UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`PNY Technologies, Inc.
`Petitioner
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`v.
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`PHISON ELECTRONICS CORP.
`Patent Owner
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`Case IPR2013-004722
`Patent No. 7,518,879
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`PATENT OWNER PHISON ELECTRONICS CORPORATION’S
`MOTION FOR PRO HAC VICE ADMISSION
`UNDER 37 C.F.R. § 42.10(c)
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`______________________
`Case 2 IPR2014-00150 has been joined with this proceeding
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`PNY Technologies, Inc.
`Petitioner
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`v.
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`PHISON ELECTRONICS CORP.
`Patent Owner
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`Case IPR2013-004722
`Patent No. 7,518,879
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`PATENT OWNER PHISON ELECTRONICS CORPORATION’S
`MOTION FOR PRO HAC VICE ADMISSION
`UNDER 37 C.F.R. § 42.10(c)
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`______________________
`Case 2 IPR2014-00150 has been joined with this proceeding
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`Proceeding No.: IPR2013-004722
`Attorney Docket: 24390-0008IP1
`LIST OF EXHIBITS
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`Exhibit No. Description
`2001
`File History of the ’879 Patent
`2002
`U.S. Publication No. 2007/0178769 to Ni (“Ni Publication”)
`Collins English Dictionary, pp. 350, 452, 725 (2005)
`2003
`Erik Oberg et al., Machinery’s Handbook, 26th Edition, pp. 720-
`2004
`973 (2000)
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.,
`CBM2013-00003 (Paper 7, Oct. 25, 2012)
`DETENTS & DIAMETERS OF SPRING LOADED DEVICES,
`http://www.vlier.com/product_index/sld/
`sel_06_diam.html (2007)
`Affidavit of David M. Barkan In Support of Patent Owner’s
`Motion for Pro Hac Vice Admission
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`2005
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`2006
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`2007
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`i
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`Proceeding No.: IPR2013-004722
`Attorney Docket: 24390-0008IP1
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`Pursuant to 37 C.F.R. § 42.10(c), the Patent Owner (“PHISON
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`ELECTRONICS CORPORATION”) respectfully requests that the Board
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`recognize David M. Barkan as counsel pro hac vice in this proceeding. Patent
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`Owner seeks the counsel of David M. Barkan due to his experience in representing
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`Phison Electronics Corporation in other patent-related matters and particularly due
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`to his familiarity with the substantive and technical issues involved in this
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`proceeding. Mr. Barkan is lead counsel for Patent Owner Phison Electronics
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`Corp. in Phison Electronics Corp. v. PNY Technologies Inc., USDC-D. Del. Case
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`No. C. A. No. 12-1478-GMS/MPT, a co-pending district court case which has been
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`stayed pending the outcome of the present review. This motion is authorized by the
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`Notice of Filing Date Accorded to Petition and Time for Filing Patent Owner
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`Preliminary Response that was mailed on August 8, 2013.
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`Statement of Facts
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`Mr. Barkan is a patent litigation attorney with experience representing
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`clients in patent cases spanning a broad range of computer and network
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`technologies, including flash memory devices, semiconductor memories, computer
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`graphics, programming theory and language, networking protocols and security,
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`semiconductor processing, analog and digital semiconductor devices, distributed
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`systems, and storage devices. Mr. Barkan has tried intellectual property cases
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`1
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`Proceeding No.: IPR2013-004722
`Attorney Docket: 24390-0008IP1
`before judges and juries in US district courts, in the US International Trade
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`Commission, and in arbitration proceedings. Through his practice in such cases,
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`Mr. Barkan has gained substantial experience in jury trials, bench trials, discovery,
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`Markman hearings, and appeals. Mr. Barkan has also been substantively involved
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`in developing technical and legal arguments for patent cases, and working with
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`technical experts and inventors.
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`Prior to beginning his legal career, Mr. Barkan worked as a software
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`engineer, developing various software systems and networked databases. Mr.
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`Barkan began his legal career as a clerk for the Honorable Judge Fern Smith on the
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`United States District Court for the Northern District of California from 1992 to
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`1993. Additionally, Mr. Barkan served as Fish & Richardson’s Nationwide Head
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`of Litigation from 2001 through 2006. Phison Electronics Corporation submits as
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`evidence Exhibit A, David M. Barkan’s biography.
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`David M. Barkan also has particular experience and familiarity with the
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`substantive and technical issues involved in this inter partes review proceeding.
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`Mr. Barkan has been lead counsel on cases involving 17 flash memory patents in
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`multiple courts around the country. Mr. Barkan has also served as lead counsel for
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`Phison Electronics Corp in numerous matters. The most recent of these matters,
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`Phison Electronics Corp. v. PNY Technologies Inc., USDC-D. Del. - Case No. C.
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`2
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`Proceeding No.: IPR2013-004722
`Attorney Docket: 24390-0008IP1
`A. No. 12-1478-GMS/MPT involves U.S. Patent No. 7,518,879 and has been
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`stayed pending the outcome of the present review. Phison Electronics Corporation
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`has invested significant financial resources in each of related matters in which Mr.
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`Barkan served as lead counsel. Moreover, through his representation in these
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`matters, Phison Electronics Corp. has developed a cordial and trusting relationship
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`with Mr. Barkan and understandably wishes to continue to work with Mr. Barkan
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`for the purpose of this proceeding. Mr. Barkan has served as Phison’s lead counsel
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`on various patent matters since 2007. Finally, Mr. Barkan has read and analyzed
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`the patent-at-issue in this proceeding, the petition, the preliminary response and
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`cited portions of the accompanying exhibits for both.
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`1. Affidavit of Individual Seeking to Appear
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`This Motion for Pro Hac Vice Admission is accompanied by an Affidavit of
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`David M. Barkan as required by the Order Authorizing Motion for Pro Hac Vice
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`mailed May 14, 2014.
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`Accordingly, Phison Electronics Corporation submits that there is good
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`cause under 37 C.F.R. § 42.10(c) for the Board to recognize David M. Barkan as
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`counsel pro hac vice during this proceeding.
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`3
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`Proceeding No.: IPR2013-004722
`Attorney Docket: 24390-0008IP1
`Respectfully submitted,
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`/David Hoffman/
`David M. Hoffman
`Reg. No. 54,174
`Counsel for Patent Owner
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`Date: 05/27/2014
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`Customer Number 26171
`Fish & Richardson P.C.
`Telephone: (512) 226-8154
`Facsimile: (512) 320-8935
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`4
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4) and 42.205(b), the undersigned certifies
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`that on May 27, 2014, a complete and entire copy of this Patent Owner Phison
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`Electronic’s Corp’s Motion of Pro Hac Vice Admission of David M. Barkan and
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`associated exhibits were provided via email, to the Petitioner by serving the
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`correspondence address of record as follows:
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`Mark E. Nikolsky
`MCCARTER & ENGLISH, LLP
`Four Gateway Center
`100 Mulberry Street
`Newark, New Jersey 07102
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`Email: mnikolsky@mccarter.com
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`schokshi@mccarter.com
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`/Susan C. Johnson/
`Susan C. Johnson
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(214) 292-4086
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