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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`BEFORE THE PATENT AND TRIAL APPEAL BOARD
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`
`
`Mercedes-Benz USA, LLC and
`Mercedes-Benz U.S. International, Inc.,
`Petitioner
`v.
`Velocity Patent LLC
`Patent Owner
`
`
`Inter Partes Review No.: 2014-01247
`Patent No.: 5,954,781
`
`
`MOTION FOR PRO HAC VICE ADMISSION OF
`JAMES A. SHIMOTA
`UNDER 37 C.F.R § 42.10
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`
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`
`
`
`MOTION FOR PRO HAC VICE ADMISSION OF
`JAMES A. SHIMOTA
`UNDER 37 C.F.R. § 42.10
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`
`
`Velocity Patent LLC respectfully requests that the Board recognize
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`Mr. James A. Shimota 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
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`(21) days after service of the Petition, as required by the Order Authorizing
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`Motion for Pro Hac Vice Admission entered October 15, 2013 in Case
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`IPR2013-00639, Paper 7 (the “PHV Order”).
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`2.
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` Statement of Facts
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`As dictated by the PHV Order, the following statement of facts
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`illustrates that there is good cause for the Board to recognize Mr. Shimota
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`pro hac vice.
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`Mr. Shimota is an experienced litigator, who has been involved in
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`numerous litigations involving patent infringement in various District Courts
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`throughout the United States. He has experience litigating patent disputes
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`before judges, juries, the International Trade Commission, and international
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`arbitrators. Mr. Shimota’s biography is attached hereto as Exhibit A.
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`Mr. Shimota is intimately familiar with the subject matter in question
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`in this proceeding, as he is is lead counsel for the Patent Owner in the co-
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`
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`pending litigation, Velocity Patent LLC v. Mercedes-Benz USA, LLC, et al.,
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`No. 1:13-cv-08413 (N.D. Ill. 2013) (the “Pending Litigation”).
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`In the Pending Litigation, Mr. Shimota has been involved in, inter
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`alia, crafting case strategy and infringement contentions, all of which are
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`relevant to the pending inter partes review of U.S. Patent No. 5,954,781.
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`The Patent Owner wishes to apply Mr. Shimota’s knowledge of the patent
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`by employing him as counsel in this proceeding.
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`Further, counsel for the Petitioner does not oppose Mr. Shimota
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`appearing pro hac vice during this proceeding.
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`The Patent Owner’s
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`lead and backup counsel are registered
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`practitioners and Mr. Shimota is an experienced litigation attorney having
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`familiarity with the subject matter at issue in this proceeding. Therefore, the
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`Patent Owner respectfully submits that there is good cause for the Board to
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`recognize Mr. Shimota 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. James A.
`
`Shimota, as required by the PHV Order.
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`
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`Dated: December 2, 2014
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`/Patrick D. Richards/
`Patrick Richards (Reg. No. 48,905)
`Richards Patent Law P.C.
`Willis (Sears) Tower
`233 S. Wacker Dr., 84th Floor
`Chicago, IL 60606
`Telephone: (312) 283-8555
`
`Counsel for Patent Owner
`
`
`
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`
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`AFFADAVIT OF MR. JAMES A. SHIMOTA
`IN SUPPORT OF
`MOTION FOR PRO HAC VICE ADMISSION
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`I, James A. Shimota, 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 state of Illinois (Bar #
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`6270603), as well as the following Federal Courts:
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`a) U.S. Court of Appeals for the Federal Circuit;
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`b) United States Court of Appeals for the Sixth Circuit
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`c) U.S. District Court for the Northern District of Illinois;
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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
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`or administrative body denied;
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`4) No sanction or contempt citation has been imposed against me by any
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`court or administrative body;
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`5) I have read and will comply with the Office Patent Trial Practice Guide
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`and the Board’s Rules of Practice for Trials set forth in Part 42 of 37
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`C.F.R.;
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`
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`6) I will be subject to the USPTO Code of Professional Responsibility set
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`forth in C.F.R. §§ 11.01 et seq. and disciplinary jurisdiction under C.F.R.
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`§ 11.19(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 the last three (3) years; and
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`8) I am an experienced litigation attorney, with experience in numerous
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`litigations involving patent infringement in District Courts throughout the
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`United States, including experience with fact and expert document and
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`deposition discovery, claim construction, Markman hearings, motion
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`practice, trials and hearings, and investigations before the International
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`Trade Commission. My biography is attached hereto as Exhibit A. I am
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`lead counsel for Velocity Patent LLC in a co-pending litigation in which
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`U.S. Patent 5,954,781 is asserted against Mercedes-Benz USA, LLC and
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`Mercedes-Benz U.S. International Inc., and I am familiar with the subject
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`matter at issue in this proceeding as a result;
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`9) I hereby declare that all statements made herein of my own knowledge
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`are true and that all statements made on information and belief are
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`believed to be true, and further that these statements are made with the
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`knowledge that willful false statements and the like so made are
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`punishable by fine or imprisonment or both, under Section 1001 of Title
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`
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`18 of the United States Code and that such willful false statements may
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`jeopardize the outcome of this proceeding.
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`
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`Dated: December 2, 2014
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`
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`
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`Respectfully submitted,
`
`/James A. Shimota/
`James A. Shimota
`MAVRAKAKIS LAW GROUP LLP
`180 North La Salle, Suit 2215
`Chicago, IL 60601
`Telephone: (312) 216-1620
`Email: JShimota@mavllp.com
`
`
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