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`BEFORE 'lTl’lfiZ PATIENT” TRIAL AND APPEAL BOARD
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`GOOGLE INC.
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`Petitioner
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`V.
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`BE. TECHNOLOGY, LLC
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`Patent Owner
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`Case IPRZO l 4—00038
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`Patent 6,628,314
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`Before SALLY MEDLEY, Administrative Parent Judge.
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`GOOGLE INC’S MOTION FOR PRO HAC VICE ADMISSION UNDER 37
`C.F.R. § 42.10
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`Mail Stop Patent Board
`Patent Trial and Appeal Board
`US. Patent and Trademark Office
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`PO. BOX 1450
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`Alexandria, VA 22313—1450
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`CASlf-Z IPR2014v00038
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`Patent 6,6283 l 4
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`Pursuant to 37 CFR. § 42.10 and in response to the authorization provided
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`by the United States Patent and, Trademark O‘liiice‘s Patent Trial, and Appeal Board
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`(“Boarc”) in the Notice of Filing Date Accorded to Petition (Paper Number 3,
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`entered October l l, 2013) (“the Notice”), Petitioner Google, Inc. (“the Petitioner”
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`submits this motion for Brian A. Rosenthal to appear pro hac vice. Petitioner
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`respectfully requests the Board to recognize Mr. Rosenthal as counsel pro hac vice
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`during this proceeding. 1
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`TIME FOR FILING
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`Pursuant to the “Order - Authorizing Motion for Pro Mac Vice Admission”
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`in Case IPRZOl 3—00639 (“Order”), 2 this motion for pro hac vice admission is
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`being tiled no sooner than twenty~one (21) days after service of the petition.
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`1 Corresponding motions for Pro Hac Vice admission are being concurrently tiled
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`in co-pending cases IPR2014-0003l and IPR2014-00033.
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`2 Petitioner notes that while the Notice references the “Order —~ Authorizing Motion
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`for Pro Hac Vice Admission” in Case IPR2013—00010 (MPT), the Order in Case
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`IPRZO 13—00639 states that the Final Rule regarding, Changes to Representation of
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`Others Before the United States Patent and Trademark Office removes part 10 of
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`title 37, C.F.R. referred to in the Order in Case IPR2013~OOOlO (MPT). (cont)
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`CASE lPRZOl4~OOO38
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`Patent 6,628,314
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`SPATEMENT O F FACTS
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`Pursuant to the Order, the lollowin g statement of facts shows that there is
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`good cause for the Board to recognize Mr. Rosenthal pro hac vice.
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`lead counsel for this proceeding, Clinton H. Brannon, is a registered
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`practitioner (Reg. No. 57,887).
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`Mr. Roscnthal is an experienced litigation attorney, and has been involved in
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`numerous patent infringement cases in federal District Courts across the country.
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`He has experience in various aspects ot’patent infringement matters including jury
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`and bench trials, Markman hearings, and summaryjudgment hearings. Mr.
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`Rosenthal is a member in good standing of the New York Bar and the District of
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`Columbia Bar, and is admitted to practice before the United States Court of
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`Appeals for the Federal Circuit, the United States Court ofFederal Claims, and the
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`United States District Courts for the District of Columbia and Western District of
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`Tennessee. Mr. Rosenthal has not been suspended or disbarred from practice,
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`never had any application for admission to practice denied, nor had any sanctions
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`or contempt citations imposed against him.
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`Accordingly, for the purpose of this proceeding, Petitioners will refer to the Order
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`in Case l'PR2013—00639.
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`
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`CASE IP'R2014—00038
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`Patent 6,628,314
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`Mr. Rosenthal is counsel for the Petitioner in a co—pending litigation, 13.13.
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`flak/70mg)», L.[..C'. v. Geog/e, Inc, No. 12~cv-02830—J M‘PJI‘MP, pending in the
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`United. States District Court for the Western District of’l‘cnncssee. That litigation
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`involves US. Patent No. 6,6283 l4, the same patent at issue in this proceeding.
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`In
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`his role as counsel in the co~pending litigation, Mr. Rosenthal has reviewed. and is
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`familiar with the ’3l4 Patent, the asserted prior art references, and invalidity claim
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`charts. Further, Mr. Rosenthal has been involved and is familiar with the factual
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`and legal arguments at issue in. that case, including the claim construction issues
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`presented in. the Clo—pending litigation. As such, .Vlr. Rosenthal has established
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`familiarity with the subject matter at issue in this proceeding.
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`Mr. Rosenthal has read and will comply with the Office Patent Trial Practice
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`Guide and the Board’s Rules for Practice for Trials set forth in part 42 of the
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`C.F.R,., and he agrees to be subject to the USPTO Rules of Professional Conduct
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`set forth in. 37 CPR. §§ l 1.10] et. seq. and, disciplinaryjurisdiction under 37
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`CPR. § 1
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`l .l9(a).
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`In the last three years, Mr. Rosenthal has applied for, and was
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`admitted, to appear pro hac vice in. inter partes reexaminations 95/000,120—123;
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`95/000,444, and 95/000,445.
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`Petitioner has expended significant financial resources in the co—pending
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`litigation with Mr. Rosenthal, as counsel, and Petitioner wishes to continue using
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`Mr. Rosenthal in this proceeding.
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`
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`CASE 1PR2014-00038
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`Patent 6,628,314
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`As such, Petitioner respectfidly submits that there is good cause for the
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`Board to recognize Mr. Rosenthal as counsel, pro hac vice during this proceeding.
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`Ill. AFFIDAVIT 0R DECLARATION OF INDIVIDUAL SEEKING TO
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`APPEAR
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`This Motion for pro hac vice admission is accompanied by a Declaration of
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`Mr. Rosenthal as required by the Order.
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`
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`Mayer Brown, LLP
`1999 K Street, NW.
`Washington, DC. 20006-1 101
`(202) 263-3440
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`
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`DECLARATION OF MR. BRIAN A. ROSENTHAL IN SUPPORT OF
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`MOTIONS FOR PRO HAC VICE ADMISSION
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`Pursuant to 37 C.F.R. § 1.68, 1, Brian A. Rosenthal, hereby attest to the
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`following:
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`1 am a member in good standing of the New York. Bar (2001) and. the District of
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`Columbia Bar (2002‘), as well as the following Federal Courts:
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`a. 1.1.8. District Court for the District of Columbia (2009)
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`b. US. Court of Appeals for the Federal Circuit (201 l)
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`C. US. Court of Federal Claims (201 l)
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`d. US. District Court for the Western District of Tennessee (2013);
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`l have not been suspended or disbarred from practice before any court or
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`administrative body;
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`I have never had an application for admission to practice before any court or
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`administrative body denied;
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`1 have never had sanctions or contempt citations imposed by any court or
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`administrative body imposed against me;
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`I have read and will comply with the Office Patent Trial Practice Guide and the
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`Board’s Rules of Practice for Trials set forth in part 42 of 37 C.F.R.;
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`I will be subject to the USPTO Code of Professional Responsibility set forth in,
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`37 C.F.R. §§ 1 1.101 et seq. and disciplinaryjurisdiction under 37 C.F.R. §
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`
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`I previously applied for, and was granted, pro hac vice status before the Board
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`of Patent Appeals and InterI’erences to argue on behalf of third party requester
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`Acushnet Company in inter partes reexaminations 95/000, l 20—123; 95/000,444;
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`and 95/000,445; and
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`I am an experienced Litigation attorney and have been involved in numerous
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`patent inti‘ringement cases in Federal Courts across the country.
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`I have
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`experience in various aspects ofpatent infringement matters includingjury and
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`bench trials, Markman hearings, and summary judgment hearings.
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`I am lead
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`counsel for Petitioner Google Inc. in a co-pending litigation (BE. Technology,
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`LLC v. Gong/c, Inc, No.
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`l.2~cv—02830—JMP~TMP) in which US. Patent Nos.
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`6,771,290 and 6,628,314 are asserted against Google Inc.
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`I have reviewed and
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`am familiar with the asserted patents, prior art references, and claim charts in
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`the co-pending litigation and the Petition. Further, I have been involved and am
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`familiar with the factual and legal arguments including the claim construction
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`issues for the co~pending litigation and the Petition. Accordingly, I am familiar
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`with the subject matter at issue in the proceeding.
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`
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`I declare under penalty of perjury that the foregoing is true and correct.
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`-~
`Date:
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`r"
`1/
`2; KY”,
`Qty .‘
`197:? J) "I
`3;
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`*'
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`Respectfully submitted,
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`
`,
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`Brian ANCRéS/enthal
`Mayer Brown, LLP
`1999 K Street, N.W.
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`Washington, DC. 2000641 101
`(202) 263—3446
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`
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this day, November 18, 2013, a copy of this Motion
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`for Pm Hac Vice Admission and a copy of the Affidavit of Mr. Brian A. Rosenthal
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`in Support of the Motion for Pro ,Hac Vice were served upon the following
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`persons, by placing into Express Mail directed to the attorney of record for the
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`patent at the following address:
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`Jason S. Angel]
`Robert E. Freitas
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`F reitas, Tseng & Kaufman LLP
`lOO Marine Parkway, Suite 200
`Redwood Shores, CA 94065
`'an ell a/ftklawcom
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`rfeitas ( ,ftklawcom
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`BEIPRFTKQDfldau/com
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`Date:
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`/é g2&2 A]
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`g 3;; 22
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`Clinton H. Brannon
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`Reg. No. 57,887
`Counsel for Petitioner
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`.
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`