Case IPR2014-00778
`Attorney Docket No. CA0006P2
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`
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`Patent No. RE43,707E
`Page 1 of 11
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`EIZO CORPORATION
`Petitioner
`
`v.
`
`BARCO N.V.
`Patent Owner
`___________
`
`Case IPR2014-00778
`Patent RE43,707E
`___________
`
`MOTION FOR PRO HAC VICE ADMISSION
`
`
`
`UNDER 37 C.F.R. § 42.10
`
`
`Attorney Docket No. CA0006P2
`
`
`
`Patent No. RE43,707E
`Page 1 of 11
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`EIZO CORPORATION
`Petitioner
`
`v.
`
`BARCO N.V.
`Patent Owner
`___________
`
`Case IPR2014-00778
`Patent RE43,707E
`___________
`
`MOTION FOR PRO HAC VICE ADMISSION
`
`
`
`UNDER 37 C.F.R. § 42.10
`
`
`
`Case IPR2014-00778
`Attorney Docket No. CA0006P2
`
`
`
`Patent No. RE43,707E
`Page 2 of 11
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`Pursuant to 37 C.F.R. § 42.10(c), the Patent Owner respectfully
`
`requests that the Board recognize Jeffrey C. Morgan as counsel pro hac vice
`
`during this proceeding.
`
`1.
`
`Time For Filing
`
`This Motion for Pro Hac Vice Admission is being filed no sooner than
`
`twenty-one (21) days after service of the petition, in accordance with the
`
`“Order -- Authorizing Motion for Pro Hac Vice Admission” in Case
`
`IPR2013-00639, Paper No. 7 and as instructed by the Notice mailed June 11,
`
`2014, Paper No. 3 in this proceeding.
`
`2.
`
`Statement of Facts
`
`In accordance with the above-referenced Order and Notice, the
`
`following statement of facts, as supported by the Affidavit of Jeffrey C.
`
`Morgan submitted herewith respectfully shows that there is good cause for
`
`the Board to recognize Mr. Morgan pro hac vice.
`
`Patent Owner’s lead counsel, Kerry T. Hartman, is a registered
`
`practitioner (Reg. No. 41,818).
`
`Mr. Morgan is a partner with the law firm of Barnes & Thornburg
`
`LLP. (Affidavit at ¶ 8.) Mr. Morgan is an experienced patent litigation
`
`
`
`Case IPR2014-00778
`Attorney Docket No. CA0006P2
`
`
`attorney. (Id.) Mr. Morgan has litigated patent cases for his entire career—
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`Patent No. RE43,707E
`Page 3 of 11
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`over seventeen (17) years. (Id.)
`
`Mr. Morgan is a member in good standing of the State Bar of Georgia
`
`and the Commonwealth of Massachusetts, as well as multiple federal courts.
`
`(Id., at ¶ 1.)
`
`Mr. Morgan has never been suspended or disbarred from practice
`
`before any court or administrative body. (Id., at ¶ 2.)
`
`No application of Mr. Morgan for admission to practice before any
`
`court or administrative body has ever been denied. (Id., at ¶ 3.)
`
`No sanctions or contempt citations have ever been imposed against
`
`Mr. Morgan by any court or administrative body. (Id., at ¶ 4.)
`
`Mr. Morgan 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 37 C.F.R. (Id., at ¶ 5.)
`
`Mr. Morgan understands that he will be subject to the USPTO Rules
`
`of Professional Responsibility Conduct, as set forth in 37 C.F.R. § 11.101 et
`
`seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a). (Id., at ¶ 6.)
`
`On May 6, 2014, the Board granted Patent Owner’s motion for pro
`
`hac vice admission of Mr. Morgan in another inter partes review on the
`
`
`
`Case IPR2014-00778
`Attorney Docket No. CA0006P2
`
`
`same challenged patent, U.S. RE43,707E (Case No. IPR2014-00358). Mr.
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`Patent No. RE43,707E
`Page 4 of 11
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`Morgan has not otherwise applied to appear pro hac vice before the Office in
`
`any other proceeding in the last three (3) years. (Id., at ¶ 7.)
`
`3.
`
`
`
`Good Cause Exists For The Pro Hac Vice Admission of Mr.
`Morgan In This Proceeding.
`
`The Board may admit counsel pro hac vice upon the 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. 37 C.F.R. § 42.10(c).
`
`Petitioner’s lead counsel, Kerry T. Hartman, is a registered practitioner. The
`
`Patent Owner respectfully submits that there is good cause for the Board to
`
`recognize Mr. Morgan as counsel pro hac vice during this proceeding.
`
`Mr. Morgan has reviewed in detail the pleadings submitted by
`
`Petitioner in this proceeding. (Affidavit at ¶ 9.) Mr. Morgan has reviewed in
`
`detail the challenged patent, U.S. RE43,707E (“the ‘707 Patent”). (Id.) He
`
`has also reviewed in detail the relevant references asserted by Petitioner.
`
`(Id.)
`
`Mr. Morgan has at all times been the Patent Owner’s lead trial counsel
`
`in its co-pending district court litigation against Petitioner, Barco, N.V., et al.
`
`v. Eizo Nanao Corporation, et al., Case No. 1:11-cv-02964-RLV (N.D.
`
`Georgia), which concerns the same patent—U.S. RE43,707E (“the ‘707
`
`
`
`Case IPR2014-00778
`Attorney Docket No. CA0006P2
`
`
`Patent”), its predecessor patent—U.S. Patent No. 7,639,849 (“the ‘849
`
`Patent No. RE43,707E
`Page 5 of 11
`
`Patent”), and the subject matter at issue in this proceeding. (Id., at ¶ 10.) As
`
`trial counsel, Mr. Morgan has been actively involved in all aspects of the
`
`district court litigation, including (1) Patent Owner’s factual investigation
`
`and development of its infringement positions; (2) Patent Owner’s factual
`
`investigation and development of its validity positions; (3) motion practice
`
`in the district court; and (4) overall strategy regarding litigation of the
`
`infringement and validity issues relating to the ‘707 Patent. (Id.) As trial
`
`counsel in this litigation, Mr. Morgan has reviewed numerous treatises,
`
`articles, documents, and other information regarding the subject matter of
`
`the ‘707 Patent. (Id.)
`
`Mr. Morgan has also been admitted pro hac vice and is designated as
`
`back-up counsel in another inter partes review on the ‘707 Patent (Case No.
`
`IPR2014-00358).
`
`Thus, Mr. Morgan has an established familiarity with the subject
`
`matter at issue in this proceeding. Mr. Morgan’s significant litigation
`
`experience and expertise will be of great value to the Patent Owner in this
`
`proceeding. (Id., at 11.)
`
`4.
`
`Affidavit or Declaration of Individual Seeking to Appear
`
`
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`Case IPR2014-00778
`Attorney Docket No. CA0006P2
`
`
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`Patent No. RE43,707E
`Page 6 of 11
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`In accordance with the above-referenced Order and Notice, this
`
`Motion for Pro Hac Vice Admission is accompanied by an Affidavit of Mr.
`
`Jeffrey C. Morgan.
`
`5. Conclusion
`
`For the foregoing reasons, Patent Owner respectfully requests that Mr.
`
`Morgan be admitted pro hac vice in this proceeding.
`
`The Patent Trial and Appeal Board is hereby authorized to charge any
`
`fees associated with this filing to Deposit Account No. 506021 (Customer
`
`ID No. CA0006P2).
`
`
`Date: June 24, 2014
`
`Reg. No. 41,818
`Tel. No. (703) 499-9594
`Fax No. (703) 499-9594
`Customer No. 49108
`
`
`_____/Kerry Hartman/__________
`Signature of Practitioner
`Kerry T. Hartman
`HARTMAN PATENTS PLLC
`3399 Flint Hill Pl.
`Woodbridge, VA 22192
`
`
`
`Case IPR2014-00778
`Attorney Docket No. CA0006P2
`
`
`
`
`Patent No. RE43,707E
`Page 7 of 11
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`AFFIDAVIT OF MR. JEFFREY C. MORGAN IN SUPPORT OF
`
`MOTION FOR PRO HAC VICE ADMISSION
`
`I, Jeffrey C. Morgan, being duly sworn and upon oath, hereby attest to
`
`the following:
`
`1.
`
`I am a member in good standing of the State Bar of Georgia and the
`
`Commonwealth of Massachusetts, as well as the following Federal Courts:
`
`(a)
`
`Supreme Court of the United States (2010);
`
`(b) U.S. Court of Appeals for the Federal Circuit (2004);
`
`(c) U.S. Court of Appeals for the First Circuit (2003);
`
`(d) U.S. Court of Appeals for the Ninth Circuit (2000);
`
`(e) U.S. Court of Appeals for the Eleventh Circuit (2004);
`
`(f) U.S. District Court for the District of Massachusetts (1997);
`
`(g) U.S. District Court for the Western District of Wisconsin (2006);
`
`(h) U.S. District Court for the Northern District of Georgia (2004);
`
`(i) U.S. District Court for the Middle District of Georgia (2004);
`
`(j) U.S. District Court for the Eastern District of Texas (2012).
`
`2.
`
`I have not been suspended or disbarred from practice before any court
`
`or administrative body;
`
`
`
`Case IPR2014-00778
`Attorney Docket No. CA0006P2
`
`
`3.
`
`I have never had an application for admission to practice before any
`
`Patent No. RE43,707E
`Page 8 of 11
`
`court or administrative body denied;
`
`4.
`
`No sanction or contempt citation has been imposed against me by any
`
`court or administrative body;
`
`5.
`
`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 of 37
`
`C.F.R.;
`
`6.
`
`I will be subject to the USPTO Rules of Professional Conduct, as set
`
`forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction under 37
`
`C.F.R. § 11.19(a);
`
`7.
`
`I have been admitted pro hac vice and am designated as back-up
`
`counsel in another inter partes review on the ‘707 Patent (Case No.
`
`IPR2014-00358). I have not otherwise applied to appear pro hac vice before
`
`the Office in any other proceeding in the last three (3) years; and
`
`8.
`
`I am a partner with the law firm of Barnes & Thornburg LLP. I am an
`
`experienced patent litigation attorney. I have litigated patent cases for my
`
`entire career—over seventeen (17) years.
`
`9.
`
`I have reviewed in detail the pleadings submitted by Petitioner in this
`
`proceeding. I have reviewed in detail the challenged patent, U.S. RE43,707E
`
`
`
`Case IPR2014-00778
`Attorney Docket No. CA0006P2
`
`
`(“the ‘707 Patent”). I have also reviewed in detail the relevant references
`
`Patent No. RE43,707E
`Page 9 of 11
`
`asserted by Petitioner.
`
`10.
`
`I have at all times been the Patent Owner’s lead trial counsel in its co-
`
`pending district court litigation against Petitioner, Barco, N.V., et al. v. Eizo
`
`Nanao Corporation, et al., Case No. 1:11-cv-02964-RLV (N.D. Georgia),
`
`which concerns the same patent—U.S. RE43,707E (“the ‘707 Patent”), its
`
`predecessor patent—U.S. Patent No. 7,639,849 (“the ‘849 Patent”), and the
`
`subject matter at issue in this proceeding. As trial counsel, I have been
`
`actively involved in all aspects of the district court litigation, including (1)
`
`Patent Owner’s factual investigation and development of its infringement
`
`positions; (2) Patent Owner’s factual investigation and development of its
`
`validity positions; (3) motion practice in the district court; and (4) overall
`
`strategy regarding litigation of the infringement and validity issues relating
`
`to the ‘707 Patent. As trial counsel in this litigation, I have reviewed
`
`numerous treatises, articles, documents, and other information regarding the
`
`subject matter of the ‘707 Patent.
`
`11. Thus, I have an established familiarity with the subject matter at issue
`
`in this proceeding. I believe my significant litigation experience and
`
`expertise will be of great value to the Patent Owner in this proceeding.
`
`
`
`Case IPR2014-00778
`Attorney Docket No. CA0006P2
`
`Patent No. RE43,707E
`Page 10 of 11
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`
`
`/ effrey C. Morgan
`Barnes & Thomburg LLP
`Prominence in Buckhead
`
`Suite 1700
`
`3475 Piedmont Road, NE.
`
`Atlanta, GA 30305-2954
`
`Telephone: (404) 264-4015
`Facsimile: (404) 264—4033
`
`Sworn and subscribed before me this
`131'“ day ofJune, 2014.
`
`Notary Public
`
`
`
`Case IPR2014-00778
`Attorney Docket No. CA0006P2
`
`
`
`CERTIFICATE OF SERVICE
`
`Patent No. RE43,707E
`Page 11 of 11
`
`
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`The undersigned hereby certifies that a copy of this motion and a copy
`
`of this affidavit have been served in their entireties (including a copy of this
`
`certificate) on the Petitioner via FedEx International Priority service directed
`
`to the following name and address, via electronic mail directed to
`
`marcweinstein@quinnemanuel.com, and via the Patent Review Processing
`
`System:
`
`
`
`Marc K. Weinstein
`
`Quinn Emanuel Urquhart & Sullivan LLP, NBF Hibiya Bldg., 25F,
`
`1-1-7 Uchisaiwai-cho, Chiyoda-ku, Tokyo 100-0011, Japan
`
`
`
`
`
`Date: June 24, 2014
`
`Reg. No. 41,818
`Tel. No. (703) 499-9594
`Fax No. (703) 499-9594
`Customer No. 49108
`
`
`
`____/Kerry Hartman/____________
`Signature of Practitioner
`Kerry T. Hartman
`HARTMAN PATENTS PLLC
`3399 Flint Hill Pl.
`Woodbridge, VA 22192
`
`
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