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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`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
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`Petitioner
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`v.
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`CRUISE CONTROL TECHNOLOGIES LLC
`Patent Owner
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`_______________
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`Case IPR2014-00281
`U.S. Patent 6,324,463
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`_______________
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`
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`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)
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`FILED VIA PRPS
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`Case IPR2014-00281
`Patent 6,324,463
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`I.
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`RELIEF REQUESTED
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` Jaguar Land Rover’s North Am., LLC’S
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` Motion for Pro Hac Vice Admission of Chi Cheung
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`Pursuant to 37 C.F.R. § 42.10(c), and the Notice of Filing Date Accorded to
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`Petition and Time for Filing Patent Owner Preliminary Response (Paper No. 10),
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`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
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`this proceeding. Co-Petitioner JLR has conferred with counsel for Cruise Control
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`Technologies LLC (the “Patent Owner”), who does not oppose this motion.
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`II. LEGAL STANDARD
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`Pursuant to 37 C.F.R. § 42.10(c):
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`The Board may recognize counsel pro hac vice during a
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`proceeding upon a showing of good cause, subject to the
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`condition that lead counsel be a registered practitioner
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`and to any other conditions as the Board may impose. For
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`example, where
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`the
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`lead counsel
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`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
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`and has an established familiarity with the subject matter
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`at issue in the proceeding.
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`The Notice of Filing Date Accorded to Petition and Time for Filing Patent
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`Case IPR2014-00281
`Patent 6,324,463
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` Jaguar Land Rover’s North Am., LLC’S
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` 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
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`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 --
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`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
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`Case IPR2014-00281
`Patent 6,324,463
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` Jaguar Land Rover’s North Am., LLC’S
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` 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
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`the Board’s Rules of Practice for Trials set forth in part
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`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.
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`§ 11.19(a);
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`vii. All other proceedings before the Office for which the
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`individual has applied to appear pro hac vice in the last
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`three (3) years; and
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`viii. Familiarity with the subject matter at issue in the
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`proceeding.
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`(IPR2013-00639, Paper 7, at 3.) As set forth below, and
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`in
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`the
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`accompanying declaration of Chi Cheung (“Cheung Decl.”), each of these
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`Case IPR2014-00281
`Patent 6,324,463
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` Jaguar Land Rover’s North Am., LLC’S
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` 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
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`As an initial matter, Mr. Cheung is a member in good standing of the State
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`Bar of New York (Admitted July 7, 2009, Registration No. 4740205) and is also
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`admitted to practice before the U.S. District Courts for the Southern District of
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`New York, Eastern District of New York, Eastern District of Michigan and the
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`U.S. Court of Appeals for the Federal Circuit. (Cheung Decl., ¶ 2.) Mr. Cheung
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`has never been suspended or disbarred from practice before any court or
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`administrative body. (Id. at ¶ 3.) No application of Mr. Cheung for admission to
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`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
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`Mr. Cheung. (Id.) Mr. Cheung has read and will comply with the Office Patent
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`Trial Practice Guide and the Board’s Rules of Practice for Trials set forth in part 42
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`of the C.F.R. (Id. at ¶ 4.) Mr. Cheung acknowledges and agrees that he will be
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`subject to the USPTO Rules of Professional Conduct set forth in 37 C.F.R.
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`§§ 11.101 et seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a). (Id.)
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`Petitioner’s lead counsel in this proceeding, Eric A. Buresh, is a registered
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`practitioner (Reg. No. 50,394).
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`As set forth below (and in his accompanying declaration), Mr. Cheung is
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`Case IPR2014-00281
`Patent 6,324,463
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` Jaguar Land Rover’s North Am., LLC’S
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` Motion for Pro Hac Vice Admission of Chi Cheung
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`both an experienced and technically trained litigation attorney and has an
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`established familiarity with the subject matter at issue in this proceeding.
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`Mr. Cheung has an undergraduate degree in Systems Design Engineering
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`from the University of Waterloo and graduated from Northwestern University
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`School of Law in 2008. (Id. at ¶ 5.) Mr. Cheung has a total of four years of
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`electrical hardware and computer software work experience as an engineering
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`intern during his time at Waterloo, and as a full-time engineer afterwards. (Id.)
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`Mr. Cheung has over six years of patent litigation experience. (Id. at ¶ 6.)
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`He is a member of Latham & Watkins intellectual property group, with a focus on
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`patent litigation. (Id.) In 2014, Mr. Cheung was named a “Rising Star” by Super
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`Lawyers magazine in the area of intellectual property litigation. (Id.)
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`Mr. Cheung also has an established familiarity with the subject matter at
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`issue in this proceeding. Mr. Cheung has been actively involved in all aspects of
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`this proceeding, including Petitioner’s factual investigation and development of its
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`invalidity and claim construction positions regarding the claims of U.S. Patent No.
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`6,324,463 (the “‘463 Patent”). Mr. Cheung drafted much of the Petition for Inter
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`Partes Review of the ‘463 Patent. (Paper No. 1) Mr. Cheung was also actively
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`involved in the related district court litigation between the Patent Owner and
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`Petitioner, Cruise Control Technologies LLC v. Jaguar Land Rover North America
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`LLC, 2:14-cv-11511 (E.D. Mich.) prior to it being stayed. (Id. at ¶ 7.) Mr. Cheung
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`Case IPR2014-00281
`Patent 6,324,463
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` Jaguar Land Rover’s North Am., LLC’S
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` Motion for Pro Hac Vice Admission of Chi Cheung
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`was admitted to E.D. Mich. for the primary purpose of litigating that matter on
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`May 29, 2014. (Id.) The ‘463 Patent, which is at issue in this proceeding, is the
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`sole patent asserted by the Patent Owner in the district court litigation. (Id. at ¶ 8.)
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`Mr. Cheung has also worked closely with Lead Counsel for each of four
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`related petitions submitted in the following four proceedings (“Related IPR
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`Proceedings”) involving the same patent (the ‘463 Patent) that are currently
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`pending before the Patent Trial and Appeal Board:
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`• Case No. IPR2014-00289;
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`• Case No. IPR2014-00291;
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`• Case No. IPR2014-00279;
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`• Case No. IPR2014-00280.
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`(Id. at ¶ 9.) Co-Petitioner JLR is also a co-petitioner in each of these Related IPR
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`Proceedings. Mr. Cheung has not applied to appear pro hac vice in any other
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`proceeding before the USPTO. (Id.)
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`In view of Mr. Cheung’s extensive knowledge of the subject matter at issue
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`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
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`his involvement in the continued prosecution of this proceeding, including
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`7
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`Case IPR2014-00281
`Patent 6,324,463
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` Jaguar Land Rover’s North Am., LLC’S
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` Motion for Pro Hac Vice Admission of Chi Cheung
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`attendance1 at the scheduled March 24, 2015 oral argument hearing.
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`IV. CONCLUSION
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`For the foregoing reasons, Co-Petitioner JLR respectfully requests that Mr.
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`Cheung be admitted pro hac vice in this proceeding.
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`Dated: March 11, 2015
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`Respectfully submitted,
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`ERISE IP, P.A.
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`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
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`ATTORNEYS FOR PETITIONERS
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` 1
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` As agreed to by the parties, and as required by the Board, lead counsel Mr. Eric
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`A. Buresh is the “person who speaks on behalf of, and represents, all of the
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`companies” including Co-Petitioner JLR, and if admitted pro hac vice, Mr. Cheung
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`would not present separate argument, e.g. at the oral hearing. (Paper 39.)
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`Case IPR2014-00281
`Patent 6,324,463
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` Jaguar Land Rover’s North Am., LLC’S
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` Motion for Pro Hac Vice Admission of Chi Cheung
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`CERTIFICATE OF SERVICE
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`I certify that on this 11th day of March, 2015, a copy of:
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`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)
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`
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`was served by mail on Patent Owner’s lead and backup counsel, at the following
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`addresses:
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`John Kasha
`Kelly L. Kasha
`Kasha Law LLC
`14532 Dufief Mill Road
`North Potomac, MD 20878
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`Respectfully submitted,
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`ERISE IP, P.A
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`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
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`ATTORNEYS FOR PETITIONERS
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