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`Filed on behalf of: Black Hills Media, LLC
`By:
`Theodosios Thomas
`Black Hills Media, LLC
`5400 Trinity Rd. Suite 303
`Raleigh, NC 27607
`Tel: (919) 233-1942, Ext. 203
`Fax: (919) 233-9907
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`YAMAHA CORPORATION OF AMERICA
`Petitioner
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`v.
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`BLACK HILLS MEDIA, LLC
`Patent Owner
`___________________
`
`Case No. IPR2013-00594
`U.S. Patent 8,050,652
`___________________
`
`Patent Owner’s Motion for Pro Hac Vice Admission of
`Thomas Engellenner Under 37 C.F.R. § 42.10(c)
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`IPR2013-00594
`U.S. Patent 8,050,652
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`I. RELIEF REQUESTED
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`Pursuant to 37 C.F.R. § 42.10(c) and the Board’s authorization to file
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`motions for pro hac vice admission in the Order issued September 26, 2013, Patent
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`Owner Black Hills Media (“Patent Owner”), by and through its attorneys,
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`respectfully requests that the Board admit Thomas Engellenner pro hac vice in this
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`proceeding.
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`II. GOVERNING LAW, RULES, AND PRECEDENT
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`Pursuant to 37 C.F.R. § 42.10(c), the Board may recognize counsel pro hac
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`vice during a proceeding upon a showing of good cause, subject to the condition
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`that lead counsel be a registered practitioner and to any other conditions as the
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`Board may impose. For example, where the lead counsel is a registered
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`practitioner, a motion to appear pro hac vice by counsel who is not a registered
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`practitioner may be granted upon showing that counsel is an experienced litigating
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`attorney and has an established familiarity with the subject matter at issue in the
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`proceeding. 37 C.F.R. § 42.10(c)
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`In the Order issued September 26, 2013, the Board requires that a motion for
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`pro hac vice admission be filed in accordance with the “Order -- Authorizing
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`Motion for Pro Hac Vice Admission” in Case IPR2013-00010 (MPT)
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`(“Representative Order”). The Representative Order states that the motion must
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`“[c]ontain a statement of facts showing there is good cause for the Board to
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`IPR2013-00594
`U.S. Patent 8,050,652
`recognize counsel pro hac vice during the proceeding,” and “[b]e accompanied by
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`an affidavit or declaration of the individual seeking to appear attesting to the
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`following”: i) membership in good standing of the Bar of at least one State or the
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`District of Columbia; ii) no suspensions or disbarments from practice before any
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`court or administrative body; iii) no application for admission to practice before
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`any court or administrative body ever denied; iv) no sanctions or contempt
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`citations imposed by any court or administrative body; v) the individual seeking to
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`appear has read and will comply with the Office Patent Trial Practice Guide and
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`the Board’s Rules of Practice for Trials set forth in part 42 of the C.F.R.; vi) the
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`individual will be subject to the USPTO Code of Professional Responsibility set
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`forth in 37 C.F.R. §§ 10.20 et seq.1 and disciplinary jurisdiction under 37 C.F.R. §
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`11.19(a); vii) all other proceedings before the Office for which the individual has
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`applied to appear pro hac vice in the last three (3) years; and viii) familiarity with
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`the subject matter at issue in the proceeding.
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`III. STATEMENT OF FACTS
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`The following statement of facts, supported by the attached Declaration of
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`Thomas Engellenner in Support of Admission Pro Hac Vice (“Engellenner Decl.”),
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`establishes good cause to admit Mr. Engellenner pro hac vice in this proceeding.
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`1 The USPTO Code of Professional Responsibility in 37 C.F.R. § 10.20 et seq. was
`replaced by the USPTO Rules of Professional Conduct in 37 C.F.R. § 11.101 et
`seq., effective May 3, 2013.
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`2
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`IPR2013-00594
`U.S. Patent 8,050,652
`Patent Owner’s current lead counsel, Theodosios Thomas, is a
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`1.
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`registered practitioner (Reg. No. 45,159).
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`2. Mr. Engellenner is an experienced patent prosecution and patent
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`litigation attorney with more than 30 years of experience. Mr.
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`Engellenner is a partner at the law firm of Pepper Hamilton LLP and
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`is a member of the state bars of Massachusetts and New York.
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`(Engellenner Decl. ¶¶ 1, 8.) Mr. Engellenner is also a registered
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`practitioner before the United States Patent and Trademark Office
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`(Reg. No. 28,711), and is admitted to practice before the U.S. District
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`Court for the District of Massachusetts and the Court of Appeals for
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`the Federal Circuit. (Id. ¶ 1.) Mr. Engellenner is a member in good
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`standing in all jurisdictions where he has been admitted to practice.
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`(Id.) Mr. Engellenner has neither been suspended nor disbarred from
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`practice before any court or administrative body, nor had an
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`application denied for admission before any court or administrative
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`body. (Id. ¶¶ 2-3.) Mr. Engellenner has also never had any sanctions
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`or contempt citations imposed by any court or administrative body.
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`(Id. ¶ 4.)
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`3. Mr. Engellenner has read and agrees to comply with the Office Patent
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`Trial Practice Guide and the Board’s Rules of Practice for Trials set
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`3
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`IPR2013-00594
`U.S. Patent 8,050,652
`forth in part 42 of the C.F.R. (Id. ¶ 5.) As a registered practitioner
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`before the USPTO, Mr. Engellenner understands that he is subject to
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`the USPTO Rules of Professional Conduct 37 C.F.R. §§ 11.101 et seq.
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`and disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and affirms
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`that he is subject to the same. (Id. ¶ 6.)
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`4. Mr. Engellenner is currently seeking pro hac vice admission in the co-
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`pending, related matters filed by Petitioner, Case Nos. IPR2013-
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`00593, IPR2013-00597, and IPR2013-00598. (Id. ¶ 7.) Though Mr.
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`Engellenner has not applied to appear pro hac vice in any other
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`proceedings before the USPTO in the last three (3) years, Mr.
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`Engellenner commonly appears before the USPTO in proceedings as a
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`registered USPTO practitioner. (Id.)
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`5. Mr. Engellenner has been engaged by the Patent Owner to represent
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`the Patent Owner before the Board in light of his experience in
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`proceedings before the USPTO. (Id. ¶ 9.) Mr. Engellenner has
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`familiarity with the subject matter at issue in this proceeding as well
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`as in co-pending litigations initiated by the Patent Owner against the
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`Petitioner and other entities in various jurisdictions. (Id.) Based on
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`his previous experience and study of the particulars of the subject
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`matter raised in the Petition, Mr. Engellenner has acquired a
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`IPR2013-00594
`U.S. Patent 8,050,652
`substantial understanding of the underlying legal and technological
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`issues at stake in the these proceedings. (Id.)
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`IV. GOOD CAUSE EXISTS FOR PRO HAC VICE ADMISSION
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`The facts outlined above in the Statement of Facts, and contained in the
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`Declaration of Thomas Engellenner, establish that there is good cause to admit Mr.
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`Engellenner pro hac vice in this proceeding under 37 C.F.R. § 42.10. As supported
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`by Mr. Engellenner’s Declaration, Mr. Engellenner is a registered practitioner
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`before the USPTO and is an experienced patent attorney with 25 years of patent
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`prosecution and patent litigation experience. Mr. Engellenner has been engaged by
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`the Patent Owner for this proceeding and has established familiarity with the
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`particular subject matter at issue herein.
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`V. CONCLUSION
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`In light of the foregoing, Patent Owner respectfully requests that the Board
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`admit Thomas Engellenner pro hac vice in this proceeding.
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`Dated: December 18, 2013
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`
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`Respectfully submitted,
`By: /Theodosios Thomas R45159/
`Theodosios Thomas, Reg. No. 45,159
`Black Hills Media, LLC
`5400 Trinity Rd. Suite 303
`Raleigh, NC 27607
`Tel: (919) 233-1942, Ext. 203
`Fax: (919) 233-9907
`Attorney for Patent Owner
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`5
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`CERTIFICATE OF SERVICE
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`IPR2013-00594
`U.S. Patent 8,050,652
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`dfehrman@mofo.com
`marjomand@mofo.com
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` hereby certify that on December 18, 2013, a true and accurate copy of this paper, PATENT
`OWNER’S MOTION FOR PRO HAC VICE ADMISSION OF THOMAS ENGELLENNER UNDER 37 C.F.R.
`§ 42.10(C) AND THE SUPPORTING DECLARATION OF THOMAS ENGELLENNER, were served on the
`following counsel for Petitioner Yamaha of America via email and U.S. Express Mail:
`
`David L. Fehrman
`Mehran Arjomand
`Morrison & Foerster LLP
`707 Wilshire Boulevard
`Los Angeles, CA 90017-3543
`Tel: (213) 892-5630
`Fax: (323) 210-1329
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`Dated:
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` December 18, 2013
`
`
`
`By: /Theodosios Thomas R45159/
`Theodosios Thomas, Reg. No. 45,159
`Black Hills Media, LLC
`5400 Trinity Rd. Suite 303
`Raleigh, NC 27607
`Tel: (919) 233-1942, Ext. 203
`Fax: (919) 233-9907
`Attorney for Patent Owner
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` I
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