`________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
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`EASTMAN KODAK COMPANY, AGFA CORPORATION, ESKO SOFTWARE
`BVBA, and HEIDELBERG, USA
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`Petitioners,
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`v.
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`CTP INNOVATIONS, LLC
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`Patent Owner.
`______________
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`Case IPR2014-00791
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`U.S. Patent No. 6,611,349
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`____________
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`PETITIONERS’ OPPOSITION TO MOTION FOR ADMISSION OF
`SAMUEL F. MILLER TO APPEAR PRO HAC VICE
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`Case IPR2014-00791
`Petitioners’ Opposition to Motion for Admission Pro Hac Vice
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`On May 20, 2015, Patent Owner CTP Innovations, LLC (“Patent Owner”)
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`filed a Motion for Pro Hac Vice Admission of Mr. Samuel F. Miller in the above-
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`identified proceeding (Paper 32). Despite well-established practice to the contrary,
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`Patent Owner did not confer with Counsel for Petitioners before filing the present
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`Motion. Because Patent Owner has failed to provide any evidence that Mr. Miller
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`“is an experienced litigating attorney and has an established familiarity with the
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`subject matter at issue in the proceeding,” Petitioners’ must oppose Patent Owner’s
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`belated Motion.1
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`37 C.F.R. § 42.10(c) provides that:
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`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.
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`1 Patent Owner filed its mandatory notice in this case on June 11, 2014, listing Mr.
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`Miller as “pending pro hac vice admission,” yet Patent Owner waited nearly a year
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`to file the instant Motion.
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`1
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`Case IPR2014-00791
`Petitioners’ Opposition to Motion for Admission Pro Hac Vice
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`The Board has consistently held that conclusory statements attesting to
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`counsel as an experienced patent litigation attorney, or to counsel’s involvement in
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`related district court proceedings, deficient under its rules. See, e.g., Hyundai
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`Mobis Co., Ltd. v. Autoliv ASP, Inc., IPR2014-01006, Paper 21 at 2-3 (PTAB
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`March 10, 2015) (“The Second Motion merely contains a general statement from
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`Mr. Roger W. Parkhurst, counsel of the Petitioner, that Mr. Lall is an experienced
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`patent litigation attorney and is co-counsel in the related district court proceeding.
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`Such a statement does not satisfy the aforementioned requirement for an affidavit
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`or declaration.”); Kaiser Aluminum v. Constellium Rolled Prods. Ravenswood,
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`LLC, IPR2014-01002, Paper 28 at 2 (PTAB Feb. 26, 2015) (“Patent Owner is
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`vague about the extent of Mr. Lynch’s experience litigating patent cases, and
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`includes no information from which we reasonably can conclude that he has
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`personally reviewed the patent-at-issue, the Petition, or its accompanying
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`exhibits…. Mr. Lynch’s statement that he has ‘an established familiarity with the
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`subject matter at issue in these proceedings’ and has ‘acquired substantial
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`understanding of the underlying legal and technological issues at stake in these
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`proceedings’ is inadequate….”); QSC Audio Prods., Inc. v. Crest Audio, Inc.,
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`IPR2014-00127, Paper 32 at 2 (PTAB Dec. 23, 2014) (same).
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`Here, Patent Owner’s Motion and the accompanying Affidavit of Mr. Miller
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`simply conclude that Mr. Miller is “familiar with the subject matter at issue in this
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`2
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`Case IPR2014-00791
`Petitioners’ Opposition to Motion for Admission Pro Hac Vice
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`proceeding.” (Ex. 2018 at ¶ 10.) There is no information or evidence regarding
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`the extent of Mr. Miller’s experience litigating patent cases nor, more importantly,
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`any information or evidence regarding Mr. Miller’s familiarity with the subject
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`matter at issue in the proceeding. Similarly, Counsel for Petitioners has had
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`limited exposure to Mr. Miller in this proceeding and, therefore, is unable to gauge
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`Mr. Miller’s understanding of the technology at issue. Because Mr. Miller has not
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`established sufficient legal and technical qualifications to represent Patent Owner
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`in this proceeding, the criteria for pro hac vice admission have not been satisfied.
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`Kaiser Aluminum, IPR2014-01002, Paper 28 at 2. Petitioners are compelled to
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`oppose this late stage motion.
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`Accordingly, due to the late stage of Patent Owner’s Motion2 and that
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`further briefing will only serve to distract from the upcoming oral argument, Patent
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`Owner’s motion for Pro Hac Vice Admission of Mr. Samuel F. Miller should be
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`denied with prejudice.
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`2 See footnote 1, supra.
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`3
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`Respectfully submitted,
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`Oblon, McClelland, Maier &
`Neustadt, LLP
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`/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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`Case IPR2014-00791
`Petitioners’ Opposition to Motion for Admission Pro Hac Vice
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`Dated: May 27, 2015
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`4
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies service of
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`PETITIONERS’ OPPOSITION TO MOTION FOR ADMISSION OF
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`SAMUEL F. MILLER TO APPEAR PRO HAC VICE on the counsel of record
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`for the Patent Owner by delivering a copy via electronic means to the following
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`address:
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`W. Edward Ramage
`Samuel F. Miller
`BAKER, DONELSON, BEARMAN, CALDWELL
`& BERKOWITZ, P.C.
`eramage@bakerdonelson.com
`smiller@bakerdonelson.com
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`Dated: May 27, 2015
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`/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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