Case IPR 2013-00567
`Case IPR 2014-00541
`U.S. Patent No. 8,217,902
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`WINTEK CORPORATION
`Petitioner,
`
`v.
`
`TPK TOUCH SOLUTIONS INC.
`Patent Owner
`________________
`
`Case IPR 2013-00567
`Case IPR 2014-00541
`U.S. Patent No. 8,217,902
`
`TPK TOUCH SOLUTIONS INC.’S UNOPPOSED MOTION FOR
`PRO HAC VICE ADMISSION OF DEREK TANG
`
`
`Case IPR 2014-00541
`U.S. Patent No. 8,217,902
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`WINTEK CORPORATION
`Petitioner,
`
`v.
`
`TPK TOUCH SOLUTIONS INC.
`Patent Owner
`________________
`
`Case IPR 2013-00567
`Case IPR 2014-00541
`U.S. Patent No. 8,217,902
`
`TPK TOUCH SOLUTIONS INC.’S UNOPPOSED MOTION FOR
`PRO HAC VICE ADMISSION OF DEREK TANG
`
`
`
`Case IPR 2013-00567
`Case IPR 2014-00541
`U.S. Patent No. 8,217,902
`
`I.
`
`RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. § 42.10(c), Patent Owner TPK Touch Solutions
`
`Inc. (“TPK”) respectfully requests the expedited pro hac vice admission of Derek
`
`Tang in this proceeding. TPK has conferred with Petitioner Wintek Corporation
`
`(“Wintek”) and Wintek does not have any objections to TPK’s request. In view of
`
`upcoming depositions, currently scheduled for August 27, 2014 and early
`
`September 2014, TPK respectfully requests an expedited decision on this motion.
`
`II. GOVERNING LAW, RULES, AND PRECEDENT
`
`Section 42.10(c) states 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 counsel is an
`
`experienced litigating attorney and has an established familiarity
`
`with the subject matter at issue in the proceeding.
`
`
`
`Case IPR 2013-00567
`Case IPR 2014-00541
`U.S. Patent No. 8,217,902
`
`The Board has stated that motions for pro hac vice admission under 37
`
`C.F.R. § 42.10(c) must be filed in accordance with the “Order - Authorizing
`
`Motion for Pro Hac Vice Admission” entered in Case IPR2013-00010 (MPT)
`
`(“Motorola Order”). In accordance with the Motorola Order, this motion is being
`
`filed no sooner than twenty-one (21) days after service of the petition.
`
`The Motorola Order requires that such motions (1) “[c]ontain a statement of
`
`facts showing there is good cause for the Board to recognize counsel pro hac vice
`
`during the proceeding; and (2) [b]e accompanied by an affidavit or declaration of
`
`the individual seeking to appear attesting to the following”:
`
`i.
`
`Membership in good standing of the Bar of at least one
`
`State or the District of Columbia;
`
`ii.
`
`No suspensions or disbarments from practice before
`
`any court or administrative body;
`
`iii.
`
`No application for admission to practice before any
`
`court or administrative body ever denied;
`
`iv.
`
`No sanctions or contempt citations imposed by any
`
`court or administrative body;
`
`v.
`
`The individual seeking to appear has read and will
`
`comply with the Office Patent Trial Practice Guide and the
`
`2
`
`
`
`Case IPR 2013-00567
`Case IPR 2014-00541
`U.S. Patent No. 8,217,902
`
`Board’s Rules of Practice for Trials set forth in part 42 of the
`
`C.F.R.;
`
`vi.
`
`The individual will be subject to the USPTO Code of
`
`Professional Responsibility set forth in 37 C.F.R. §§ 10.20 et
`
`seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a);
`
`vii. All other proceedings before the Office for which the
`
`individual has applied to appear pro hac vice in the last three
`
`(3) years; and
`
`viii. Familiarity with the subject matter at issue in the proceeding.
`
`III.
`
`STATEMENT OF FACTS
`
`Based on the following facts, and supported by the Affidavit of Derek Tang
`
`(TPK 2026) submitted herewith, TPK requests the expedited pro hac vice
`
`admission of Derek Tang in this proceeding:
`
`1.
`
`TPK’s
`
`lead counsel,
`
`Joseph J. Richetti,
`
`is a registered
`
`practitioner (Reg. No. 47,024).
`
`2.
`
`Mr. Tang is an associate at
`
`the law firm Quinn Emanuel
`
`Urquhart & Sullivan, LLP. (TPK 2026, ¶ 3).
`
`3
`
`
`
`Case IPR 2013-00567
`Case IPR 2014-00541
`U.S. Patent No. 8,217,902
`
`3.
`
`Mr. Tang is an experienced litigating attorney and has been
`
`a litigating attorney for more than 7 years. (Id.). Mr. Tang has been
`
`litigating patent cases for over 4 years. (Id.).
`
`4.
`
`Mr. Tang has an established familiarity with the subject matter
`
`at issue in this proceeding.
`
`(Id., ¶ 8). Mr. Tang has litigated patent
`
`cases in the area of electrical engineering and electronic devices since
`
`2010.
`
`(Id.). He began representing and advising TPK, the owner of
`
`U.S. Patent No. 8,217,902, in matters relating to patent strategy no
`
`later than 2013. (Id.). Since that time he has been very familiar with
`
`U.S. Patent No. 8,217,902 and with its prosecution file history. (Id.).
`
`In particular, Mr. Tang has assisted TPK in preparing its responses to
`
`these proceedings, as well as in a co-pending ex parte reexamination
`
`of the ‘902 Patent, Control No. 90/012,869. (Id.).
`
`5.
`
`Mr. Tang is a member in good standing of the State Bars of
`
`California and New York. (Id., ¶ 4).
`
`6.
`
`Mr. Tang has never been suspended or disbarred from practice
`
`before any court or administrative body. (Id.).
`
`7.
`
`No application of Mr. Tang’s for admission to practice before
`
`any court or administrative body has ever been denied. (Id.).
`
`4
`
`
`
`Case IPR 2013-00567
`Case IPR 2014-00541
`U.S. Patent No. 8,217,902
`
`8.
`
`No sanctions or contempt citations have ever been imposed
`
`against Mr. Tang by any court or administrative body. (Id.).
`
`9.
`
`Mr. Tang has 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 Code of Federal Regulators. (Id., ¶ 5).
`
`10. Mr. Tang understands that he will be subject to the USPTO
`
`Code of Professional Responsibility set forth in 37 C.F.R. §§ 10.20 et
`
`seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
`
`(Id., ¶
`
`6).
`
`11.
`
`TPK is concurrently seeking pro hac vice admission of Mr.
`
`Tang to appear in a co-pending, related proceeding brought by
`
`Petitioner against Patent Owner, Case No. IPR2013-00568, in which
`
`Petitioner is also challenging claims of U.S. Patent No. 8,217,902.
`
`Mr. Tang
`
`has not applied to appear pro hac vice in any other
`
`proceedings before the Office in the last three (3) years. (Id.,¶ 7).
`
`IV. GOOD CAUSE EXISTS FOR THE EXPEDITED PRO HAC VICE
`ADMISSION OF MR. TANG IN THIS PROCEEDING
`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. 37
`
`5
`
`
`
`Case IPR 2013-00567
`Case IPR 2014-00541
`U.S. Patent No. 8,217,902
`
`C.F.R. § 42.10(c). TPK’s lead counsel, Joseph J. Richetti, is a registered
`
`practitioner. Based on the facts contained herein, as supported by Mr. Tang’s
`
`Affidavit, good cause exists to expeditiously admit Mr. Tang pro hac vice in
`
`this proceeding.
`
`As supported by his Affidavit, Mr. Tang is an experienced litigating attorney
`
`with over four years of patent litigation experience. Mr. Tang also has an
`
`established familiarity with the subject matter at issue in this proceeding, as he has
`
`been representing and advising TPK in matters related to patent strategy since
`
`2013, including in connection with TPK’s responses for this proceeding, as well as
`
`for two other co-pending proceedings involving the same patent U.S. Patent No.
`
`8,217,902 that is at issue in this proceeding.
`
`In view of Mr. Tang’s extensive knowledge of the precise subject matter at
`
`issue in this proceeding, and in view of his involvement in advising TPK in
`
`connection with this and other related proceedings, TPK has a substantial need for
`
`Mr. Tang’s pro hac vice admission and involvement in this proceeding. And, in
`
`view of upcoming depositions, currently scheduled for August 27, 2014 and early
`
`September 2014, TPK respectfully requests an expedited decision on this motion.
`
`In addition, the expedited admission of Mr. Tang pro hac vice will enable TPK to
`
`avoid unnecessary expense and duplication of work.
`
`In addition, given that Mr.
`
`6
`
`
`
`Case IPR 2013-00567
`Case IPR 2014-00541
`U.S. Patent No. 8,217,902
`
`Tang’s practice is based in California, closer to where the upcoming depositions
`
`are expected to take place and where the declarants being deposed are located, his
`
`admission will also enable TPK to avoid significant, additional travel costs and
`
`expenses. See 77 Fed. Reg. 157 (Aug. 14, 2012), at 48661 (Office’s comment on
`
`final rule discussing concerns about efficiency and costs and indicating that the
`
`economic impact on the party should be considered in determining whether to
`
`allow counsel to appear pro hac vice).
`
`Given Mr. Tang’s extensive experience with the involved patent and parties,
`
`and TPK’s desire to be represented by the counsel of its choice, the need for
`
`admission of Mr. Tang substantially outweighs any potential prejudice to Wintek.
`
`Moreover, TPK has conferred with Wintek concerning its request, and Wintek has
`
`indicated that it does not have any objections to the pro hac vice admission of Mr.
`
`Tang in this proceeding.
`
`V.
`
`CONCLUSION
`
`For the foregoing reasons, TPK respectfully requests that Mr. Tang be
`
`expeditiously admitted pro hac vice in this proceeding.
`
`The Patent Trial and Appeal Board is hereby authorized to charge any fees
`
`associated with this filing to Deposit Account 02-4467.
`
`7
`
`
`
`Date: August 21, 2014
`
`Respectfully submitted,
`
`Case IPR 2013-00567
`Case IPR 2014-00541
`U.S. Patent No. 8,217,902
`
`By: /Joseph J. Richetti, Reg. No. 47024/
`Joseph J. Richetti, Reg. No. 47,024
`BRYAN CAVE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`General Tel: (212) 541-2000
`Direct Tel: (212) 541-1092
`Fax: (212) 541-4630
`Email: joe.richetti@bryancave.com
`
`David Bilsker, Reg. No. 39,611
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`50 California Street, 22nd Floor
`San Francisco, CA 94111
`General Tel: (415) 875-6600
`Direct Tel: (415) 875-6432
`Fax: (415) 875-6700
`Email: davidbilsker@quinnemanuel.com
`
`Attorneys for Patent Owner – TPK Touch
`Solutions Inc.
`
`8
`
`
`
`Case IPR 2013-00567
`Case IPR 2014-00541
`U.S. Patent No. 8,217,902
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies
`
`that
`
`the foregoing TPK TOUCH
`
`SOLUTIONS INC.’S UNOPPOSED MOTION FOR PRO HAC VICE
`
`ADMISSION OF DEREK TANG was served electronically via e-mail on August
`
`21, 2014, in its entirety on the following:
`
`Joseph E. Palys
`PAUL HASTINGS LLP
`875 15th Street, N.W.
`Washington, DC 20005
`josephpalys@paulhastings.com
`
`Naveen Modi
`PAUL HASTINGS LLP
`875 15th Street, N.W.
`Washington, DC 20005
`naveen.modi@paulhastings.com
`
`Respectfully submitted,
`
`By: /Joseph J. Richetti, Reg. No. 47024/
`Joseph J. Richetti
`Lead Attorney for Patent Owner
`Reg. No. 47,024
`BRYAN CAVE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`General Tel: (212) 541-2000
`Direct Tel: (212) 541-1092
`Fax: (212) 541-4630
`Email: joe.richetti@bryancave.com
`
`Attorneys for Patent Owner – TPK Touch
`Solutions Inc.
`
`Date: August 21, 2014
`
`
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