UNITED S"I".A'I"I77£S PA'I‘ENT AND TRADEMARK OF EICE
`
`BEE OR E 'I‘I-IE PATEN'I,‘ TRIAL AND APPEAL BOARD
`
`GOOOLE INC.
`
`Petitioner
`
`V.
`
`BE TECHNOLOGY, LLC
`
`Patent Owner
`
`Case IPR2014—00031
`
`Patent 6,77I ,290
`
`Before SALLY MEDLEY, Administrative Parent Judge.
`
`GOOGLE [NC’S MOTION FOR PRO HAC VICE ADMISSION UNDER 37
`C.F.R. § 42.10
`
`Mail Stop Patent Board
`Patent TriaI and AppeaI Board
`US. Patent and Trademark Office
`
`PO. Box 1450
`
`Alexandria, VA 223 I 3—1450
`
`
`
`BEE OR E 'I‘I-IE PATEN'I,‘ TRIAL AND APPEAL BOARD
`
`GOOOLE INC.
`
`Petitioner
`
`V.
`
`BE TECHNOLOGY, LLC
`
`Patent Owner
`
`Case IPR2014—00031
`
`Patent 6,77I ,290
`
`Before SALLY MEDLEY, Administrative Parent Judge.
`
`GOOGLE [NC’S MOTION FOR PRO HAC VICE ADMISSION UNDER 37
`C.F.R. § 42.10
`
`Mail Stop Patent Board
`Patent TriaI and AppeaI Board
`US. Patent and Trademark Office
`
`PO. Box 1450
`
`Alexandria, VA 223 I 3—1450
`
`
`
`CASE IPR2014—00031
`
`Patent 6,771 ,290
`
`Pursuant to 37 CPR. § 42.10 and in response to the authorization provided
`
`by the United States Patent and "l‘rademark Office’s Patent Trial and, Appeal Board
`
`(“an1”) in the Notice ol‘l’iling Date Accorded to Petitioner (Paper Number 3,
`
`entered October l l, 20 l3) (“the Notice”), Petitioner Google, Inc. (“the Petitioner”)
`
`submits this motion for Brian A. Rosenthal to appear pro hac vice. Petitioner
`
`respectfully requests the Board to recognize Mr. Rosenthal as counsel pro hac vice
`
`during this proceeding.1
`
`TIME FOR FILING
`
`Pursuant to the “Order w Authorizing Motion for Pro Hac Vice Admission”
`
`in Case IPRZO l3~00639 (“Order”), 2
`
`this motion lbrpro hac vice admission is
`
`being filed. no sooner than twenty—one (21) days after service of the petition.
`
`1 Corresponding motions for Pro Hac Vice admission are being concurrently filed
`
`in co—pending cases lPRZOl4-OOO33 and 1PR2014—00038.
`
`2 Petitioner notes that while the Notice references the “Order ~— Authorizing Motion
`
`for Pro Hac Vice Admission” in Case IPR2013—00010 (MPT), the Order in Case
`
`IPR2013—00639 states that the Final Rule regarding Changes to Representation of
`
`Others Before the United States Patent and Trademark Office removes part 10 of
`
`title 37, C.F.R. referred to in the Order in Case IPR2013—0001 0 (MPT). (cont)
`
`
`
`CASE lPRZOlLOOO?) 1
`
`Patent 6,771 ,290
`
`STATEMENT OF FACTS
`
`fil’ursuant to the Order, the following statement of facts shows that there is
`
`good cause for the Board to recognize Mr. Rosenthal pro hac vice.
`
`lead counsel for this proceeding, Clinton H. Brannon, is a registered
`
`practitioner (Reg. No. 57,887).
`
`Mr. Rosenthal is an experienced litigation, attorney, and has been involved in
`
`numerous patent infringement cases in federal District Courts across the country.
`
`He has experience in various aspects of patent infringement matters including jury
`
`and bench trials, Markman hearings, and summary judgment hearings. Mr.
`
`Rosenthal is a member in good standing of the New York. Bar and the District of
`
`Columbia Bar, and is admitted to practice before the United States Court of
`
`Appeals for the Federal Circuit, the United States Court of Federal Claims, and the
`
`United States District Courts for the District of Columbia and Western District of
`
`Tennessee. Mr. Rosenthal has not been suspended or disbarred from practice,
`
`never had any application for admission to practice denied, nor had any sanctions
`
`or contempt citations imposed against him.
`
`
`
`Accordingly, for the purpose of this proceeding, Petitioners will refer to the Order
`
`in Case IPR2013—00639.
`
`
`
`CASl-E IPRZO 14-0003 1
`
`Patent 6,771,290
`
`Mr. Rosenthal is counsel for the Petitioner in a co—pending litigation, B. E.
`
`Tec-fmo/ogy, 11.1,.(7. v. Geog/e, Inc, No. 12—cv402830~JMP~TMP, pending in the
`
`United States l")istriet Court for the Western District o 1‘ Tennessee. That litigation
`
`involves [1.8. Patent No. 6,771 ,290, the same patent at issue in this proceeding.
`
`In
`
`his role as counsel in the co‘pending litigation, Mr. Rosenthal has reviewed and is
`
`‘l‘amiliar with the ’29() Patent, the asserted prior art references, and invalidity claim.
`
`charts. Further, Mr. Rosenthal has been involved and is familiar with the factual
`
`and legal arguments at issue in that case, including the claim construction issues
`
`presented in the co-pending litigation. As such, Mr. Rosenthal has established
`
`familiarity with. the subject matter at issue in. this proceeding.
`
`Mr. Rosenthal has read and will comply with the Office Patent Trial Practice
`
`Guide and the Board’s Rules for Practice for Trials set forth in part 42 of the
`
`C.F.R., and. he agrees to be subject to the USPTO Rules of Professional Conduct
`
`set forth in 37 CPR. §§ 11.101 er. seq. and disciplinary jurisdiction under 37
`
`CPR. § 1 1.. [9(a).
`
`In the last three years, Mr. Rosenthal has applied for, and was
`
`admitted, to appear pro hac vice in inter partes reexaminations 95/000,120—123;
`
`95/000,444, and 95/000,445.
`
`Petitioner has expended significant financial resources in the co-pending
`
`litigation with Mr. Rosenthal as counsel, and Petitioner wishes to continue using
`
`Mr. Rosenthal in this proceeding.
`
`
`
`CASE I’PR2014—00031
`
`Patent 6,77l ,290
`
`As such, Petitioner respectfully submits that there is good cause for the
`
`Board to recognize Mr. Rosenthal as counsel pro hac vice during this proceeding.
`
`’1 11. AFFIDAVIT OR DECLARATION OF INDIVIDUAL SEEKING TO
`
`APPEAR,
`
`This Motion forpro [1610 vice admission is accompanied by a Declaration of
`
`Mr. Rosenthal as required by the Order.
`
`[)ate:
`
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`.
`Clinton H. Brannon (Reg. No. 57,887)
`Mayer Brown, LLP
`1999 K Street, NW.
`Washington, DC. 20006—1 101
`(202) 263-3440
`
`
`
`'l)ECLARATlON OF MR. BRIAN A. ROSENTHAL IN SUPPORT OF
`
`MOTIONS FOR PRO HAC VICE ADMISSION
`
`Pursuant to 37 C.F.R. § 1.68, 1, Brian A. Rosenthal, hereby attest to the
`
`following:
`
`I am a member in good standing of the New York Bar (2001) and the District of
`
`Columbia Barr (2002), as well as the following Federal Courts:
`
`a. US. District Court for the District ofColumbia (2009)
`
`b. US. Court of Appeals for the Federal Circuit (2011)
`
`c. US. Court of Federal Claims (20] 1)
`
`d. US. District Court for the Western District of Tennessee (2013);
`
`l have not been suspended or disbarred from practice before any court or
`
`administrative body;
`
`l have never had an application for admission to practice before any court or
`
`administrative body denied;
`
`I have never had sanctions or contempt citations imposed by any court or
`
`administrative body imposed against me;
`
`l 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 of37 C.F.R.;
`
`I will be subject to the USPTO Code of Professional Responsibility set forth in
`
`37 C.F.R. §§ 11.101 etseq. and disciplinaryjurisdiction under 37 C.F.R. §
`
`
`
`I previously applied for, and was granted, pro hue vice status before the Board.
`
`of lF’atent Appeals and Interferenccs to argue on behalf of third party requester
`
`Acushnet Company in inter pct/"res recxaminations 95/000,120«123; 95/000,444;
`
`and, 95/000,445; and
`
`i am an experienced litigation attorney and have been involved in numerous
`
`patent iniiingement cases in Federal Courts across the country.
`
`I have
`
`experience in various aspects ofpatent infringement matters including jury and
`
`bench trials, Markman hearings, and summary judgment hearings.
`
`I am lead
`
`counsel for Petitioner Google lnc. in a co—pending litigation (BE. Technology,
`
`L.L.C. v. Google, Inc, No.
`
`lZ—cv—02830—JMP*TMP) in which U.S. Patent Nos.
`
`6,771,290 and 6,628,314 are asserted against Google Inc.
`
`l have reviewed and
`
`am familiar with the asserted patents, prior art references, and claim charts in
`
`the co—pending litigation and the Petition. Further, I have been involved and am
`
`familiar with the factual and legal arguments including the claim construction
`
`issues for the co—pending litigation and the Petition. Accordingly, I am familiar
`
`with the subject matter at issue in the proceeding.
`
`
`
`I declare under penalty of perjury that the foregoing is true and correct.
`
`Respectfully submitted,
`
`
`
`Iv
`'
`_
`{w /,
`M w my“
`
`
`
`“B ri an A viRoSénthal
`Mayer Blown, LLP
`1999 K Street, NW.
`
` m
`
`, Mm
`«:M W5?»
`Q ,w-
`
`Washington, DC. 20006—1101
`(202) 263—3446
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this day, November 18, 2013, a copy of this Motion
`
`for Pm Hac Vice Admission and a copy of the Affidavit of Mr. Brian A. Rosenthal
`
`in Support of the Motion for Pro ,Hac Vice were served upon the following
`
`persons, by placing into Express Mail directed to the attorney of record for the
`
`patent at the following address:
`
`Jason S. Angel]
`Robert E. Freitas
`
`F reitas, Tseng & Kaufman LLP
`lOO Marine Parkway, Suite 200
`Redwood Shores, CA 94065
`'an ell a/ftklawcom
`
`rfeitas ( ,ftklawcom
`
`BEIPRFTKQDfldau/com
`
`Date:
`
`/é g2&2 A]
`
`g 3;; 22
`
`Clinton H. Brannon
`
`Reg. No. 57,887
`Counsel for Petitioner
`
`.
`
`
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