UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`NORMAN INTERNATIONAL, INC.
`Petitioner
`
`v.
`
`HUNTER DOUGLAS INC.
`Patent Owner
`
`
`
`
`
`CASE IPR2014-01175
`Patent No. 6,968,884
`
`
`
`
`
`
`
`PETITIONER’S
`UNOPPOSED MOTION FOR PRO HAC VICE ADMISSION
`UNDER 37 C.F.R. § 42.10(c)
`
`
`
`September 28, 2015
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`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`NORMAN INTERNATIONAL, INC.
`Petitioner
`
`v.
`
`HUNTER DOUGLAS INC.
`Patent Owner
`
`
`
`
`
`CASE IPR2014-01175
`Patent No. 6,968,884
`
`
`
`
`
`
`
`PETITIONER’S
`UNOPPOSED MOTION FOR PRO HAC VICE ADMISSION
`UNDER 37 C.F.R. § 42.10(c)
`
`
`
`September 28, 2015
`
`
`
`
`
`CASE IPR2014-01175 (Patent 6,968,884)
`Petitioner’s Unopposed Motion for Pro Hac Vice Admission
`UPDATED EXHIBIT LIST
`
`Norman
`Exhibit #
`1001
`
`Brief Description
`U.S. Patent No. 6,968,884 B2 (“the 884 Patent”)
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`1002
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`Japanese Patent Application Publication S54-38648 (“Tachikawa”)
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`Pages 1-4: English Translation
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`Pages 5-8: Original Japanese Publication
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`Page 9: Translator Certification
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`1003
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`U.S. Patent No. 3,327,765 (“Strahm”)
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`1004
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`Great Britain Patent No. 1,174,127 (“Skidmore”)
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`1005
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`U.S. Patent No. 1,870,532 (“Schuetz”)
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`1006
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`U.S. Patent No. 2,390,826 (“Cohn”)
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`1007
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`U.S. Patent No. 6,056,036 (“Todd”)
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`1008
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`U.S. Patent No. 6,293,329 (“Toti”)
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`
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`1009
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`Declaration of Lawrence E. Carlson in Support of Petition for Inter
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`Partes Review of U.S. Patent No. 6,968,884B2 (“Carlson Declaration
`
`on 884 Patent”)
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`1010
`
`Declaration of Patrick E. Foley in Support of Petition for Inter Partes
`
`Review of U.S. Patent No. 6,968,884B2 (“Foley Declaration on 884
`
`Patent”)
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`-1-
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`
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`Norman
`Exhibit #
`1011
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`CASE IPR2014-01175 (Patent 6,968,884)
`Petitioner’s Unopposed Motion for Pro Hac Vice Admission
`
`
`Brief Description
`Proof Of Service on July 16, 2013 of Summons in Civil Action No.
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`1:13-cv-01412-MSK-MJW (D. COLO.) (“Proof of Service”)
`
`1012
`
`Declaration Of Sara Hare (“Hare Declaration”)
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`1013
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`Declaration of Lawrence E. Carlson in Support of Petitioner’s Reply to
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`Patent Owner’s Response of May 4, 2015
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`1014
`
`Petitioner’s Objections to Patent Owner’s Evidence Submitted After
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`Institution of a Trial under 37 C.F.R. § 42.64(b)(1) as served on Patent
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`Owner on May 11, 2015
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`1015
`
`Affidavit of Douglas L. Sawyer in support of Petitioner Norman
`
`International, Inc.'s Unopposed Motion for Pro Hac Vice Admission
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`under 37 C.F.R. §42.10(c)
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`- 2 -
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`CASE IPR2014-01175 (Patent 6,968,884)
`Petitioner’s Unopposed Motion for Pro Hac Vice Admission
`
`
`Norman International, Inc. (“Petitioner”) respectfully requests that the Board
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`
`
`recognize Douglas L. Sawyer as counsel pro hac vice in this proceeding.
`
`Petitioner seeks the counsel of Mr. Sawyer due to his familiarity with the
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`substantive and technical issues involved in this proceeding.
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`1. Time For Filing
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`
`
`This Unopposed Motion for Pro Hac Vice Admission is authorized by the
`
`Notice of Filing Date Accorded to Petition and Time for Filing Patent Owner
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`Preliminary Response that was mailed on August 12, 2014 (Paper 5), and is being
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`filed no sooner than twenty one (21) days after service of the petition.
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`2.
`
`Statement of Facts
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`
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`The following statement of facts shows that there is good cause for the
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`Board to recognize Mr. Sawyer pro hac vice.
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`
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`Mr. Sawyer is a patent litigation attorney with more than thirteen years of
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`experience representing clients in cases involving computer hardware and
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`software, sporting equipment, semiconductors, RFID, printers, hand held
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`computers and other mobile devices. (Affidavit of Douglas L. Sawyer (“Sawyer
`
`Affidavit”), ¶ 8 in Exhibit 1015.)
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`
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`Mr. Sawyer regularly litigates patent cases before the United States Court of
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`Appeals for the Federal Circuit and various federal district courts. (Id.) He has
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`- 3 -
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`
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`CASE IPR2014-01175 (Patent 6,968,884)
`Petitioner’s Unopposed Motion for Pro Hac Vice Admission
`
`experience in jury trials, Markman hearings, and Federal Circuit oral arguments in
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`patent infringement litigation matters. (Id.) Mr. Sawyer’s biography is attached to
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`the Saywer Affidavit as Exhibit A.
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`
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`U.S. Patent No. 6,968,884 is currently asserted against Petitioner in a co-
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`pending litigation, Hunter Douglas, Inc. et al. v. Nien Made Enterprise Co., Ltd. et
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`al., Case No. 1:13-cv-01412-MSK-MJW filed in the U.S. District Court for the
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`District of Colorado on May 31, 2013 (“the co-pending litigation”). (Id. at ¶ 9.)
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`
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`Mr. Sawyer is lead counsel for Petitioner in the co-pending litigation and, as
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`such, oversees and handles all phases of the litigation from discovery through trial.
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`(Id. at ¶ 10.) Mr. Sawyer is familiar with the technologies, specific designs and
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`issued claims in Patent No. 6,968,884, has reviewed prior art references and claims
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`charts for invalidity contentions, and was heavily involved in forming claim
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`construction positions and drafting claim construction briefs. (Id.) Mr. Sawyer is
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`also familiar with the prior art references cited in the PTAB Case No. IPR2014-
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`01175 and the associated invalidity grounds before the PTAB. (Id.)
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`
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`Petitioner has invested significant financial resources in the related matter in
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`which Mr. Sawyer serves as lead counsel. Petitioner therefore respectfully submits
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`that there is good cause for the Board to recognize Mr. Sawyer as counsel pro hac
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`vice during this proceeding.
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`- 4 -
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`3. Affidavit or Declaration of Individual Seeking to Appear
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`CASE IPR2014-01175 (Patent 6,968,884)
`Petitioner’s Unopposed Motion for Pro Hac Vice Admission
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`
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`This Unopposed Motion for Pro Hac Vice Admission is accompanied by an
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`Affidavit of Mr. Sawyer (Exhibit 1015), which attests to the requirements for pro
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`hac vice admission set forth in IPR2013-000639, Paper 7, dated Oct. 15, 2013.
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`4. The Motion Is Unopposed
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`
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`The undersigned counsel conferred with counsel for Patent Owner regarding
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`the relief requested in this Motion on September 10, 2015. Counsel for Patent
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`Owner, Kristopher Reed, confirmed that Patent Owner will not oppose the Motion.
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`
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`Accordingly, Petitioner submits that there is good cause under 37 C.F.R.
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`§ 42.10(c) for the Board to recognize Douglas L. Sawyer as counsel pro hac vice in
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`Respectfully submitted,
`
`
`
` /Bing Ai/
`Lead Counsel Bing Ai, Reg. No. 43,312
`Backup Counsel Kourtney Mueller Merrill,
`Reg. No. 58,195
`
`
`
`Attorneys for Norman International, Inc.
`
`
`this proceeding.
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`
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`Dated: September 28, 2015
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`
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`PERKINS COIE LLP
`11988 El Camino Real, Suite 350
`San Diego, CA 92130
`(858) 720-5700
`norman-hd-ipr@perkinscoie.com
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`
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`- 5 -
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`CASE IPR2014-01175 (Patent 6,968,884)
`Petitioner’s Unopposed Motion for Pro Hac Vice Admission
`
`
`CERTIFICATE OF SERVICE
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`
`
`The undersigned certifies that a complete copy of this PETITIONER’S
`
`UNOPPOSED MOTION FOR PRO HAC VICE ADMISSION with EXHIBIT
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`1015 were served this 28th day of September, 2015 by electronic mail as agreed
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`upon by the parties on the Patent Owner via its attorneys of record:
`
`KILPATRICK TOWNSEND & STOCKTON LLP
`Kristopher L. Reed (kreed@kilpatricktownsend.com)
`Darin Gibby (dgibby@kilpatricktownsend.com)
`Frederick L. Whitmer (FWhitmer@kilpatricktownsend.com)
`HD-Norman-IPR@kilpatricktownsend.com
`1400 Wewatta Street, Suite 600
`Denver, Colorado 80202
`
`
`Respectfully submitted,
`
`
`
`/Bing Ai/
`Lead Counsel Bing Ai, Reg. No. 43,312
`Backup Counsel Kourtney Mueller Merrill,
`Reg. No. 58,195
`
`
`
`Attorneys for Norman International, Inc.
`
`
`Dated: September 28, 2015
`
`
`
`PERKINS COIE LLP
`11988 El Camino Real, Suite 350
`San Diego, CA 92130
`(858) 720-5700
`norman-hd-ipr@perkinscoie.com
`
`
`
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`- 6 -
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