UNl’l‘l-il'.) S"I‘A"I‘ES PA'lTl‘EllW'l‘w AND TRADEMARK. O‘Fli‘lCE
`
`l3 EFORE THE PA’I‘lfi‘lN’l‘ TRIAL AND APPEAL BOARD
`
`GOOGI ylgi INC.
`
`Petitioner
`
`V.
`
`BE. 'IiECHNOLOGY, LLC
`
`Patent Owner
`
`Case l'PR2014—00033
`
`Patent 6,771 ,290
`
`Before SALLY MEDLEY, Administrative Pate/4t Judge.
`
`GOOGLE INC’S MOTION FOR PRO HAC VICE ADMISSION UNDER 37
`
`C.F.R. § 42.10
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`US. Patent and Trademark Office
`
`PO. Box 1450
`
`Alexandria, VA 22313—1450
`
`
`
`l3 EFORE THE PA’I‘lfi‘lN’l‘ TRIAL AND APPEAL BOARD
`
`GOOGI ylgi INC.
`
`Petitioner
`
`V.
`
`BE. 'IiECHNOLOGY, LLC
`
`Patent Owner
`
`Case l'PR2014—00033
`
`Patent 6,771 ,290
`
`Before SALLY MEDLEY, Administrative Pate/4t Judge.
`
`GOOGLE INC’S MOTION FOR PRO HAC VICE ADMISSION UNDER 37
`
`C.F.R. § 42.10
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`US. Patent and Trademark Office
`
`PO. Box 1450
`
`Alexandria, VA 22313—1450
`
`
`
`CASE lPRZU l 4—0003?)
`
`Patent 6,77 l, .2290
`
`Pursuant to 37 (ill-"4R. § 42.10 and in response to the authorization provided
`
`by the United States Patent and ’fl"rademark ("Nike’s Patent Trial and Appeal Board
`
`(“Board”) in the Notice of Filing Date Accorded to Petition. (Paper Number 3,
`
`entered October l, l, 2013) (“the Notice”), Petitioner (ioogle, inc. (“the Petitionefl)
`
`submits this motion for Brian A. Rosenthal to appear pro hac vice. Petitioner
`
`respectfully requests the .lf5oard to recognize Mr. Rosenthal as counsel pro hac vice
`
`during this proceeding. 1
`
`TIME FOR FILING
`
`Pursuant to the “Order —~ Authorizing Motion for Pro Hac Vice Admission”
`
`in Case lPR2013~00639 ("‘Order” ,2 this motion for pro [vac vice admission is
`
`being filed no sooner than twenty»onc ('21) days after service of the petition.
`
`
`
`] Corresponding motions For PM Here Vice admission are being concurrently tiled
`
`in co—pending cases [PRZO 14-0003] and IPRZOl 4—00038.
`
`2 Petitioner notes that while the Notice references the “Order * Authorizing Motion
`
`for Pro Hac Vice Admission” in Case lPR2013—00010 (MPT), the Order in Case
`
`II’R2013—00639 states that the Final Rule regarding Changes to Representation of
`
`Others Before the United States Patent and Trademark Office removes part l0 of
`
`title 37, C.F.R. referred to in the Order in Case lPR2013—000l O (MPT). (Cont)
`
`
`
`CASE lP‘RZO l4~00033
`
`Patent 6,771 ,200
`
`S"!7A1"EMEZN"I‘ OF FACTS
`
`Pursuant to the Order, the lbllowing statement of facts shows that there is
`
`good cause for the Board to recognize Mr. Rosenthal pro Ivac vice.
`
`Lead counsel for this proceeding, Clinton ll. 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 ofpatent infringement matters includingjuiy
`
`and bench trials, Markman hearings, and summaryjudgment hearings. Mr.
`
`Rosenthal is a member in good standing ot‘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 ofColumbia 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.
`
`
`
`CASE lPR2014—00033
`
`Patent 6,771,290
`
`Mr. Rosenthal is counsel for the Petitioner in a co—pending litigation, BE.
`
`Tec/mo/ogv, L. L. C. v. Goog/e, Inc, No. .l2—cv-0283O—JMP-FI‘MAP, pending in the
`
`United States District Court for the Western District of Tennessee. That litigation
`
`involves US. 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
`
`familiar 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, .Vlr. Rosent‘hal 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 OER. §§ 11.101 et. seq. and disciplinaryjurisdiction under 37
`
`CPR. § 11.l9(a).
`
`In the last three years, Mr. Rosenthal has applied for, and was
`
`admitted, to appear pro liac 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 IPR2014—00033
`
`Patent 6,771,290
`
`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.
`
`III. AFFIDAVIT 0R DECLARATION OF INDIVIDUAL SEEKING TO
`
`APPEAR
`
`This Motion for pro hac vice admission is accompanied by a Declaration of
`
`Mr. Rosenthal as required by the Order.
`
`
` /
`
`Clin n11. Brannon (Reg. No. 57,887)
`Mayer Brown, LLP
`1999 K Street, NW.
`Washington, DC. 20006—1 101
`(202) 263—3440
`
`w. w
`
`M M:
`
`”I;,1» V4,,
`
`
`
`DECLARATION OF MR. BRIAN A. ROSENTHAL IN SUPPORT OF
`
`MOTIONS FOR PRO HAC VICE ADMISSION
`
`Pursuant to 37 CFR. § 1.68, I, 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 Bar (2002), as well as the following Federal Courts:
`
`a. US. District Court for the District of Columbia (2009)
`
`1). US. Court of Appeals for the Federal Circuit (201 l)
`
`c. U S Court of Federal Claims (2011)
`
`d. US. District Court for the Western District of Tennessee (2013);
`
`I have not been suspended or disbarred from practice before any court or
`
`administrative body;
`
`I 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;
`
`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 of37 C.F.R.;
`
`I will be subject to the USPTO Code of Professional Responsibility set forth in
`
`37 C.F.R. §§ 1 1.101 et seq. and disciplinaryjurisdiction under 37 C.F.R. §
`
`
`
`1 previously applied for, and was granted, pro hac vice: status before the Board
`
`of Patent Appeals and Interferences to argue on behalfof third party requester
`
`Acushnet Company in inter partes reexaminations 95/000,120~l 23; 95/000,444;
`
`and 95/000,445; and
`
`I am an experienced litigation attorney and. have been involved in numerous
`
`patent infringement cases in [57edera.l Courts across the country.
`
`I have
`
`experience in various aspects of patent infringement matters including jury and
`
`bench trials, Markman hearings, and summary judgment hearings.
`
`I am lead
`
`counsel for Petitioner Google Inc. in a co—pending litigation (BE. Technology,
`
`LL. C. v. Geog/e, Inc, No. 12—cv—02830~JMP—”l‘l\/IP) in which US. Patent Nos.
`
`6,771,290 and 6,628,314 are asserted against Google Inc.
`
`I 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 l’oregoing is true and correct.
`
`Respectfully submitted,
`
`3
`
`,
`
`Date:
`
`’
`
`I;
`l
`
`‘W {2 3M7)
`,
`,
`
`3
`.2?
`1‘ g
`’x
`a” Ml} I”
`l‘
`
`- 3
`3/
`1/
`
`““‘jjxw
`' at.
`
`
`
`’
`‘3,
`., “’K’m
`Brian A HfoSonthal
`Mayer Blown, LLP
`1999 K Street, NW.
`
`
`3
`
`Washington, DC. 20006-1 101
`(202) 2636446
`
`
`
`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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