UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`VMWARE, INC., INTERNATIONAL
`BUSINESS MACHINES CORPORATION
`AND
`ORACLE AMERICA, INC.
`Petitioners,
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`v.
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`ELECTRONICS AND TELECOMMUNICATIONS RESEARCH
`INSTITUTE
`Patent Owner
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`Case IPR2014-00949
`Case IPR2014-00901
`Patent No. 6,978,346 B2
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`UNOPPOSED PETITIONER VMWARE, INC.’S
`MOTION FOR PRO HAC VICE ADMISSION
`UNDER 37 C.F.R. § 42.10(c)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`VMWARE, INC., INTERNATIONAL
`BUSINESS MACHINES CORPORATION
`AND
`ORACLE AMERICA, INC.
`Petitioners,
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`v.
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`ELECTRONICS AND TELECOMMUNICATIONS RESEARCH
`INSTITUTE
`Patent Owner
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`Case IPR2014-00949
`Case IPR2014-00901
`Patent No. 6,978,346 B2
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`UNOPPOSED PETITIONER VMWARE, INC.’S
`MOTION FOR PRO HAC VICE ADMISSION
`UNDER 37 C.F.R. § 42.10(c)
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`Proceeding No.: IPR2014-00901
`Attorney Docket: 27450-0011IP1
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`Pursuant to 37 C.F.R. § 42.10(c), the Petitioner (“VMware”) respectfully
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`requests that the Board recognize Leeron Kalay as counsel pro hac vice in this
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`proceeding. VMware seeks the counsel of Mr. Kalay due to his experience in
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`representing VMware in patent-related matters and particularly due to his
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`familiarity with the substantive and technical issues involved in this proceeding.
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`This motion is authorized by the Notice of Filing Date Accorded to Petition and
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`Time for Filing Patent Owner Preliminary Response that was mailed on June 25,
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`2014.
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`On February 4, 2015, Petitioner contacted counsel for the Patent Owner,
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`Matt Phillips at Renaissance IP Law Group, to discuss the Patent Owner’s position
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`on this motion. Patent Owner’s counsel stated that the Patent Owner does not
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`oppose this motion.
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`Statement of Facts
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`Mr. Kalay is a patent litigation attorney with 10 years of experience
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`representing clients in patent cases involving technologies such as RAID systems,
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`software, wireless, semiconductor, medical device, and turbocharger industries.
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`VMware provides Exhibit A, as evidence, Mr. Kalay’s biography.
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`Mr. Kalay also has particular experience and familiarity with the substantive
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`and technical issues involved in this inter partes review proceeding. Mr. Kalay is
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`2
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`Proceeding No.: IPR2014-00901
`Attorney Docket: 27450-0011IP1
`counsel for VMware in the co-pending litigation involving the patent at issue in
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`this proceeding, U.S. Patent. No. 6,978,346 (“the ’346 patent”): Safe Storage LLC
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`v. VMware, Inc., Case No. 1-13-cv-00928-GMS in the United States District Court
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`for the District of Delaware, filed on May 23, 2013. As counsel for VMware, Mr.
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`Kalay is deeply involved in all aspects of the litigation, including claim
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`construction and validity analysis, and therefore has established familiarity with
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`the ’346 patent. Given Mr. Kalay’s experience with the ’346 patent, admission of
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`Mr. Kalay pro hac vice will enable Petitioner to avoid unnecessary expense and
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`duplication of work between this proceeding and the co-pending litigation.
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`Petitioner will also maintain registered practitioners as lead and back-up
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`counsel as indicated in Paper No. 8 at 2:
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`3
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`Proceeding No.: IPR2014-00901
`Attorney Docket: 27450-0011IP1
`1. Affidavit of Individual Seeking to Appear
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`This Motion for Pro Hac Vice Admission is accompanied by an Affidavit of
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`Mr. Kalay as required by the Order Authorizing Motion for Pro Hac Vice
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`Admission in Case IPR2013-00639 at Paper 7.
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`Accordingly, VMware submits that there is good cause under 37 C.F.R. §
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`42.10(c) for the Board to recognize Mr. Kalay as counsel pro hac vice during this
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`proceeding.
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`Date: April 22, 2015
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`Fish & Richardson P.C.
`Telephone: (202) 783-5070
`Facsimile: (202) 783-2331
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`Respectfully submitted,
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`Katherine Kelly Lutton
`Reg. No. 46,333
`Counsel for Petitioner
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`4
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`Proceeding No.: IPR2014-00901
`Attorney Docket: 27450-0011IP1
`CERTIFICATE OF SERVICE
`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq. and 42.105(b), the undersigned
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`certifies that on April 22, 2015, a complete and entire copy of this Motion for Pro
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`Hac Vice Admission and all supporting exhibits were provided via email to the
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`Patent Owner by serving the correspondence address of record as follows:
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`Matthew C. Phillips
`Derek Meeker
`Renaissance IP Law Group LLP
`9600 SW Oak Street, Suite 560
`Portland OR 97223
`matthew.phillips@renaissanceiplaw.com
`derek.meeker@renaissanceiplaw.com
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`Alexander C.D. Giza
`Russ August & Kabat
`12424 Wilshire Boulevard, 12th Floor
`Los Angeles, California 90025
`agiza@raklaw.com
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`/Christine L. Rogers/
`Christine L. Rogers
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(650) 839-5092
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`5
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`Exhibit A
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`Leeron G. Kalay
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`Silicon Valley
`650-839-5196
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`Email kalay@fr.com
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`Services
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`Litigation
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`Patent Litigation
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`Sectors
`Softwa re
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`Semiconductors
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`Leeron Kalay is a Principal in the Silicon Valley office of Fish & Richardson. His practice emphasizes
`patent litigation in a number of technology fields.
`In additional to handling litigation matters, Mr. Kalay
`counsels clients patent-related matters including portfolio analyses for acquisition or assertion, IP—
`related due—diligence, and other pre-litigation activities. Mr. Kalay has successfully represented a
`variety of clients in the software, wireless, semiconductor, medical device, and turbocharger industries.
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`Mr. Kalay previously served as a Legal Clerk at the United States Attorney‘s Office for the Northern
`District of California (2002). He has been named a Northern California Rising Star in Intellectual
`Property Litigation by Super Lawyers since 2010.
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`Experience
`Representative Cases
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`SanDisk v. Kingston et al. (W.D Wis.) - Representing Kingston in patent and antitrust litigation involving
`flash memory products. Court granted summary judgment of non-infringement in favor of Kingston.
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`MasterObjects, Inc. v. Microsoft Corp. (N.D. Cal.) — Represented Microsoft in a patent infringement case
`concerning search engine technology.
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`SanDisk v. Phison et al. (W.D. Wis.) — Representing Kingston in patent infringement case involving flash
`memory products. District judge found summary judgment of non-infringement in favor of Kingston.
`(case currently pending appeal before the Federal Circuit)
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`BorgWarner, Inc. v. Honeywell Int’l, Inc. (W.D.N.C.) — Represented BorgWarner in assertion of patents in
`case relating to the design and manufacture of turbocharger components. Case resulted in settlement
`for $32.5 million to client.
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`PageMe/ding, Inc. v. Feeva Tech. et al. (N.D. Cal.) — Represented Microsoft in a patent infringement case
`concerning customized content on web properties. Obtained favorable claim construction for client,
`resulting in settlement of case shortly thereafter.
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`
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`Certain Semiconductor Chips Having Synchronous Dynamic Random Access Memory Controllers 337—TA-661
`(ITC) — Represented NVIDIA and customer respondents against allegations of infringement of SDRAM
`controller patents.
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`Thaicom Public Company Limited v. Qua/core Logic (Analog), Inc. (N.D. Cal.) — Obtained judgment for breach
`of contract, and pursued seizure of assets in support ofjudgment on behalf of client Thaicom.
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`Certain Flash Memory Controller, Drives, Memory Cards, And Media, Players, And Products Containing Same
`337-TA—619 (ITC) — Represented Respondents accused of infringement in investigation concerning
`flash memory products. Commission found no—infringement of asserted patent claims by clients.
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`Rambus, Inc. v. Micron Technology, Inc. (D. Del. & N.D. Cal.) — Represented Micron in a series of patent
`infringement, equitable estoppel, and antitrust matters involving SDRAM controller patents. Dist. of
`Delaware held 12 Rambus patents to be unenforceable due to spoliation and unclean hands. Spoliation
`finding was affirmed by Federal Circuit. (Cases handled prior to joining Fish & Richardson)
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`Mangosoft, Inc. v. Oracle Corp. (D.N.H; Fed. Cir.) — Represented Oracle in patent infringement case
`concerning internet and database technology. Court granted summary judgment of noninfringement by
`Oracle; ruling upheld by Federal Circuit.
`(Case handled prior to joining Fish & Richardson)
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`Education
`BA, University of California, Berkeley 2001
`Political Science & Rhetoric
`cum laude
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`JD, New York University School of Law 2004
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`Admissions
`California 2004
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`United States District Court for the Northern District of California
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`United States Court of Appeals for the Federal Circuit
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`Memberships and Affiliations
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`American Bar Association, Member
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`Languages
`Hebrew
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`News
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`fish & Richardson Elevates 20 Attorne s to Principal.
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`Speaking Engagements
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`Israeli Life Sciences and Biomed IndustryUConference
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