UNITED STATES PATENT AND TRADEMARK OFFICE
`________________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`
`
`EASTMAN KODAK COMPANY, AGFA CORPORATION, ESKO SOFTWARE
`BVBA, and HEIDELBERG, USA
`
`Petitioners,
`
`v.
`
`CTP INNOVATIONS, LLC
`
`Patent Owner.
`______________
`
`Case IPR2014-00790
`
`U.S. Patent No. 6,611,349
`
`____________
`
`
`PETITIONERS’ OPPOSITION TO MOTION FOR ADMISSION OF
`SAMUEL F. MILLER TO APPEAR PRO HAC VICE
`
`
`
`
`________________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`
`
`EASTMAN KODAK COMPANY, AGFA CORPORATION, ESKO SOFTWARE
`BVBA, and HEIDELBERG, USA
`
`Petitioners,
`
`v.
`
`CTP INNOVATIONS, LLC
`
`Patent Owner.
`______________
`
`Case IPR2014-00790
`
`U.S. Patent No. 6,611,349
`
`____________
`
`
`PETITIONERS’ OPPOSITION TO MOTION FOR ADMISSION OF
`SAMUEL F. MILLER TO APPEAR PRO HAC VICE
`
`
`
`
`
`Case IPR2014-00790
`Petitioners’ Opposition to Motion for Admission Pro Hac Vice
`
`
`On May 20, 2015, Patent Owner CTP Innovations, LLC (“Patent Owner”)
`
`
`
`filed a Motion for Pro Hac Vice Admission of Mr. Samuel F. Miller in the above-
`
`identified proceeding (Paper 24). Despite well-established practice to the contrary,
`
`Patent Owner did not confer with Counsel for Petitioners before filing the present
`
`Motion. Because Patent Owner has failed to provide any evidence that Mr. Miller
`
`“is an experienced litigating attorney and has an established familiarity with the
`
`subject matter at issue in the proceeding,” Petitioners’ must oppose Patent Owner’s
`
`belated Motion.1
`
`
`
`37 C.F.R. § 42.10(c) provides that:
`
`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 lead counsel is a registered practitioner, a motion to
`appear pro hac vice by counsel who is not a registered
`practitioner may be granted upon showing that counsel is an
`experienced
`litigating attorney and has an established
`familiarity with the subject matter at issue in the proceeding.
`
`
`1 Patent Owner filed its mandatory notice in this case on June 11, 2014, listing Mr.
`
`Miller as “pending pro hac vice admission,” yet Patent Owner waited nearly a year
`
`to file the instant Motion.
`
`1
`
`
`
`Case IPR2014-00790
`Petitioners’ Opposition to Motion for Admission Pro Hac Vice
`
`
`The Board has consistently held that conclusory statements attesting to
`
`counsel as an experienced patent litigation attorney, or to counsel’s involvement in
`
`related district court proceedings, deficient under its rules. See, e.g., Hyundai
`
`Mobis Co., Ltd. v. Autoliv ASP, Inc., IPR2014-01006, Paper 21 at 2-3 (PTAB
`
`March 10, 2015) (“The Second Motion merely contains a general statement from
`
`Mr. Roger W. Parkhurst, counsel of the Petitioner, that Mr. Lall is an experienced
`
`patent litigation attorney and is co-counsel in the related district court proceeding.
`
`Such a statement does not satisfy the aforementioned requirement for an affidavit
`
`or declaration.”); Kaiser Aluminum v. Constellium Rolled Prods. Ravenswood,
`
`LLC, IPR2014-01002, Paper 28 at 2 (PTAB Feb. 26, 2015) (“Patent Owner is
`
`vague about the extent of Mr. Lynch’s experience litigating patent cases, and
`
`includes no information from which we reasonably can conclude that he has
`
`personally reviewed the patent-at-issue, the Petition, or its accompanying
`
`exhibits…. Mr. Lynch’s statement that he has ‘an established familiarity with the
`
`subject matter at issue in these proceedings’ and has ‘acquired substantial
`
`understanding of the underlying legal and technological issues at stake in these
`
`proceedings’ is inadequate….”); QSC Audio Prods., Inc. v. Crest Audio, Inc.,
`
`IPR2014-00127, Paper 32 at 2 (PTAB Dec. 23, 2014) (same).
`
`Here, Patent Owner’s Motion and the accompanying Affidavit of Mr. Miller
`
`simply conclude that Mr. Miller is “familiar with the subject matter at issue in this
`
`
`
`2
`
`
`
`Case IPR2014-00790
`Petitioners’ Opposition to Motion for Admission Pro Hac Vice
`
`
`proceeding.” (Ex. 2018 at ¶ 10.) There is no information or evidence regarding
`
`the extent of Mr. Miller’s experience litigating patent cases nor, more importantly,
`
`any information or evidence regarding Mr. Miller’s familiarity with the subject
`
`matter at issue in the proceeding. Similarly, Counsel for Petitioners has had
`
`limited exposure to Mr. Miller in this proceeding and, therefore, is unable to gauge
`
`Mr. Miller’s understanding of the technology at issue. Because Mr. Miller has not
`
`established sufficient legal and technical qualifications to represent Patent Owner
`
`in this proceeding, the criteria for pro hac vice admission have not been satisfied.
`
`Kaiser Aluminum, IPR2014-01002, Paper 28 at 2. Petitioners are compelled to
`
`oppose this late stage motion.
`
`Accordingly, due to the late stage of Patent Owner’s Motion2 and that
`
`further briefing will only serve to distract from the upcoming oral argument, Patent
`
`Owner’s motion for Pro Hac Vice Admission of Mr. Samuel F. Miller should be
`
`denied with prejudice.
`
`
`
`
`
`
`2 See footnote 1, supra.
`
`
`
`3
`
`
`
`Respectfully submitted,
`
`Oblon, McClelland, Maier &
`Neustadt, LLP
`
`
`
`
`/Scott A. McKeown/
`Scott A. McKeown (Reg. No. 42,866)
`Attorney for Petitioners
`EASTMAN KODAK COMPANY,
`AGFA CORPORATION, ESKO
`SOFTWARE BVBA, and
`HEIDELBERG, USA
`
`Case IPR2014-00790
`Petitioners’ Opposition to Motion for Admission Pro Hac Vice
`
`
`
`Dated: May 27, 2015
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies service of
`
`PETITIONERS’ OPPOSITION TO MOTION FOR ADMISSION OF
`
`SAMUEL F. MILLER TO APPEAR PRO HAC VICE on the counsel of record
`
`for the Patent Owner by delivering a copy via electronic means to the following
`
`address:
`
`W. Edward Ramage
`Samuel F. Miller
`BAKER, DONELSON, BEARMAN, CALDWELL
`& BERKOWITZ, P.C.
`eramage@bakerdonelson.com
`smiller@bakerdonelson.com
`
`
`
`Dated: May 27, 2015
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Scott A. McKeown/
`Scott A. McKeown (Reg. No. 42,866)
`Attorney for Petitioners
`EASTMAN KODAK COMPANY,
`AGFA CORPORATION, ESKO
`SOFTWARE BVBA, and
`HEIDELBERG, USA
`
`
`
`
`
`
`
`
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