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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`CISCO SYSTEMS, INC.
`Petitioner
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`v.
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`CAPELLA PHOTONICS, INC.
`Patent Owner
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`____________________
`
`Case IPR2014-01166
`Patent RE42,368
`____________________
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`
`PATENT OWNER’S MOTION FOR PRO HAC VICE ADMISSION
`OF NICHOLAS J. NOWAK UNDER 37 C.F.R. § 42.10(c)
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
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`Case IPR2014-01166
`Patent RE42,368
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`Exhibit List
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`
`Exhibit #
`2001
`2002
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`2003
`
`Description
`Provisional Patent Application No. 60/267,285
`Transcript of Patent Trial and Appeal Board Teleconference in Case
`IPR2014-01166, Thursday, March 5, 2015
`Affidavit of Nicholas J. Nowak in Support of Pro Hac Vice
`Admission
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`- i -
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`Case IPR2014-01166
`Patent RE42,368
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`I. RELIEF REQUESTED
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`Pursuant to 37 C.F.R. § 42.10(c) and the Notice of Filing Date Accorded to
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`Petition (Paper 3), Patent Owner Capella Photonics, Inc. (“Patent Owner”)
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`respectfully requests the pro hac vice admission of Nicholas J. Nowak in this
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`proceeding.
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`II. GOVERNING LAW, RULES, AND PRECEDENT
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`Section 42.10(c) states as follows:
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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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`The Board has stated that any motion for pro hac vice admission under 37
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`C.F.R. § 42.10(c) must be filed in accordance with the “Order – Authorizing Motion
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`for Pro Hac Vice Admission” entered in Case IPR2013-00010 (MPT) (“Motorola
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`Order”). (See Motorola Order, p. 2.)
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`The Motorola Order requires that such motions (1) “[c]ontain a statement of
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`facts showing there is good cause for the Board to recognize counsel pro hac vice
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`- 1 -
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`Case IPR2014-01166
`Patent RE42,368
`during the proceeding;” and (2) “[b]e accompanied by an affidavit or declaration of
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`the individual seeking to appear attesting to the following”:
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`ii.
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`v.
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`vi.
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`i. Membership in good standing of the Bar of at least
`one State or the District of Columbia;
`No suspensions or disbarments from practice
`before any court or administrative body;
`iii. No application for admission to practice before any
`court or administrative body ever denied;
`iv. No sanctions or contempt citations imposed by any
`court or administrative body;
`The individual seeking to appear 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 the C.F.R.;
`The individual will be subject to the USPTO Code
`of Professional Responsibility set forth in 37
`C.F.R. §§ 10.20 et seq. and disciplinary
`jurisdiction under 37 C.F.R. § 11.19(a);
`vii. All other proceedings before the Office for which
`the individual has applied to appear pro hac vice in
`the last three (3) years; and
`viii. Familiarity with the subject matter at issue in the
`proceeding.
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`
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`- 2 -
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`Case IPR2014-01166
`Patent RE42,368
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`III. STATEMENT OF FACTS
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`Based on the following facts, and supported by the Affidavit of Mr. Nowak,
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`submitted herewith as Ex. 2003, Patent Owner requests the pro hac vice admission
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`of Nicholas J. Nowak in this proceeding:
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`1.
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`Patent Owner’s lead counsel, Robert Greene Sterne, is a registered
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`practitioner (Reg. No. 28,912). Patent Owner’s back-up counsel, Jason
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`D. Eisenberg, is a registered practitioner (Reg. No. 43,447).
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`2. Mr. Nowak is Of Counsel at the law firm of Sterne, Kessler, Goldstein
`
`and Fox P.L.L.C. (Ex. 2003 at ¶ 3.)
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`3. Mr. Nowak is an experienced patent litigation attorney. Mr. Nowak has
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`been a patent litigation attorney for 13 years. (Id. at 4.) Mr. Nowak has
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`been litigating patent cases during the entire time period, and has
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`litigated numerous patent infringement actions involving a variety of
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`technologies. He has significant experience in all aspects of patent
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`litigation, including depositions, claim construction proceedings, and
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`various stages of trial. (Id.)
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`4. Mr. Nowak is a member of good standing of the Bars of:
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`Massachusetts, New York, the District of Columbia, the United States
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`Court of Appeals for the Federal Circuit, and the United States District
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`Court for the Southern District of New York. (Id. at 5.)
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`
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`- 3 -
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`Case IPR2014-01166
`Patent RE42,368
`5. Mr. Nowak has never been suspended or disbarred from practice before
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`any court or administrative body. (Id.)
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`6.
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`No application of Mr. Nowak for admission to practice before any court
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`or administrative body has ever been ultimately denied. (Id. at 6.)
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`7.
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`No sanctions or contempt citations have ever been imposed against Mr.
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`Nowak by any court or administrative body. (Id. at 7.)
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`8. Mr. Nowak has read and will comply with the Office Patent Trial
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`Practice Guide and the Board’s Rules of Practice for Trials set forth in
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`part 42 of the C.F.R. (Id. at 8.)
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`9. Mr. Nowak understands that he will be subject to the USPTO Code of
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`Professional Responsibility set forth in 37 C.F.R. §§ 10.20 et seq. and
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`disciplinary jurisdiction under 37 C.F.R. § 11.19(a). (Id. at 9.)
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`10. Mr. Nowak is concurrently seeking pro hac vice admission to appear in
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`a co-pending, related matter against the Patent Owner, Case
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`IPR2014-012761. Mr. Nowak has not applied to appear pro hac vice in
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`any other proceedings before the Office in the last three (3) years.
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`1 Case IPR2014-01276, also filed by the Cisco Systems, Inc. (“Petitioner”),
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`challenges claims of related U.S. Patent No. RE42,678 (“the ’678 patent”).
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`- 4 -
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`Case IPR2014-01166
`Patent RE42,368
`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION OF
`MR. NOWAK IN THIS PROCEEDING
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`The Board may recognize counsel pro hac vice during a proceeding upon a
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`showing of good cause, subject to the condition that lead counsel be a registered
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`practitioner and to any other conditions as the Board may impose. 37 C.F.R. §
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`42.10(c). Patent Owner’s lead counsel, Robert Greene Sterne, is a registered
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`practitioner. Based on the facts contained herein, as supported by Mr. Nowak’s
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`Affidavit, good cause exists to admit Mr. Nowak pro hac vice in this proceeding.
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`As supported by his affidavit, Mr. Nowak is an experienced litigating attorney
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`with over 13 years of patent litigation experience. Mr. Nowak also has an
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`established familiarity with the subject matter at issue in this proceeding. (Ex. 2003
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`at ¶¶ 10-12.)
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`Mr. Nowak has reviewed in detail the pleadings submitted by Petitioner and
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`Patent Owner in this proceeding. (Id. at 11.) Mr. Nowak has reviewed in detail the
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`patent-in-suit, U.S. Patent No. RE42,368 (“the ’368 patent”). (Id. at 10.) He has
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`also reviewed in detail the relevant references asserted by Petitioner. (Id.) Mr.
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`Nowak has engaged in many hours of strategic and substantive discussions
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`regarding this proceeding with counsel for Patent Owner in this proceeding. (Id. at
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`11.)
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`Based on the facts contained herein, as supported by Mr. Nowak’s Affidavit,
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`good cause exists to admit Mr. Nowak pro hac vice in this proceeding.
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`- 5 -
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`Case IPR2014-01166
`Patent RE42,368
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`V. CONCLUSION
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`For the foregoing reasons, Patent Owner respectfully requests that Mr. Nowak
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`be admitted pro hac vice in this proceeding.
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`The Patent Trial and Appeal Board is hereby authorized to charge any fees
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`associated with this filing to Deposit Account 19-0036 (Customer ID No. 45324).
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`
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`Respectfully submitted,
` STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Jason D. Eisenberg/
`
`Jason D. Eisenberg
`Registration No. 43,447
`Attorney for Patent Owner
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`Date: April 20, 2015
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`(202) 371-2600
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`- 6 -
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`Case IPR2014-01166
`Patent RE42,368
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
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`
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`The undersigned hereby certifies that the foregoing PATENT OWNER’S
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`MOTION FOR PRO HAC VICE ADMISSION OF NICHOLAS J. NOWAK
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`UNDER 37 C.F.R. § 42.10(c) and associated Exhibit 2003 were electronically
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`served via e-mail on April 20, 2015, in their entireties on the following:
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`Lead Counsel
`Wayne O. Stacy
`COOLEY LLP
`380 Interlocken Crescent, Suite 900
`Broomfield, CO 80021
`wstacy@cooley.com
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`Back-up Counsel
`Matthew J. Leary
`COOLEY LLP
`380 Interlocken Crescent, Suite 900
`Broomfield, CO 80021
`CapellaCisco@cooley.com
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`
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`Respectfully submitted,
` STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Jason D. Eisenberg/
`
`Jason D. Eisenberg
`Registration No. 43,447
`Attorney for Patent Owner
`
`Date: April 20, 2015
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`(202) 371-2600
`
`
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`
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