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`Paper No. 18
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PNY TECHNOLOGIES, INC.
`
`Petitioner
`
`V.
`
`PHISON ELECTRONICS CORP.
`
`Patent Owner
`
`Case IPR20l3—-00472
`
`Patent 7,5 l 8,879
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`PETITIONER’S MOTION FOR PRO HAC VICE ADMISSION OF
`
`MATTHEW SKLAR UNDER 37 C.F.R. § 42.10
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`E—Fz'Zed Via PRPS
`
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`
`P. O. Box 1450
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`Alexandria, VA 22313-1450
`
`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 Matthew Sklar into the present proceeding (IPR20l3-00472).
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`MEI 17527234v.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 CFR. §
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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 twenty—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 Matthew Sklar in Support of Motion for Pro Hac Vice
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`Admission, attached hereto and made a part hereof (the “Sklar 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. Sklar
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`will be added as back—up counsel in this proceeding.
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`Mr. Sklar 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. Sklar 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. Sklar’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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`ME] l7527234v.2
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`for the District of Delaware, Civil Action No.
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`l:l2—cv—0l478—GMS. Mr. Sklar 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. Sklar works closely with the undersigned lead and back-up counsel in
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`this matter. Mr. Sklar 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 l7527234v,2
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`counsel is an experienced litigating attorney and has an established
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`familiarity with the subject matter at issue in the proceeding.
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`37 C.F.R. §42.10(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. Sklar is an experienced litigator and has ample familiarity with the
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`subject matter at issue in this IPR proceeding. Mr. Sklar 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. Sklar 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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`MEI 17527234v.2
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`IV. Conclusion
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`In View of the foregoing and the attached Sklar Declaration, Petitioner most
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`respectfully submits that there is good cause for the Board to recognize Mr. Sklar
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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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`
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`By: Mrk E. Nikolsky (Lead ou sel)
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`
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`(Bacl<—Up Counsel)
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`Reg. No. 48,3
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`
`. Chokshi
`By: Sanj iv
`Reg. No. 44,080
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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)
`
`April 25, 2014
`Dated
`
`Agril 25, 2014
`Dated
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`MEI 17527234v.2
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`
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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
`
`DECLARATION OF MATTHEW SKLAR
`
`IN SUPPORT OF MOTION FOR PRO HAC VICE ADMISSION
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`E-Filed Via PRPS
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`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`
`P. O. Box 1450
`
`Alexandria, VA 22313-1450
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`I, Matthew Sklar, hereby attest to 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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`the Bar of the State of New York, and the Bar of the District of Columbia.
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`I am
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`admitted to practice before the U.S. District Court for the District of New Jersey,
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`the U.S. District Court for the Southern District of New York, the U.S. District
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`MEI l7527234V.2
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`Court for the Eastern District of New York, the U.S. Court of Federal Claims, and
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`the U.S. Court of Appeals for the Federal 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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`vi.
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`I will be subject to the USPTO Rules of Professional Conduct and
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`disciplinary jurisdiction under 37 C.F.R. § l1.l9(a).
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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 several years of litigation experience.
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`I have
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`an established familiarity with the subject-matter at issue in this proceeding, e.g.,
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`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 District Court for the District of Delaware,
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`MEI 17527234v.2
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`Civil Action No. 1:12-cv—0l478-GMS.
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`I have been involved with this litigation
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`since near its inception and am familiar with all facets of the dispute, including but
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`not limited to, the subject-matter of the ‘879 Patent and its relationship with the
`
`prior art.
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`I have also worked closely with lead and back—up counsel in this matter
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`(Messrs. Nikolsky and Chokshi).
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`I am familiar with the Petition for Inter Partes
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`Review of the ‘879 Patent (Paper No. 1), the prior art cited by this petition, the
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`arguments and factual assertions made by this petition, and the file history of the
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`‘879 Patent.
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`I hereby certijfiz 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. § - 1001, and may jeopardize the validity of the application or any
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`-
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`e
`Ma hew Sklar
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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 17527234v.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 IPR20l3—00472
`
`Patent 7,518,879
`
`CERTIFICATE OF SERVICE
`
`E—Filed Via PRPS
`
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`
`P. O. Box 1450
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`Alexandria, VA 223 l3—145O
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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
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`VICE ADMISSION OF MATTHEW SKLAR,
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`including
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`the
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`DECLARATION OF MATTHEW SKLAR 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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`ME] l7527234V.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.com, Hoffman@fr.con1, and
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`IPR23490—0OO8lPl@fr.corn.
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`A ril 25 2014
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`Dated
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`
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`By: Mark E. Nikolsky (Lead
`Reg. No. 48,319
`
`ounsel)
`
`
`
`Attorney for PNY Technologies, Inc.
`McCarter & English, LLP
`Four Gateway Center
`100 Mulberry Street
`Newark, New Jersey 07102
`973.639.6987 (Mr. Nikolsky)
`
`ME] l7527234V.2
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`Cert. 2