UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`TOYOTA MOTOR NORTH AMERICA, INC., SUBARU OF AMERICA, INC.,
`AMERICAN HONDA MOTOR CO., INC., NISSAN NORTH AMERICA, INC.,
`FORD MOTOR COMPANY, JAGUAR LAND ROVER NORTH AMERICA,
`LLC, AND VOLVO CARS OF NORTH AMERICA, LLC
`
`Petitioner
`
`v.
`
`CRUISE CONTROL TECHNOLOGIES LLC
`Patent Owner
`
`_______________
`
`Case IPR2014-00281
`U.S. Patent 6,324,463
`
`_______________
`
`
`
`CO-PETITIONER JAGUAR LAND ROVER NORTH AMERICA, LLC’S
`MOTION FOR PRO HAC VICE ADMISSION OF CHI CHEUNG UNDER 37
`C.F.R. § 42.10(c)
`
`
`
`FILED VIA PRPS
`
`
`
`
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`TOYOTA MOTOR NORTH AMERICA, INC., SUBARU OF AMERICA, INC.,
`AMERICAN HONDA MOTOR CO., INC., NISSAN NORTH AMERICA, INC.,
`FORD MOTOR COMPANY, JAGUAR LAND ROVER NORTH AMERICA,
`LLC, AND VOLVO CARS OF NORTH AMERICA, LLC
`
`Petitioner
`
`v.
`
`CRUISE CONTROL TECHNOLOGIES LLC
`Patent Owner
`
`_______________
`
`Case IPR2014-00281
`U.S. Patent 6,324,463
`
`_______________
`
`
`
`CO-PETITIONER JAGUAR LAND ROVER NORTH AMERICA, LLC’S
`MOTION FOR PRO HAC VICE ADMISSION OF CHI CHEUNG UNDER 37
`C.F.R. § 42.10(c)
`
`
`
`FILED VIA PRPS
`
`
`
`
`
`
`
`
`Case IPR2014-00281
`Patent 6,324,463
`
`
`I.
`
`RELIEF REQUESTED
`
` Jaguar Land Rover’s North Am., LLC’S
`
`
` Motion for Pro Hac Vice Admission of Chi Cheung
`
`Pursuant to 37 C.F.R. § 42.10(c), and the Notice of Filing Date Accorded to
`
`Petition and Time for Filing Patent Owner Preliminary Response (Paper No. 10),
`
`co-Petitioner Jaguar Land Rover North America, LLC (“Co-Petitioner JLR”)
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`respectfully requests the pro hac vice admission of attorney Chi Cheung, Esq. in
`
`this proceeding. Co-Petitioner JLR has conferred with counsel for Cruise Control
`
`Technologies LLC (the “Patent Owner”), who does not oppose this motion.
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`II. LEGAL STANDARD
`
`Pursuant to 37 C.F.R. § 42.10(c):
`
`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
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`lead counsel
`
`is a registered
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`practitioner, a motion to appear pro hac vice by counsel
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`who is not a registered practitioner may be granted upon
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`showing that counsel is an experienced litigating attorney
`
`and has an established familiarity with the subject matter
`
`at issue in the proceeding.
`
`The Notice of Filing Date Accorded to Petition and Time for Filing Patent
`2
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`
`
`Case IPR2014-00281
`Patent 6,324,463
`
`
` Jaguar Land Rover’s North Am., LLC’S
`
`
` Motion for Pro Hac Vice Admission of Chi Cheung
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`Owner Preliminary Response (Paper No. 10) further instructs:
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`The parties are advised that under 37 C.F.R. § 42.10(c),
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`recognition of counsel pro hac vice requires a showing of
`
`good cause. The parties are authorized to file motions for
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`pro hac vice admission under 37 C.F.R. § 42.10(c). Such
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`motions shall be filed in accordance with the “Order --
`
`Authorizing Motion for Pro Hac Vice Admission” in
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`Case IPR2013-00639, Paper 7, a copy of which is
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`available on the Board Web site under “Representative
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`Orders, Decisions, and Notices.”
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`(Id. at 2.) The above-referenced “Order -- Authorizing Motion for Pro Hac
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`Vice Admission” further provides:
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`A motion for pro hac vice admission must:
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`a.
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`Contain a statement of facts showing there is good cause for the
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`Board to recognize counsel pro hac vice during the proceeding.
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`b.
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`Be accompanied by an affidavit or declaration of the individual
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`seeking to appear attesting to the following:
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`i.
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`Membership in good standing of the Bar of at least one
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`State or the District of Columbia;
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`ii.
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`No suspensions or disbarments from practice before any
`3
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`
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`
`
`Case IPR2014-00281
`Patent 6,324,463
`
`
` Jaguar Land Rover’s North Am., LLC’S
`
`
` Motion for Pro Hac Vice Admission of Chi Cheung
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`court or administrative body;
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`iii. No application for admission to practice before any court
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`or administrative body ever denied;
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`iv. No sanctions or contempt citations imposed by any court
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`or administrative body;
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`v.
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`The individual seeking to appear has read and will
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`comply with the Office Patent Trial Practice Guide and
`
`the Board’s Rules of Practice for Trials set forth in part
`
`42 of 37 C.F.R.;
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`vi.
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`The individual will be subject to the USPTO Rules of
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`Professional Conduct set forth in 37 C.F.R. §§ 11.101 et.
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`seq. and disciplinary
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`jurisdiction under 37 C.F.R.
`
`§ 11.19(a);
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`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.
`
`(IPR2013-00639, Paper 7, at 3.) As set forth below, and
`
`in
`
`the
`
`accompanying declaration of Chi Cheung (“Cheung Decl.”), each of these
`4
`
`
`
`
`
`Case IPR2014-00281
`Patent 6,324,463
`
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` Jaguar Land Rover’s North Am., LLC’S
`
`
` Motion for Pro Hac Vice Admission of Chi Cheung
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`requirements is satisfied here.
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`III. STATEMENT OF FACTS SHOWING GOOD CAUSE FOR THE
`BOARD TO RECOGNIZE CHI CHEUNG PRO HAC VICE IN THIS
`PROCEEDING
`
`As an initial matter, Mr. Cheung is a member in good standing of the State
`
`Bar of New York (Admitted July 7, 2009, Registration No. 4740205) and is also
`
`admitted to practice before the U.S. District Courts for the Southern District of
`
`New York, Eastern District of New York, Eastern District of Michigan and the
`
`U.S. Court of Appeals for the Federal Circuit. (Cheung Decl., ¶ 2.) Mr. Cheung
`
`has never been suspended or disbarred from practice before any court or
`
`administrative body. (Id. at ¶ 3.) No application of Mr. Cheung for admission to
`
`practice before any court or administrative body has ever been denied. (Id.) No
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`court or administrative body has imposed sanctions or contempt citations against
`
`Mr. Cheung. (Id.) Mr. Cheung 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 ¶ 4.) Mr. Cheung acknowledges and agrees that he will be
`
`subject to the USPTO Rules of Professional Conduct set forth in 37 C.F.R.
`
`§§ 11.101 et seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a). (Id.)
`
`Petitioner’s lead counsel in this proceeding, Eric A. Buresh, is a registered
`
`practitioner (Reg. No. 50,394).
`
`As set forth below (and in his accompanying declaration), Mr. Cheung is
`
`
`
`5
`
`
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`Case IPR2014-00281
`Patent 6,324,463
`
`
` Jaguar Land Rover’s North Am., LLC’S
`
`
` Motion for Pro Hac Vice Admission of Chi Cheung
`
`both an experienced and technically trained litigation attorney and has an
`
`established familiarity with the subject matter at issue in this proceeding.
`
`Mr. Cheung has an undergraduate degree in Systems Design Engineering
`
`from the University of Waterloo and graduated from Northwestern University
`
`School of Law in 2008. (Id. at ¶ 5.) Mr. Cheung has a total of four years of
`
`electrical hardware and computer software work experience as an engineering
`
`intern during his time at Waterloo, and as a full-time engineer afterwards. (Id.)
`
`Mr. Cheung has over six years of patent litigation experience. (Id. at ¶ 6.)
`
`He is a member of Latham & Watkins intellectual property group, with a focus on
`
`patent litigation. (Id.) In 2014, Mr. Cheung was named a “Rising Star” by Super
`
`Lawyers magazine in the area of intellectual property litigation. (Id.)
`
`Mr. Cheung also has an established familiarity with the subject matter at
`
`issue in this proceeding. Mr. Cheung has been actively involved in all aspects of
`
`this proceeding, including Petitioner’s factual investigation and development of its
`
`invalidity and claim construction positions regarding the claims of U.S. Patent No.
`
`6,324,463 (the “‘463 Patent”). Mr. Cheung drafted much of the Petition for Inter
`
`Partes Review of the ‘463 Patent. (Paper No. 1) Mr. Cheung was also actively
`
`involved in the related district court litigation between the Patent Owner and
`
`Petitioner, Cruise Control Technologies LLC v. Jaguar Land Rover North America
`
`LLC, 2:14-cv-11511 (E.D. Mich.) prior to it being stayed. (Id. at ¶ 7.) Mr. Cheung
`6
`
`
`
`
`
`Case IPR2014-00281
`Patent 6,324,463
`
`
` Jaguar Land Rover’s North Am., LLC’S
`
`
` Motion for Pro Hac Vice Admission of Chi Cheung
`
`was admitted to E.D. Mich. for the primary purpose of litigating that matter on
`
`May 29, 2014. (Id.) The ‘463 Patent, which is at issue in this proceeding, is the
`
`sole patent asserted by the Patent Owner in the district court litigation. (Id. at ¶ 8.)
`
`Mr. Cheung has also worked closely with Lead Counsel for each of four
`
`related petitions submitted in the following four proceedings (“Related IPR
`
`Proceedings”) involving the same patent (the ‘463 Patent) that are currently
`
`pending before the Patent Trial and Appeal Board:
`
`• Case No. IPR2014-00289;
`
`• Case No. IPR2014-00291;
`
`• Case No. IPR2014-00279;
`
`• Case No. IPR2014-00280.
`
`(Id. at ¶ 9.) Co-Petitioner JLR is also a co-petitioner in each of these Related IPR
`
`Proceedings. Mr. Cheung has not applied to appear pro hac vice in any other
`
`proceeding before the USPTO. (Id.)
`
`In view of Mr. Cheung’s extensive knowledge of the subject matter at issue
`
`in this proceeding and the Related IPR Proceedings, and in view of the
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`interrelatedness of this proceeding and the related district court litigation, Co-
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`Petitioner JLR has a substantial need for Mr. Cheung’s pro hac vice admission and
`
`his involvement in the continued prosecution of this proceeding, including
`
`
`
`7
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`
`
`Case IPR2014-00281
`Patent 6,324,463
`
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` Jaguar Land Rover’s North Am., LLC’S
`
`
` Motion for Pro Hac Vice Admission of Chi Cheung
`
`attendance1 at the scheduled March 24, 2015 oral argument hearing.
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`IV. CONCLUSION
`
`For the foregoing reasons, Co-Petitioner JLR respectfully requests that Mr.
`
`Cheung be admitted pro hac vice in this proceeding.
`
`Dated: March 11, 2015
`
`
`
`
`
`
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`Respectfully submitted,
`
`ERISE IP, P.A.
`
`BY: /s/ Eric Buresh
`Eric A. Buresh, Reg. No. 50,394
`Jason R. Mudd, Reg. No. 57,700
`6201 College Blvd., Suite 300
`Overland Park, KS 66211
`P: (913) 777-5600
`F: (913) 777-5601
`eric.buresh@eriseip.com
`jason.mudd@eriseip.com
`
`ATTORNEYS FOR PETITIONERS
`
`
`
` 1
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` As agreed to by the parties, and as required by the Board, lead counsel Mr. Eric
`
`A. Buresh is the “person who speaks on behalf of, and represents, all of the
`
`companies” including Co-Petitioner JLR, and if admitted pro hac vice, Mr. Cheung
`
`would not present separate argument, e.g. at the oral hearing. (Paper 39.)
`
`
`
`8
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`
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`Case IPR2014-00281
`Patent 6,324,463
`
`
` Jaguar Land Rover’s North Am., LLC’S
`
`
` Motion for Pro Hac Vice Admission of Chi Cheung
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I certify that on this 11th day of March, 2015, a copy of:
`
`CO-PETITIONER JAGUAR LAND ROVER NORTH AMERICA, LLC’S
`MOTION FOR PRO HAC VICE ADMISSION OF CHI CHEUNG UNDER 37
`C.F.R. § 42.10(c)
`
`
`
`was served by mail on Patent Owner’s lead and backup counsel, at the following
`
`addresses:
`
`John Kasha
`Kelly L. Kasha
`Kasha Law LLC
`14532 Dufief Mill Road
`North Potomac, MD 20878
`
`
`
`
`
`9
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`Respectfully submitted,
`
`ERISE IP, P.A
`
`BY: /s/ Eric Buresh
`Eric A. Buresh, Reg. No. 50,394
`Jason R. Mudd, Reg. No. 57,700
`6201 College Blvd., Suite 300
`Overland Park, KS 66211
`P: (913) 777-5600
`F: (913) 777-5601
`eric.buresh@eriseip.com
`jason.mudd@eriseip.com
`
`ATTORNEYS FOR PETITIONERS
`
`
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