' Case NO. IPR2013-OO4’79 (MPT)
`Patent No. 5,832,494
`
`Paper NO.
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FACEBOOK, INC, LINKEDIN CORR, and TWITTER, INC,
`Petitioners
`‘
`
`V.
`
`SOFTWARE RIGHTS ARCHIVES, LLC
`Patent Owner
`
`
`
`Case NO. IPR2013—00479 (MPT)
`Patent No. 5,832,494
`
`PETITIONERS’ MOTION FOR PRO HAC VICE ADMISSION
`UNDER 37 CPR. § 4210(0)
`
`77405302
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`

`

`Petitioneis Linkedln C0133 and Twittei, Inc. 1espectfully 1equest that the
`Board recognize David J Silbeit, Esq, as counsel pro hac vice during this
`
`proceeding.
`
`I.
`
`BACKGROUND
`
`Petitioners’ Motion for Pro Hac Vice Admission is being filed in compliance
`with and pursuant to the i‘Order—“Authorizing Motion for Pro Hac Vice
`
`Admission” in Case No. lPR20l3-00010 (MPT).
`
`II.
`
`STATEMENT OF FACTS
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`As required by the Order, the following statement of facts shows that there is
`
`good cause for the Board to recognize Mi. Silbeit pro [vac vice.
`
`Mr. Silbert is a highly experienced patent litigation attorney, who has been
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`involved in numerous patent litigations before the federal district courts, the US.
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`Court of Appeals for the Federal Circuit, and the US. International Trade
`
`Commission. He has particularly deep experience litigating complex software»
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`related patents, such as the patents at issue in the instant Petition. Mr. Silbert’s
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`biography is attached hereto as Exhibit A;
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`Mr. Silbert has substantial experience with US. Patent No. 5,832,494. Mr.
`
`Silbert drafted and/or revised the petitions already filed in this proceeding.
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`Moreover, Mr. Silbert represents Linkedln Corp. and Twitter, Inc. in the co—
`
`pending litigation between the parties, Software Rights Archive LLC 12. Facebook,
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`774053102
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`

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`Ina, No. 5:12ucv~03970 RMW (ND. Cal. 2012); Software Rights Archive LLC v.
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`Lin/cedln,C0rp., No. 5:12ecv~0397l RMW (ND. Cal. 2012); and Software Rights
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`Archive LLC v. Twitter, .Inc., No. 5:12~CV—03972 RMW (N.D.‘Cel. 2012). As a
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`result, Mr. Silbert has established familiarity with the subject matter at issue in this
`
`proceeding, including extensive knowledge of the printed prior art submitted in the
`
`instant Petition, the district court’s prior claim construction order, and related
`
`matters.
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`Counsel for Patent Owner does not oppose Mr. Silbert appearing pro hac
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`vice during this proceeding.
`
`Therefore, Petitioners! respectfully submit that there is good cause for the
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`Board to recognize Mr. Silbert as counsel pro hac vice during this proceeding.
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`III.
`
`AFFIDAVIT OR DECLARATION OF INDIVIDUAL SEEKING TO
`APPEAR
`'
`
`Petitioners’ Motion, for Pro Hac Vice Admission is accompanied by an
`
`Affidavit of David J. Silbert as required by the Order.
`
`77405302
`
`

`

`DATED: October 2, 2013
`
`Respectfully submitted,
`
`/Heidi KeeZe/
`Heidi Keefe
`
`Registration No. 40,673
`Counsel for Petitioners
`
`Cooley LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`774053.02
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`

`

`EXHIBIT A '
`
`

`

`KEKER & VAN NESTtlP
`
`David J. Silbert
`
`Education
`UC Hastings College of the Law, J.D., magna cum laude, 1994
`
`Georgetown University, B.A., 1990
`
`Clerkships
`Hon. Judith N. Keep
`Chief Judge, U.S. District Court, Southern District of California, 1995-1996
`
`Bar Admissions
`California
`
`Partner
`dsilbert@kvn.com ·
`Tel. (415) 676-2261
`
`Overview
`David Silbert has won or favorably resolved cases in state and federal courts across the country. Mr. Silbert has
`successfully represented plaintiffs and defendants in patent cases involving cable television , semiconductors, medical
`devices, recombinant DNA, and numerous other technologies. He has defended several national law firms and their
`partners against claims of malpractice, and represented individuals in government and internal investigations.
`
`Patent Cases of Note
`VS Technologies LLC v. Twitter Inc.: By winning a defense verdict in this federal jury trial, we protected Twitter Inc.
`from a patent infringement suit and $40 million damages claim. Virginia-based VS Technologies had obtained a
`patent for "an interactive virtual community of famous people," and sued Twitter over its virtual community
`technology. During the six-day trial, we argued that Twitter's Browse Interests feature did not infringe the terms of the
`patent and that in fact, the patent was invalid. The jury agreed, and found Twitter not liable for patent infringement.
`
`Acacia Media Technology v. Comcast Cable Communications, LLC: We defended Comcast Cable
`Communications, LLC as part of a large joint-defense group handling patent infringement claims related to video-on(cid:173)
`demand services. The plaintiff, Acacia Media Technology, sought hundreds of millions in royalties from more than 40
`cable TV, satellite TV, and Internet streaming companies, alleging its patents covered virtually all transmission of
`compressed digital video or audio files. After extensive claim-construction proceedings, U.S. District Judge James
`Ware held that the patents were invalid and granted summary judgment for our client and the other defendants. The
`U.S. Circuit Court of Appeals for the Federal Circuit affirmed that judgment.
`
`Commonwealth Scientific and Industrial Research Organization v. Intel Corporation, et al.: We served as lead
`trial counsel in a monumental patent infringement trial in the Eastern District of Texas. This case involved more than
`a dozen defendants represented by prominent national law firms. Australia's Commonwealth Scientific and Industrial
`Research Organization (CSIRO) alleged that the world's leading computer manufacturers, including our client, had
`infringed on its patented wireless technology. One week into the jury trial, our client reached a confidential settlement
`with CSIRO . Following the favorable outcome, other defendants hired us to represent them in the remainder of the
`trial.
`
`Comcast Cable Communications, LLC v. Finisar Corporation: We won summary judgment dismissing
`Sunnyvale-based Finisar Corporation's patent infringement claim against Comcast Cable Communications, LLC. We
`first convinced U.S. District Court Judge William Alsup to cut potential damages from $590 million to $140 million, and
`later to invalidate the data transmission patent at issue. Finisar appealed, however the U.S. Court of Appeals for the
`Federal Circuit affirmed the district court's ruling.
`
`Broadcom Corporation v. SiRF Technology and CSR: We served as trial counsel for Broadcom, one of the
`world's leading semiconductor companies, against SiRF, a GPS chip manufacturer, and its parent CSR. Broadcom
`asserted multiple patents covering graphics, video processing, and digital signal processing techniques, as well as
`claims arising under the Lanham Act and unfair competition laws. This case, along with other actions between the
`parties, was settled shortly before trial on terms that were very favorable to Broadcom .
`
`Keker & Van Nest LLP 1 633 Battery Street, San Francisco, CA 94111·1809 1 415 391 5400 1 kvn.com
`
`

`

`KEKER & VAN NESTllP
`
`Medlmmune, Inc. v. Genentech, Inc.: We defended Genentech's groundbreaking patent on recombinant antibody
`technology against an invalidity challenge by Medlmmune. The argument before the court concerned a licensee's
`ability to challenge the validity of a patent while still paying royalties for the technology. The case was dismissed
`before trial, without the requested finding that the Cabilly II patent was invalid.
`
`ThermaWave v. Jenoptik: We represented semiconductor test equipment manufacturer ThermaWave in a patent
`infringement case against a German competitor, Jenoptik. We won a jury verdict of infringement and validity, and
`secured a permanent injunction barring Jenoptik from importing its equipment.
`
`Beneficial Innovations, Inc. v. Careerbuilder, LLC, et al.: We represented Comcast Cable Communications in a
`patent infringement action in the Eastern District of Texas. The plaintiff alleged its patents cover systems and
`methods for online advertising, and sued numerous cable, Internet, and media companies. We reached a favorable
`settlement for our client.
`
`Advice Re Patent Litigation -Open TV and Liberate Technologies: We defended patent infringement claims
`related to interactive television. The case settled on confidential terms following mediation.
`
`SoftView LLC v. Apple Inc. et al.: We are defending HTC in a lawsuit in the District of Delaware in which the
`plaintiff is asserting patent claims that purport to cover web-browsing technology on mobile devices.
`
`Fresenius Medical Care v. Baxter International, etc: The plaintiff alleged our client, one of the world's largest
`manufacturers of kidney dialysis machines, infringed on patents for touchscreens.
`
`Web Telephony v. Comcast Cable Communications, LLC: We are defending Comcast Cable Communications,
`LLC from claims that its Digital Voice system infringed on four patents owned by patent troll Web Telephony, Inc. The
`case is proceeding in the Eastern District of Texas.
`
`Additional Cases of Note
`Plaintiff v. Telecommunications Company: We won a complete victory in a multi-million dollar contract dispute
`involving information-technology services.
`
`Televisa v. Univision Communications: We represented Univision , the country's leading Spanish language
`television network, .in a breach of contract jury trial. Televisa, a Mexican multimedia conglomerate which supplied
`Univision with its most popular Spanish language programs, attempted to terminate a long-term exclusive licensing
`agreement and sought more than $100 million in damages. The case was settled during trial on favorable terms. We
`also represented Univision in a bench trial which sought declaratory judgment to prevent Televisa from broadcasting
`over the Internet the same highly popular programs that it exclusively licensed to Univision. We won a complete
`victory at trial.
`
`United States v. McKesson Corporation: We defeated the government's six-year False Claims Act case against
`McKesson Corporation and one of its subsidiaries. The government had sought nearly a billion dollars in penalties
`and damages based on allegations that a McKesson subsidiary submitted "legally false" Medicare insurance
`reimbursement claims by violating Medicare supplier standards and charging less than fair-market value for billing
`services in exchange for product sales. We first secured a dismissal of the Qui Tam Relator who initiated this case, a
`decision that the Fifth Circuit affirmed on appeal: We then won summary adjudication on all claims relating to alleged
`violations of Medicare supplier standards. Finally, after a three-week bench trial, we prevailed on all ·remaining claims
`at trial.
`
`Department of Justice v. Major League Baseball Players Association: We successfully represented the Major
`League Baseball Players Association in its high-profile battle with the U.S. government. In August 2009, an en bane
`panel of the U.S. Circuit Court of Appeal for the Ninth Circuit ruled that federal investigators unlawfully seized drug(cid:173)
`testing records of more than 100 athletes. In September 2010, the court issued a revised opinion that upheld its
`ruling.
`
`Awards and Honors
`
`•
`•
`•
`•
`
`Listed in Best Lawyers in America for Patent Litigation, 2012-2013
`Recommended Attorney, Intellectual Property- Patent litigation, The Legal 500 U.S., 2011-2012
`Top 75 IP Litigators, The Daily Journal, 2011
`Northern California Super Lawyer, Business Litigation, 2005-2007, 2010
`
`Keker & Van Nest LLP I 633 Battery Street, San Francisco, CA 94111 -1809 1 41 5 391 5400 1 kvn.com
`
`

`

`AFFIDAVIT OF DAVID J. SILBERT IN SUPPORT OF
`
`MOTION FOR PRO HAC VICE ADMISSION
`
`I, David J. Silbert, being duly sworn and upon oath, hereby attest to the
`
`following:
`
`1.
`
`I am a member in good standing of the Bar of California as well as the
`
`U.S. District Court for the Northern District of California, U.S . District Court for
`
`the Central District of California, U.S. District Court for the Eastern District of
`
`California, U.S. District Court for the Southern District of California, U.S. District
`
`Court for the District of Arizona, Federal Circuit Court of Appeals, Ninth Circuit
`
`Court of Appeals and the Fifth Circuit Court of Appeals.
`
`2.
`
`I have not been suspended or disbarred from practice before any comi
`
`or administrative body.
`
`3.
`
`I have never had an application for admission to practice before any
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`court or administrative body denied.
`
`4.
`
`No sanction or contempt citation has been imposed against me by any
`
`court or administrative body.
`
`5.
`
`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.
`
`774053 .02
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`4
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`

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`6.
`
`I will be subject to the USPTO Code of Professional Responsibility
`
`set forth in 37 C.P.R. §§ 10.20, et seq., and disciplinary jurisdiction under 37
`
`C.P.R. § 11.19(a).
`
`7.
`
`I have not applied to appear pro hac vice before the Office in any
`
`other proceeding in the last three (3) years.
`
`8.
`
`I am an experienced litigation attorney, with experience with complex
`
`litigation in both state and federal court. I am familiar with the subject matter at
`
`issue in this proceeding, including the prior art on which Petitioners rely in this
`
`request and U.S. Patent No. 5,832,494 ("the '494 Patent"). I have also reviewed
`
`the pe1iinent issues of claim construction that have been briefed in this proceeding.
`
`9.
`
`I represent Linkedln Corp. and Twitter, Inc. in the civil actions
`
`Software Rights Archive LLC v. Facebook, Inc., No. 5: 12-cv-03970 RMW (N.D.
`
`Cal. 2012); Software Rights Archive LLC v. Linkedin Corp., No.5: 12-cv-03971
`
`RMW (N.D. Cal. 2012); and Software Rights Archive LLC v. Twitter, Inc., No.
`
`5:12-cv-03972 RMW (N.D. Cal. 2012) in which the '494 Patent has been asserted.
`
`David J. Silbert
`KEKER & VAN NEST LLP
`633 Battery Street
`San Francisco, CA 94111
`Tel: 415-391-5400
`Fax: 415-397-7188
`Email: dsilbert@kvn.com
`
`774053 .02
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`5
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`

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`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify, pursuant to 37 CFR section 42.6, that a complete copy of
`the attached PETITIONERS’ MOTION FOR PRO HAC VICE ADMISSION,
`including all exhibits and related documents, is being served via Federal Express
`on the 2d day of October, 2013, the same day as the filing of the above-identified
`document in the United States Patent and Trademark Office/Patent Trial and
`Appeal Board, upon the attorneys of record for the patent owner:
`
`Martin M. Zoltick
`
`Nancy J. Linck
`Rothwell, Figg, Ernst & Manbeck PC
`607 14th Street, N.W., Suite 800
`Washington DC. 20005
`
`and upon the counsel of record for the patent owner in the litigation before the
`United States District Court for the Northern District of California, Case Docket
`No. CV-12—3970—LB:
`
`W. Paul Schuck
`Thomas Whitelaw LLP
`Three Embarcadero Center, Suite 1350
`San Francisco, CA 94111-4037
`
`Victor G. Hardy
`Chester J. Shiu
`Dinovo Price Ellwanger & Hardy LLP
`7000 North Mopac Expressway
`Suite 350
`
`Austin, TX 78731
`
`/ Heidi L. Keefe/
`
`Heidi L. Keefe
`
`Reg. No. 40,673
`
`COOLEY LLP
`
`ATTN: Heidi L. Keefe
`Patent Docketing
`1299 Pennsylvania Ave. NW, Suite 700
`Washington, DC. 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`1157600 v l/HN
`
`