`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
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`NETFLIX, INC.,
`Petitioner,
`
`v.
`
`OPENTV, INC.,
`Patent Owner.
`________________
`
`IPR2014-00267
`Patent 7,409,437
`
`________________
`
`PETITIONER’S SECOND MOTION FOR PRO HAC VICE ADMISSION
`PURSUANT TO 37 C.F.R. § 42.10(C)
`
`
`
`Petitioner’s Second Motion for Pro Hac Vice Admission
`
`IPR2014-00267
`Patent No. 7,409,437
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`Petitioner Netflix, Inc. respectfully moves that the Board recognize Ms.
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`Laura E. Miller as counsel pro hac vice during this proceeding.
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`1. Time for Filing
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`This Motion for Pro Hac Vice Admission is being filed no sooner than
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`twenty one (21) days after service of the petition.
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`2. Statement of Facts Showing Good Cause for Counsel Pro Hac Vice
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`Petitioner has been authorized to file motions seeking admission pro hac
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`vice under 37 C.F.R. 42.10(c). (Paper No. 3 at 2.). Petitioner’s lead and back-
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`up counsel are registered practitioners:
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`Lead Counsel:
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`Andrew S. Ehmke, USPTO Reg. No. 50,271;
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`Backup Counsel: Scott T. Jarratt, USPTO Reg. No. 70,297.
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`The following statement of facts shows that there is good cause for the Board to
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`recognize Ms. Miller pro hac vice on behalf of the Petitioner.
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`In summary, Ms. Miller is an experienced litigator, has established
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`familiarity with the subject matter at issue in this proceeding from her participation
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`in co-pending litigation involving the subject patent, and if admitted, will be
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`involved in the depositions that occur in this proceeding. Specifically, U.S. Patent
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`No. 7,409,437 is currently asserted against Petitioner in a co-pending litigation,
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`OpenTV, Inc., et al. v. Netflix, Inc., 3:14-cv-01525-RS, 5:14-cv-01723-RS (N.D.
`
`–1–
`
`
`
`IPR2014-00267
`Petitioner’s Second Motion for Pro Hac Vice Admission
`Patent No. 7,409,437
`Cal.) (“the co-pending litigation”). Ms. Miller is a member of the California bar in
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`good standing, and is representing the Petitioner, Netflix, Inc., in the co-pending
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`litigation.
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`Ms. Miller has analyzed prior art references and claim charts in connection
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`with invalidity contentions and has been involved in forming claim construction
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`positions related to the claimed inventions, all of which are relevant to the petition
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`requesting inter partes review of U.S. Patent No. 7,409,437. Netflix, Inc. wishes
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`to apply Ms. Miller’s knowledge of the patent by employing her as counsel in this
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`proceeding. Admission of Ms. Miller pro hac vice will enable the Petitioner to
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`avoid unnecessary expense and duplication of work between this proceeding and
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`the co-pending litigation.
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`Petitioner’s lead and backup counsel are registered practitioners and Ms.
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`Miller is an experienced litigation attorney having familiarity with the subject
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`matter at issue in this proceeding. Therefore, Netflix, Inc. respectfully submits that
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`there is good cause for the Board to recognize Ms. Miller as counsel pro hac vice
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`during this proceeding.
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`–2–
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`
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`Petitioner’s Second Motion for Pro Hac Vice Admission
`3. Affidavit of Individual Seeking to Appear
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`IPR2014-00267
`Patent No. 7,409,437
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`This Motion for Pro Hac Vice Admission is supported by an Affidavit of
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`Ms. Miller (NTFX-1011).
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`Date: August 12, 2014
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`Respectfully submitted,
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`By /Andrew S. Ehmke/
`Andrew S. Ehmke
`Registration No. 50,271
`Lead Counsel for Petitioner, Netflix
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`–3–
`
`
`
`Petitioner’s Second Motion for Pro Hac Vice Admission
`
`IPR2014-00267
`Patent No. 7,409,437
`
`PETITIONER’S EXHIBIT LIST
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`August 12, 2014
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`NTFX-1001
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`U.S. Patent No. 7,409,437
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`NTFX-1002
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`Prosecution History of U.S. Patent No. 7,409,437
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`NTFX-1003
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`Declaration of Richard Kramer Under 37 C.F.R. § 1.68
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`NTFX-1004
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`U.S. Patent No. 5,818,441 to Throckmorton et al.
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`NTFX-1005
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`U.S. Patent No. 5,113,259 to Romesburg et al.
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`NTFX-1006
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`U.S. Patent No. 5,724,103 to Batchelor
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`NTFX-1007
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`U.S. Patent No. 5,905,865 to Palmer et al.
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`NTFX-1008
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`NTFX-1009
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`NTFX-1010
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`NTFX-1011
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`U.S. Provisional Application No. 60/008,111 by Palmer
`et al.
`Webster’s New World Dictionary of Computer Terms
`(selected pages).
`Affidavit of Clement S. Roberts In Support of
`Petitioner’s Motion for Pro Hac Vice Admission
`Affidavit of Laura E. Miller In Support of Petitioner’s
`Second Motion for Pro Hac Vice Admission
`
`
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`Petitioner’s Second Motion for Pro Hac Vice Admission
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`IPR2014-00267
`Patent No. 7,409,437
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`CERTIFICATE OF SERVICE
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`The undersigned certifies, in accordance with 37 C.F.R. § 42.105, that
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`service was made on the Patent Owner as detailed below.
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`Date of service August 12, 2014
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`Manner of service Electronic Mail
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`Documents served Petitioner’s Second Motion For Pro Hac Vice Admission
`Pursuant To 37 C.F.R. § 42.10(C)
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`Petitioner’s Exhibit List of August 12, 2014
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`Exhibit NTFX-1011
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`Persons served Erika H. Arner (erika.arner@finnegan.com)
`Joshua L. Goldberg (joshua.goldberg@finnegan.com)
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`11955 Freedom Drive
`Reston, VA, 20190
`
`Russell E. Levine (russell.levine@kirkland.com)
`Eugene Goryunov (eugene.goryunov@kirkland.com)
`James B. Medek (james.medek@kirkland.com)
`Kirkland and Ellis, LLP
`300 North LaSalle
`Suite 2400
`Chicago, IL 60654
`
`/Andrew S. Ehmke/
`Andrew S. Ehmke
`Registration No. 50,271