered practitioner and to any other conditions as the
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`Board may impose.
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`For example, where the lead counsel
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`is a
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`registered practitioner, a motion to appear pro hac vice by counsel
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`who is not a registered practitioner may be granted upon showing that
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`MEI l7490l4lv.2
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`counsel is an experienced litigating attorney and has an established
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`familiarity with the subj ect matter at issue in the proceeding.
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`37 C.F.R. § 42.l0(c).
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`As
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`seen in the Statement of Facts above and in the accompanying
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`declaration, the conditions for admission pro hac vice have been satisfied.
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`In
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`particular, Mr. Short is an experienced litigator and has ample familiarity with the
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`subject matter at issue in this IPR proceeding. Mr. Short has never been censured,
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`disciplined, suspended, nor denied admission by any court or administrative body.
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`Further, Mr. Short agrees to comply with or be subject to all relevant procedural
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`and ethical rules. Finally, a registered practitioner, the undersigned Mr. Nikolsky,
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`will remain as lead counsel.
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`MEl l749()l4lv.2
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`IV. Conclusion
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`In View of the foregoing and the attached Short Declaration, Petitioner most
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`respectfully submits that there is good cause for the Board to recognize Mr. Short
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`pro hac vice as additional back-up counsel in this IPR.
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`Respectfully Submitted,
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`A ril 25 2014
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`Dated
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`
`
`. Chokshi
`Byi Sanjiv
`Reg. No. 44,080
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`(Back—Up Counsel)
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`Attorneys for PNY Technologies, Inc.
`McCarter & English, LLP
`Four Gateway Center
`100 Mulberry Street
`Newark, New Jersey 07102
`973.639.6987 (Mr. Nikolsky)
`973.848.5368 (Mr. Chokshi)
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`April 25, 2014
`Dated
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`MEI 1749014lv.2
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PNY TECHNOLOGIES, INC.
`
`Petitioner
`
`V.
`
`PHISON ELECTRONICS CORP.
`
`Patent Owner
`
`Case IPR2013—00472
`
`Patent 7,518,879
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`DECLARATION OF JONATHAN SHORT
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`IN SUPPORT OF MOTION FOR PRO HAC VICE ADMISSION
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`E—Fz'led Via PRPS
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`Patent Trial and Appeal Board
`United States Patent and Trademark Office
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`P. O. Box 1450
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`’
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`Alexandria, VA 22313-1450
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`1, Jonathan Short, hereby attest and declare the following:
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`i.
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`I am a member in good standing of the Bar of the State of New Jersey
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`and the Bar of the State of Massachusetts.
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`I am admitted to practice before the
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`U.S. District Court for the District of New Jersey, the U.S. District Court for the
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`District of Massachusetts, the U.S. District Court for the Eastern District of Texas,
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`the U.S. District Court for the Eastern District of Wisconsin, the U.S. Court of
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`MEI 17490141V.2
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`Appeals Federal Circuit, the U.S. Court of Appeals Second Circuit, and the U.S.
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`Court of Appeals Third Circuit.
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`ii.
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`I have never been suspended or disbarred from practice before any
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`court or administrative body.
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`iii.
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`I have never had an application for admission to practice before any
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`court or administrative body denied.
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`iv.
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`No sanction or contempt citation has been imposed against me by any
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`court or administrative body.
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`v.
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`I have read and will comply with the Office Patent Trial Practice
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`Guide and the Board’s Rules of Practice for Trials set forth in part 42 of the C.F.R.
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`I will be subject to the USPTO Rules of Professional Conduct and
`vi.
`disciplinary jurisdiction under 37 C.F.R. § ll.l9(a).
`I
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`vii.
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`I have not applied to appear pro hac vice before the Office in any
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`other proceeding within the last three (3) years.
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`viii.
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`I am an experienced litigator in the fields of intellectual property and
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`information technology law, and have over ten (10) years of litigation experience
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`in the federal and state courts.
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`I have an established familiarity with the subject-
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`matter at issue in this proceeding, e.g., U.S. Patent No. 7,518,879 (the “’879
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`Patent”), at least by virtue of my active role as co—counsel in the co-pending patent
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`litigation of the ‘879 Patent and another related patent before the United States
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`MEI l749014lv.2
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`District Court for the District of Delaware, Civil Action No. 1:12-cV—O1478-GMS.
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`I have been involved with this litigation since near its inception and am familiar
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`with all facets of the dispute, including but not limited to, the subject—matter of the
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`‘879 Patent and its relationship with the prior art.
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`I have also worked closely with
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`lead and back—up counsel in this matter (Messrs. Nikolsky and Chokshi).
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`I am
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`familiar with the Petition for Inter Partes Review of the ‘879 Patent (Paper No. 1),
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`the prior art cited by this petition, the arguments and factual assertions made by
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`this petition, and the file history of the ‘879 Patent.
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`I hereby certifiz that all statements made herein ofmy own knowledge are true, and
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`that all statements made on information and belief are believed to be true, and
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`further certify that these statements were made with the knowledge that willful
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`false statements and the like are punishable by fine or imprisonment, or both,
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`under 18 US. C. 59 1001, and may jeopardize the validity of the application or any
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` Jonathan Short
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`
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`patent issuing thereon.
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`Dated:
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`April 15 , 2014
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`MEI l7490l4lv.2
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PNY TECHNOLOGIES, INC.
`
`Petitioner
`
`V.
`
`PHISON ELECTRONICS CORP.
`
`Patent Owner
`
`Case IPR2013~00472
`Patent 7,518,879
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`CERTIFICATE OF SERVICE
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`E—Fz’led Via PRPS
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`Patent Trial and Appeal Board
`United States Patent and Trademark Office
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`P. O. Box 1450
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`Alexandria, VA 22313-1450
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`To the Honorable Patent Judge Turner:
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`I hereby certify that a true and correct copy of this MOTION FOR PRO
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`HAC VICE ADMISSION OF
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`JONATHAN SHORT,
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`including
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`the
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`DECLARATION OF JONATHAN SHORT IN SUPPORT OF MOTION FOR
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`PRO HAC VICE ADMISSION attached thereto and made a part thereof and
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`further including this Certificate of Service, has been served in its entirety on April
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`MEI 17490l41V.2
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`Cert. 1
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`
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`25, 2014, Via electronic mail
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`to Griswold@fr.coin, Hoffman@fr.com, and
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`IPR23490—0008IPl@fr.corn.
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`April 25, 2014
`Dated
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`By:
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`
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`Mar E. Nikolsky (Lead ounsel)
`Reg. No. 48,319
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`
`
`
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`Attorney for PNY Technologies, Inc.
`McCarter & English, LLP
`Four Gateway Center
`100 Mulberry Street
`Newark, New Jersey 07102
`973.639.6987 (Mr. Nikolsky)
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`ME] l7490l4lV.2
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`Cert. 2