UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MERCEDES—BENZ USA, LLC and
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`MERCEDES-BENZ U.S. INTERNATIONAL, INC.,
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`Petitioner,
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`V.
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`VELOCITY PATENT LLC,
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`Patent Owner.
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`IPR Case N0.: 2014—01247
`
`Patent No. 5,954,781
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`MOTION FOR PRO HAC VICE ADMISSION OF
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`RAYMOND A. KURZ
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`UNDER 37 C.F.R. § 42.10
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`MOTION FOR PRO HAC VICE ADMISSION OF
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`RAYMOND A. KURZ
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`UNDER 37 C.F.R. § 42.10
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`Mercedes-Benz USA, LLC and Mercedes-Benz US. International, Inc.
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`(collectively, “Petitioner”) respectfully request that the Board recognize Mr.
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`Raymond A. Kurz as counsel pro hac vice during this proceeding.
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`1.
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`Time for Filing
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`Per Paper No. 3, this Motion is being filed no sooner than twenty—one (21)
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`days after service of the Petition, as required by the Order Authorizing Motion for
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`Pro Hac Vice Admission entered in Case IPR2013-00639, Paper 7, October 15,
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`2013 (the “PHV Order”).
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`2.
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`Statement of Facts
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`As required by the PHV Order, the following statement of facts shows that
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`there is good cause for the Board to recognize Mr. Kurz pro hac vice.
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`Mr. Kurz is an experienced litigation attorney, and has been involved in
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`numerous litigations involving patent infringement in District Courts across the
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`United States. He has experience in Markman hearings, jury and bench trials, and
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`Federal Circuit oral arguments in patent litigation matters. Mr. Kurz’s biography is
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`attached hereto as Exhibit A.
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`US. Patent No. 5,954,781 is currently asserted against Petitioner in a co—
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`pending litigation, Velocity Patent LLC v. Mercedes—Benz USA, LLC, et al., No.
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`1:13-cv-08413 (ND. Ill. 2013) (the “Pending Litigation”).
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`Mr. Kurz is co-lead counsel for Petitioner in the Pending Litigation and, as
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`such, has an established familiarity with the subject matter at issue in this
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`proceeding. In the Pending Litigation, Mr. Kurz has been involved in, inter alia,
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`invalidity contentions, non-infringement contentions, and claim construction, as
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`well as analyzing prior art, which activities are relied in on with the Petition
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`requesting inter partes review of certain claims of US. Patent No. 5,954,781.
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`Petitioner has expended significant financial resources in the Pending Litigation
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`with Mr. Kurz as counsel, and Petitioner wishes to continue using Mr. Kurz as
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`counsel in this proceeding.
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`Further, counsel for Patent Owner does not oppose Mr. Kurz appearing pro
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`hac vice during this proceeding.
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`Therefore, Petitioner respectfully submits that there is good cause for the
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`Board to recognize Mr. Kurz as counsel pro hac vice during this proceeding
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`3.
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`Affidavit or Declaration of Individual Seeking to Appear
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`This Motion is accompanied by an Affidavit of Mr. Raymond A. Kurz, as
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`required by the PHV Order.
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`Dated: November 21, 2014
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`Respectfully submitted,
`
`/Celine J. Crowson/
`
`Celine Jimenez Crowson (Reg. No. 40,357)
`HOGAN LOVELLS US LLP
`
`555 13th Street, NW.
`Washington, DC. 20004
`Telephone: 202.637.5600
`
`One 0fthe attorneys for Petitioner
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`AFFIDAVIT OF MR. RAYMOND A. KURZ
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`IN SUPPORT OF
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`MOTION FOR PRO HAC VICE ADMISSION
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`1, Raymond A Kurz, being duly sworn and upon oath, hereby attest to the
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`following:
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`1) I am a member in good standing of the Bar of the District of Columbia, as well
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`as the following Federal Courts:
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`a) US Court of Appeals for the Second Circuit 4/ 14/ 1999,
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`b) US. Court of Appeals for the Third Circuit 2/4/1991,
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`0) US. Court of Appeals for the Ninth Circuit 1/ 19/ 1988,
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`d) US. Court of Appeals for the Federal Circuit 3/6/1986,
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`e) US. District Court for the District of California 9/26/ 1990,
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`f) US. District Court for the District of Colorado 1/4/1982,
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`g) US. District Court for the District of Columbia 9/26/1990, and
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`h) US. Supreme Court 03/07/1989;
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`2) I have not been suspended or disbarred from practice before any court or
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`administrative body;
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`3) I have never had an application for admission to practice before any court or
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`administrative body denied;
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`4) No sanction or contempt citation has been imposed against me by any court or
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`administrative body;
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`5) I have read and will comply with the Office Patent Trial Practice Guide and the
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`Board’s Rules of Practice fer Trials set forth in Part 42 of 37 C.F.R.;
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`6) I will be subject to the USPTO Code of Professional Responsibility set forth in
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`37 C.F.R. §§ 11.01 et seq. and disciplinary jurisdiction under 37 C.F.R. §
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`1 l.l9(a);
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`7) I have not applied to appear pro hac vice before the Office in any other
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`proceeding in the last three (3) years; and
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`8) I am an experienced litigation attorney, with experience in numerous litigations
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`involving patent infringement in District Courts throughout the United States,
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`including experience in Markmcm hearings, jury and bench trials, and Federal
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`Circuit oral arguments in patent litigation. My biography is attached hereto as
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`Exhibit A. I am co—lead counsel for Mercedes—Benz USA, LLC and Mercedes—
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`Benz US. International Inc. in a co—pending litigation in which US. Patent
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`5,954,781 is asserted against Mercedes—Benz USA, LLC and Mercedes—Benz
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`US. International Inc. I am familiar with the subject matter at issue in this
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`proceeding as a result, including the prior art and claim constructions on which
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`Petitioner relies;
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`9) I hereby declare that all statements made herein of my own knowledge are true
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`and that all statements made on information and belief are believed to be true,
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`and further that these statements are made with the knowledge that willfiil false
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`statements and the like so made are punishable by fine or imprisonment or both,
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`under Section 1001 of Title 18 of the United States Code and that such willful
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`false statements may jeopardize the outcome of this proceeding.
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`
`
`/ Raymond A. Kurz
`Mfiofim LOVELLS US LLP
`555 Thirteenth Street, NW
`Washington, DC 20004
`
`Telephone: (202)637—5600
`
`Fax: (202)637—5910
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`XQW ma W
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`
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`EXHIBIT A
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`EXHIBIT A
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`11/10/2014
`
`Raymond A. Kurz - Washington, D.C. - Lawyer - Our People - Hogan Lovells
`
`V-CARD
`
`PHONE
`+1 202 637 5683
`
`FAX
`+1 202 637 5910
`
`RAYMOND A. KURZ
`Partner, Washington, D.C.
`raymond.kurz@hoganlovells.com
`
`Ray Kurz has practiced exclusively in the intellectual property
`field over the course of his 30+ year career. His practice covers a
`broad spectrum of intellectual property matters, including lead
`counsel roles in complex patent, trademark, and copyright
`litigation, counseling, and licensing. Ray was lead counsel in the
`successful defense of a medical device patent case in excess of
`$1 billion, and has successfully defended and prosecuted patent
`and trademark cases before numerous U.S. District Courts, the
`International Trade Commission (ITC) and the Court of Appeals
`for the Federal Circuit and has been recognized by Legal 500 in
`numerous areas. Ray has applied his broad based intellectual
`property knowledge in connection with varied industries including
`electronics, medical device/bioscience matters, computer
`software, e-commerce, automotive, online/Internet, and
`multimedia work and has used his extensive intellectual property
`expertise in assisting companies in establishing comprehensive
`intellectual property strategic plans. Ray’s intellectual property
`licensing practice includes matters ranging from multi-million
`dollar patent licenses to movie licensing deals.
`
`REPRESENTATIVE EXPERIENCE
`
`PATENT
`
`Lead counsel in the successful defense of a medical device
`patent case in excess of $1 billion.
`Lead counsel successfully defending Daimler/Mercedes in
`multiple NPE patent suits including ITC litigation and having
`cases dismissed or dropped without any payment to NPEs
`due to successful Markman rulings and other strategic
`moves.
`Representing a major biotech company in litigation of the
`validity of the base PCR patent.
`Lead counsel in successful defense of Sun Microsystems
`in a patent case involving parallel computing.
`Lead counsel in the successful defense of a medical device
`company in a patent case involving vascular occlusion
`devices.
`
`PRACTICES
`
`Intellectual Property
`
`Litigation and Arbitration
`
`INDUSTRY SECTORS
`
`Life Sciences and Healthcare
`
`Automotive
`
`Technology
`
`Telecommunications
`
`Food, Beverages, and
`Agriculture
`
`AREAS OF FOCUS
`
`Complex patent, trademark,
`and copyright litigation
`
`Patent, trademark, trade
`secret, and copyright
`counseling
`
`Patent, technology, trademark,
`copyright licensing
`
`EDUCATION
`
`J.D., The George Washington
`University Law School, 1981
`
`B.A., magna cum laude, The
`State University of New York,
`University at Albany, 1978
`
`MEMBERSHIPS
`
`Member, Patent, Trademark
`and Copyright Law Section,
`District of Columbia Bar
`Association
`
`Member, International
`Trademark Association
`
`Member, American Intellectual
`
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`Lead counsel in the successful representation of Dominant
`Semiconductors in defending a multi-patent case in the ITC
`avoiding an exclusion order of downstream products.
`Lead counsel representing and successfully resolving an
`NPE case for Eli Lilly involving object-oriented database
`software applications.
`Court appointed mediator in the successful mediation of a
`multi-party Hatch- Waxman litigation.
`Lead appellate counsel representing HemCon in the much
`talked about appeal in Marine Polymer v. HemCon.
`Lead counsel representing Lockheed Martin in several
`patent infringement cases, including having one case
`dismissed at the very start of the case.
`Lead counsel defending a major computer manufacturer in
`an ITC patent case involving six patents on various aspects
`of flash memory devices for computers.
`Lead counsel for a major non-profit organization in patent
`and trade secret litigation involving blood purification
`technology.
`Lead counsel representing a major pharmaceutical
`company in litigation against generic pharmaceutical
`companies concerning a method for treating the effects of
`kidney dialysis.
`Representing a major biotechnology company in
`negotiating agreements with NIH concerning immortalized
`cell lines.
`
`Ray serves as a Committee Member of the Advanced Patent Law
`Institute, which is comprised of a unique fellowship of senior
`USPTO officials, leading academics, practitioners, and members
`of the judiciary.
`
`TRADEMARK AND COPYRIGHT
`
`Lead counsel representing Kimberly-Clark Corporation in
`connection with their highly successful Color Purple
`trademark enforcement efforts including successful
`enforcement in District Court and the International Trade
`Commission (ITC).
`Lead counsel representing Red Bull in numerous
`trademark, unfair competition, and copyright litigations
`including successful enforcement in numerous federal court
`litigations and in the ITC. Many of these cases involved
`color mark claims. We also handled a complex parallel
`imports case for Red Bull and obtained a $2.1 million
`payment to Red Bull.
`Lead counsel representing the Smurf Rights Holders in
`numerous trademark and copyright matters over the last 25
`years including negotiating a major motion picture deal on
`their behalf as well as various trademark and copyright
`
`Property Law Association
`
`Committee Member, Advanced
`Patent Law Institute
`
`AWARDS / RANKINGS
`
`Managing Intellectual Property,
`IP Stars 2013, District of
`Columbia
`
`Legal 500 US, Patent Litigation:
`Hi Tech Electronics and IT,
`2009
`
`Legal 500 US, Patents:
`International Trade
`Commission, 2007
`
`Legal 500 US, Patent Litigation:
`Mechanical/Automotive/Aerospace,
`2007
`
`Legal 500 US, IP: Copyright,
`National, 2007
`
`BAR ADMISSIONS /
`QUALIFICATIONS
`
`District of Columbia
`
`COURT ADMISSIONS
`
`U.S. Supreme Court
`
`U.S. Court of Appeals, Federal
`Circuit
`
`U.S. Court of Appeals, Second
`Circuit
`
`U.S. Court of Appeals, Third
`Circuit
`
`U.S. Court of Appeals, Ninth
`Circuit
`
`U.S. Court of Appeals, District
`of Columbia Circuit
`
`U.S. District Court, District of
`Columbia
`
`U.S. District Court, Colorado
`
`U.S. District Court, Northern
`District of Georgia
`
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`litigation/enforcement matters.
`Lead trademark counsel in successfully representing the
`American Red Cross in its epic battle with Johnson &
`Johnson regarding the use of the Red Cross emblem.
`Lead counsel representing Ferrero, the makers of TIC TAC
`candies and ROCHER chocolates, for over 30 years in
`numerous trademark and trade dress litigations, involving
`Tic Tac, Rocher and other famous marks.
`Lead counsel representing Sun Microsystems, Inc. in a
`trademark/copyright anti-counterfeiting case resulting in a
`favorable settlement.
`Lead Counsel Representing Pemex, the Mexican national
`petroleum company in the successful defense of its PEMEX
`trademark.
`
`Ray writes and speaks frequently on intellectual property issues
`and he is the principal author and editor of the book Internet and
`the Law: Legal Fundamentals for the Internet User.
`
`HOGAN LOVELLS PUBLICATIONS
`
`15 APRIL 2013
`"Intellectual Property Newsletter - April 2013." IP Alert, Hogan
`Lovells
`
`14 JANUARY 2011
`"Intellectual Property Newsletter - January 2011." IP Alert, Hogan
`Lovells
`
`11 DECEMBER 2008
`"New IP Law Creates Cabinet-Level IP Enforcement Coordinator."
`International Trade & Intellectual Property Update, Hogan &
`Hartson LLP
`
`04 DECEMBER 2008
`"Are My Patents Still Valid? A Client’s Guide to Understanding Ex
`parte Bilski." IP Update, Hogan & Hartson LLP
`
`01 JUNE 2006
`"A New Weapon in the Fight Against Counterfeiting: Using the
`United States International Trade Commission as a Forum to
`Combat Counterfeiting and Other Intellectual Property Violations."
`IP Update, Hogan & Hartson LLP
`
`01 APRIL 2003
`"The U.S. Accession to the Madrid Protocol." IP Update, Hogan &
`Hartson LLP
`
`PUBLISHED WORKS
`
`SEPTEMBER 2011
`"Smurfs' Lawyers Review IP and Contract Issues in Movie Deal."
`
`http://www.hoganlovells.com/ourpeople/Detail.aspx?attorney=06f1448e-7748-4ac9-908e-bd125025ef1d&print=true
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`BNA International: World Intellectual Property Report, The Bureau
`of National Affairs, Inc.
`
`01 OCTOBER 2010
`"Best Practices for Preventing Sales of Gray Market Goods in the
`United States." INTA Bulletin, Vol. 65, No. 17, International
`Trademark Association
`
`MARCH 2009
`"New IP Law Creating Cabinet-Level IP Enforcement Coordinator
`Signals Enhanced Focus on Combating Counterfeit Goods."
`Intellectual Property & Technology Law Journal, Aspen
`Publishers
`
`© HOGAN LOVELLS. ALL RIGHTS RESERVED. "HOGAN LOVELLS" OR THE “FIRM” REFERS TO THE INTERNATIONAL LEGAL PRACTICE THAT
`COMPRISES HOGAN LOVELLS INTERNATIONAL LLP, HOGAN LOVELLS US LLP AND THEIR AFFILIATED BUSINESSES, EACH OF WHICH IS A
`SEPARATE LEGAL ENTITY. ATTORNEY ADVERTISING. PRIOR RESULTS DO NOT GUARANTEE A SIMILAR OUTCOME.
`
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