UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.
`Petitioner
`V.
`
`PERSONAL WEB TECHNOLOGIES, LLC and
`LEVEL 3 COMMUNICATIONS, LLC
`Patent Owners
`
`Case 1PR2013-00596
`Patent 7,802,310
`
`APPLE’S MOTION FOR PRO HAC VICE ADMISSION OF JOSEPH E.
`LASHER UNDER 37 C.F.R. § 42.10(c)
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.
`Petitioner
`V.
`
`PERSONAL WEB TECHNOLOGIES, LLC and
`LEVEL 3 COMMUNICATIONS, LLC
`Patent Owners
`
`Case 1PR2013-00596
`Patent 7,802,310
`
`APPLE’S MOTION FOR PRO HAC VICE ADMISSION OF JOSEPH E.
`LASHER UNDER 37 C.F.R. § 42.10(c)
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`APPLE’S MOTION FOR PRO HAC VICE ADMISSION
`CASE 1PR2013-00596
`
`I.
`
`RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. § 42.10(c), Petitioner Apple Inc. ("Apple") respectfully
`
`requests the pro hac vice admission of Joseph E. Lasher in this proceeding. In email
`
`correspondence between Petitioner and Patent Owner dated August 5, 2014, Patent
`
`Owner agreed not to oppose 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.
`
`The Board has stated that motions forpro 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 1PR2013-00010 (MPT) ("Motorola Order").
`
`-2-
`
`
`
`APPLE’S MOTION FOR PRO HAC VICE ADMISSION
`CASE 1PR2013-00596
`
`See, e.g., Case IPR 2012-00006 (SGL) (Paper 18); Case IPR20 12-0035 (SGL) (Paper
`
`13).
`
`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.
`
`ii.
`
`Membership in good standing of the Bar of at least
`
`one State or the District of Columbia;
`
`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. (cid:9)
`
`The individual seeking to appear 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 C.F.R.;
`
`vi. (cid:9)
`
`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);
`
`-3-
`
`
`
`APPLE’S MOTION FOR PRO HAC VICE ADMISSION
`CASE 1PR2013-00596
`
`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 Mr. Lasher
`
`(Ex. 1034) submitted herewith, Petitioner requests the pro hac vice admission of
`
`Joseph E. Lasher in this proceeding:
`
`1.
`
`2.
`
`3.
`
`Petitioner’s lead counsel, David K.S. Cornwell, is a registered
`
`practitioner (Reg. No. 31,944).
`
`Mr. Lasher is an attorney at the law firm of Boies, Schiller & Flexner
`
`(Ex. 1034 atJ3.)
`
`Mr. Lasher is an experienced patent litigation attorney. Mr. Lasher has
`
`been a patent litigation attorney for seven years.
`
`(Id. at ¶ 4.) Mr. Lasher
`
`has been litigating patent cases during the entire time period and, in
`
`particular, has litigated at least eight patent infringement actions
`
`involving a variety of technologies. (Id.)
`
`-4-
`
`
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`APPLE’S MOTION FOR PRO HAC VICE ADMISSION
`CASE 1PR2013-00596
`
`Mr. Lasher is a member of good standing of the State Bar of New York.
`
`(Id. at 5.)
`
`Mr. Lasher has never been suspended or disbarred from practice before
`
`any court or administrative body. (Id. at ¶ 5.)
`
`No application of Mr. Lasher for admission to practice before any court
`
`or administrative body has ever been denied.
`
`(Id. at ¶ 6.)
`
`No sanctions or contempt citations have ever been imposed against Mr.
`
`Lasher by any court or administrative body.
`
`(Id. at ¶ 7.)
`
`Mr. Lasher 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 C.F.R. (Id. at ¶ 8.)
`
`Mr. Lasher 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. at ¶ 9.)
`
`IV. GOOD CAUSE EXISTS FOR THE PRO HAG VICE ADMISSION OF
`MR. LASHER 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 C.F.R. §
`
`-5-
`
`
`
`APPLE’S MOTION FOR PRO HAC VICE ADMISSION
`CASE 1PR2013-00596
`
`42.10(c). Petitioner’s lead counsel, David K.S. Cornwell, is a registered practitioner.
`
`Based on the facts contained herein, as supported by Mr. Lasher’s Affidavit, good
`
`cause exists to admit Mr. Lasher pro hac vice in this proceeding.
`
`Mr. Lasher has an established familiarity with the subject matter at issue in this
`
`proceeding. (Exhibit 1034 at ¶J 10-13.)
`
`Mr. Lasher has reviewed in detail the pleadings submitted by Petitioner and
`
`Patent Owner in this proceeding. (Id. at ¶ 10.) Mr. Lasher has reviewed in detail the
`
`challenged patent, U.S. Patent No. 7,802,310 ("the ’310 patent).
`
`(Id.at’J 11.) He has
`
`also reviewed in detail the relevant references asserted by Petitioner.
`
`(Id, at ¶
`
`11-12.) Mr. Lasher has engaged in hours of strategic and substantive discussions
`
`regarding this proceeding with counsel for Petitioner in this proceeding.
`
`(Id. at ¶ 10.)
`
`Mr. Lasher has been Petitioner’s counsel in its co-pending district court
`
`litigation against Patent Owner, Personal Web Tech. LLC and Level 3 Commc’ns.,
`
`LLC v. Apple Inc. (No. 4:14-CV-01683) (N.D. Cal.), which concerns,
`
`inter alia, the
`
`same patent and subject matter at issue in this proceeding.
`
`(Id. at ¶ 12.) As counsel,
`
`Mr. Lasher has been actively involved in all aspects of the district court litigation,
`
`including (1) Petitioner’s factual investigation and development of its invalidity
`
`positions regarding the claims of the ’310 patent; (2) claim construction briefing and
`
`
`
`APPLE’S MOTION FOR PRO HAC VICE ADMISSION
`CASE 1PR2013-00596
`
`proceedings of the claim terms at issue in this proceeding; (3) depositions of
`
`Petitioner’s and Patent Owner’s fact witnesses and experts regarding issues of
`
`obviousness and invalidity, including obviousness and secondary considerations
`
`thereof; and (4) overall strategy regarding litigation of the invalidity issues relating to
`
`the ’310 patent. (Id.) As counsel in this litigation, Mr. Lasher has reviewed numerous
`
`treatises, articles, documents and other information regarding the subject matter of
`
`the ’310 patent. (Id.) He has also worked closely with experts in the field of the ’310
`
`patent to further understand the subject matter at issue in this proceeding.
`
`(Id.) Thus,
`
`Mr. Lasher has an established familiarity with the subject matter at issue in this
`
`proceeding. Mr. Lasher’s significant litigation experience and expertise will be of
`
`great value to the Petitioner in this proceeding.
`
`Based on the facts contained herein, as supported by Mr. Lasher’s Affidavit,
`
`good cause exists to admit Mr. Lasher pro hac vice in this proceeding.
`
`-7-
`
`
`
`APPLE’S MOTION FOR PRO HAC VICE ADMISSION
`CASE 1PR2013-00596
`
`V. CONCLUSION
`
`For the foregoing reasons, Petitioner respectfully requests that Mr. Lasher be
`
`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 19-0036 (Customer ID No. 63975).
`
`Respectfully Submitted,
`
`STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
`
`Date: August 7, 2014
`
`1100 New York Avenue, N.W
`Washington, D.C.20005-3934
`(202) 371-2600
`
`David K.S. Cornwell
`Lead Attorney for Petitioner
`Apple Inc.
`Registration No. 31,944
`
`
`
`APPLES MOTION FOR PRO HAC VICE ADMISSION
`CASE IPR2013-00596
`
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
`
`The undersigned hereby certifies that the above-captioned "Apple’s Motion
`
`for Pro Hoc Vice Admission of Joseph E. Lasher under 37 C.F.R. § 42.10(c)," and
`
`accompanying Exhibit List and Exhibit, were served in their entireties on August 7,
`
`2014, upon the following parties via email:
`
`Joseph A. Rhoa (Lead Counsel)
`Updeep S. Gill (Back-up Counsel)
`Nixon & Vanderhye P.C.
`901 North Glebe Road, 11th Floor
`Arlington, VA 22203-1808
`
`jnixonvan.com
`usg(nixonvan. com
`
`STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
`
`Date: August 7, 2014
`1100 New York Avenue, N.W
`Washington, D.C.20005-3934
`(202) 371-2600
`
`David K.S. Cornwell
`Lead Attorney for Petitioner
`Apple Inc.
`Registration No. 31,944
`
`-9-
`
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`
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