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