`
`Patent No. 7,604,716
`IPR2014-00808
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.,
`TSMC NORTH AMERICA CORPORATION,
`FUJITSU SEMICONDUCTOR LIMITED,
`FUJITSU SEMICONDUCTOR AMERICA, INC.,
`ADVANCED MICRO DEVICES, INC., RENESAS ELECTRONICS
`CORPORATION, RENESAS ELECTRONICS AMERICA, INC.,
`GLOBAL FOUNDRIES U.S., INC., GLOBALFOUNDRIES DRESDEN
`MODULE ONE LLC & CO. KG, GLOBALFOUNDRIES DRESDEN MODULE
`TWO LLC & CO. KG, TOSHIBA AMERICA ELECTRONIC COMPONENTS,
`INC., TOSHIBA AMERICA INC., TOSHIBA AMERICA INFORMATION
`SYSTEMS, INC., TOSHIBA CORPORATION, and
`THE GILLETTE COMPANY,
`Petitioners
`v.
`ZOND, LLC
`Patent Owner
`_____________________
`
`Case No. IPR2014-008081
`Patent 7,604,716 B2
`_____________________
`
`PATENT OWNER’S MOTION FOR PRO HAC VICE ADMISSION
`PURSUANT TO 37 C.F.R. § 42.10(c)
`
`
`
`1 Cases IPR 2014-00849, IPR 2014-00975, and IPR 2014-01067 have been joined
`
`with the instant proceeding.
`
`
`
`This unopposed Motion for Pro Hac Vice admission is filed on behalf of
`
`Patent No. 7,604,716
`IPR2014-00808
`
`
`Zond, LLC (“Zond” or “Patent Owner”). Zond respectfully moves that the Board
`
`recognize Mr. Etai Lahav as counsel pro hac vice during this proceeding.
`
`Petitioners do not oppose this motion.
`
`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. See Unified Patents, Inc. v.
`
`Parallel Iron, LLC, IPR2013-00639, Paper No. 7.
`
`2. Statement of Facts Showing Good Cause for Admission of Counsel
`
`Pro Hac Vice
`
`Patent Owner has been authorized to file motions seeking admission pro
`
`hac vice under 37 C.F.R. 42.10(c). (Paper No. 3). Patent Owner’s lead and back-
`
`up counsel are registered practitioners:
`
`Lead Counsel: Tarek N. Fahmi, USPTO Reg. No. 41,402; and
`
`Backup Counsel: Dr. Gregory J. Gonsalves, USPTO Reg. No. 43,639.
`
`Mr. Lahav is a skilled litigator, has extensively participated in the co-
`
`pending litigation in federal district court involving the patent at issue in this
`
`proceeding, and if admitted, will be involved with the depositions that occur in
`
`this proceeding. U.S. Patent No. 7,604,716 is currently asserted by the Patent
`
`Owner in co-pending litigation, in the District of Massachusetts, 1:13-cv-11634-
`
`2
`
`
`
`WGY (Zond v. Fujitsu, et al.) (“the co-pending litigation”). Mr. Lahav is a
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`Patent No. 7,604,716
`IPR2014-00808
`
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`member of the New York bar in good standing, and is representing the Patent
`
`Owner in the co-pending litigation.
`
`Mr. Lahav has analyzed prior art references and claim charts in connection
`
`with invalidity contentions and has been involved in forming claim construction
`
`positions related to the claimed inventions, all of which are relevant to the petition
`
`requesting inter partes review of U.S. Patent No. 7,604,716. Patent Owner wishes
`
`to apply Mr. Lahav’s knowledge of the patent by employing him as counsel in this
`
`proceeding. Admission of Mr. Lahav pro hac vice will enable Patent Owner to
`
`avoid unnecessary expense and duplication of work between this proceeding and
`
`the co-pending litigation.
`
`Patent Owner’s lead and backup counsel are registered practitioners and
`
`Mr. Lahav is an experienced litigation attorney having familiarity with the subject
`
`matter at issue in this proceeding. Therefore, Patent Owner respectfully submits
`
`that there is good cause for the Board to recognize Mr. Lahav as counsel pro hac
`
`vice during this proceeding.
`
`Patent Owner is filing (or has filed) motions to admit three additional
`
`attorneys (Tigran Vardanian, Etai Lahav, and Maria Granovsky) pro hac vice to
`
`all the petitions associated with U.S. Patents 6853142, 7147759, 7604716,
`
`7808184, 7811421, 6896775, 8125155, and 6896773. Given that there are 25
`
`3
`
`
`
`such petitions instituted over eight different patents, with numerous petitioners,
`
`Patent No. 7,604,716
`IPR2014-00808
`
`
`Patent Owner needs additional attorneys admitted to be able to address the several
`
`depositions and related preparation that are expected to take place in the coming
`
`weeks.
`
`3. Affidavit of Individual Seeking to Appear
`
`This Motion for Pro Hac Vice Admission is supported by an Affidavit of
`
`Mr. Lahav (Ex. 2001).
`
`Date: November 26, 2014
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`/Tarek N. Fahmi/
`Tarek N. Fahmi
`Reg. No. 41,402
`84 W. Santa Clara Street, Suite 550
`San Jose, CA 95113
`408-799-0612
`tarek.fahmi@ascendalaw.com
`
`Counsel for Patent Owner Zond, LLC
`
`
`
`4
`
`
`
`PATENT OWNER’S EXHIBIT LIST IPR2014-00808
`
`Patent No. 7,604,716
`IPR2014-00808
`
`
`
`
`Exhibit No.
`Ex. 2001
`
`Ex. 2002
`
`Ex. 2003
`
`Description
`Affidavit of Etai Lahav in Support of Patent Owner’s
`Motion for Pro Hac Vice Admission
`Affidavit of Maria Granovsky in Support of Patent
`Owner’s Motion for Pro Hac Vice Admission
`Affidavit of Tigran Vardanian in Support of Patent
`Owner’s Motion for Pro Hac Vice Admission
`
`
`
`
`
`
`
`
`
`
`5
`
`
`
`Patent No. 7,604,716
`IPR2014-00808
`
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`CERTIFICATE OF SERVICE
`
`
`
`The undersigned hereby certifies that a copy of the foregoing:
`
`PATENT OWNER’S MOTION FOR PRO HAC VICE ADMISSION
`PURSUANT TO 37 C.F.R. § 42.10(c)
`and its supporting exhibits was served on November 26, 2014, by filing this
`
`document though the Patent Review Processing System as well as delivering a copy via
`
`EMAIL directed to the attorneys of record for the Petitioner at the following address:
`
`
`
`For Petitioner:
`TAIWAN SEMICONDUCTOR
`MANUFACTURING COMPANY
`LTD, AND TSMC NORTH
`AMERICA CORP., FUJITSU
`SEMICONDUCTOR LIMITED
`AND FUJITSU SEMICONDUCTOR
`AMERICA, INC.
`David L. McCombs, Reg. No. 32,271
`David M. O’Dell, Reg. No. 42,044
`Haynes and Boone, LLP
`2323 Victory Avenue, Suite 700
`Dallas, TX 75219
`Tel: (214) 651-5533
`Email:
`David.McCombs@haynesboone.com;
`david.odell@haynesboone.com
`
`
`
`
`
` For Petitioner:
`THE GILETTE COMPANY
`Michael A. Diener, Reg. No. 37,122
`Larissa Park, Reg. No. 59,051
`Wilmer Cutler Pickering Hale and Dorr
`LLP
`60 State Street
`Boston, MA 02109
`Tel: (617) 526-5000
`Email:
`Michael.Diener@wilmerhale.com;
`Larissa.Park@wilmerhale.com
`
`
`6
`
`
`
`Patent No. 7,604,716
`IPR2014-00808
`
`
`
`
`John Feldhaus
`Pavan Agarwal
`Mike Houston
`FOLEY & LARDNER LLP
`3000 K STREET, N.W., SUITE 600
`WASHINGTON, DC 20007
`jfeldhaus@foley.com;
`pagarwal@foley.com;
`mhouston@foley.com
`
`David M. Tennant
`WHITE & CASE LLP
`701 THIRTEENTH STREET, NW
`WASHINGTON, DC 20005
`dtennant@whitecase.com
`
`For Petitioner:
`ADVANCED MICRO DEVICES, INC., RENESAS ELECTRONICS
`CORPORATION, RENESAS ELECTRONICS AMERICA, INC.,
`GLOBALFOUNDRIES U.S., INC., GLOBALFOUNDRIES DRESDEN
`MODULE ONE LLC & CO. KG, GLOBALFOUNDRIES DRESDEN MODULE
`TWO LLC & CO. KG, TOSHIBA AMERICA ELECTRONIC COMPONENTS,
`INC., TOSHIBA AMERICA INC., TOSHIBA AMERICA INFORMATION
`SYSTEMS, INC., AND TOSHIBA CORPORATION
`
`Robinson Vu
`BAKER BOTTS LLP
`ONE SHELL PLAZA
`910 LOUISIANA STREET
`HOUSTON, TX 77002
`Robinson.vu@bakerbotts.com
`
`Brian M. Berliner
`Ryan K. Yagura
`Xin-Yi Zhou
`
`O’MELVENY & MYERS LLP
`
`400 S. HOPE STREET
`LOS ANGELES, CA 90071
`bberliner@omm.com;
`ryagura@omm.com;
`vzhou@omm.com
`
`
`The parties have agreed to electronic service in this matter.
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`Date: November 26, 2014
`
`
`
`
`
`
` by:
`
`
`
`
`
` /Tarek N. Fahmi/
`Tarek N. Fahmi, Reg. No. 41,402
`
`
`
`Ascenda Law Group, PC
`84 W. Santa Clara St., Suite 550
`San Jose, CA 95113-1812
`1 866 877 4883
`
`
`7
`
`
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