`U.S. Patent No. 6,009,469 C1
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC. &
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC.
`Petitioner,
`
`v .
`
`STRAIGHT PATH IP GROUP, INC.
`Patent Owner
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 6,009,469
`
`
`
`Case IPR2014-01367 (Patent 6,009,469 C1)
`
`
`MOTION FOR PRO HAC VICE ADMISSION
`UNDER 37 C.F.R. § 42.10
`
`
`
`
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`WEST\258427033.1
`
`
`
`The Petitioner respectfully requests that the Board recognize Mr. Jonathan
`
`IPR2014-01367
`U.S. Patent No. 6,009,469 C1
`
`
`Hicks as counsel pro hac vice during this proceeding.
`
`1.
`
`Time For Filing
`
`This Motion for Pro Hac Vice Admission is being filed no sooner
`
`than twenty one (21) days after service of the petition as required by the Order
`
`Authorizing Motion for Pro Hac Vice entered September 9, 2014.
`
`2.
`
`Statement of Facts
`
`As required by the order authorizing this Motion for Pro Hac Vice
`
`Admission (Paper No. 3), the following statement of facts shows that there is good
`
`cause for the Board to recognize Mr. Hicks pro hac vice.
`
`Mr. Hicks is an experienced litigation attorney, and has been involved in
`
`numerous litigations involving patent infringement in District Courts across the
`
`country. He has experience in jury and bench trials, Markman hearings, and
`
`Federal Circuit oral arguments in patent infringement litigation matters.
`
`U.S. Patent No. 6,009,469 is currently asserted against Patent Owner
`
`Optical Devices LLC in pending litigation, Case No. 6:13-cv-00606 (E.D.Tx.)
`
`(the “district court litigation”). The district court litigation is stayed pending the
`
`outcome of this proceeding.
`
`Mr. Hicks is counsel for Samsung Electronics Co., Ltd., Samsung
`
`Electronics America, Inc., and Samsung Telecommunications America, LLC
`
`WEST\258427033.1
`
`1
`
`
`
`in the district court litigation and, as such, has an established familiarity with
`
`IPR2014-01367
`U.S. Patent No. 6,009,469 C1
`
`
`the subject matter at issue in this proceeding. In the district court litigation,
`
`Mr. Hicks reviewed prior art references and claims charts for invalidity
`
`contentions, and was heavily involved in forming claim construction
`
`positions, all of which are relied upon in the petition requesting inter partes
`
`review of the ’469 Patent. Petitioner has expended significant financial
`
`resources in the district court litigation with Mr. Hicks as counsel, and
`
`Petitioner wishes to continue using Mr. Hicks as counsel in this proceeding.
`
`Further, counsel for Patent Owner does not oppose Mr. Hicks appearing pro
`
`hac vice during this proceeding. Therefore, Petitioner respectfully submits that
`
`there is good cause for the Board to recognize Mr. Hicks as counsel pro hac vice
`
`during this proceeding.
`
`3.
`
`Affidavit or Declaration of Individual Seeking to Appear
`
`This Motion for Pro Hac Vice Admission is accompanied by an Affidavit of
`
`Mr. Jonathan Hicks as required by the Order Authorizing Motion for Pro Hac Vice
`
`entered September 9, 2014.
`
`
`
`
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`WEST\258427033.1
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`2
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`IPR2014-01367
`U.S. Patent No. 6,009,469 C1
`
`
`Dated: May 22, 2015
`
` Respectfully Submitted,
`
`
`
`
`
`/s/ Brian Erickson
`Brian K. Erickson
`Registration No. 48,895
`DLA PIPER LLP (US)
`401 Congress Avenue, Suite 2500
`Austin, TX 78701-3799
`Telephone: 512-457-7000
`Facsimile: 512-457-7001
`Email: Samsung-SP-
`IPR@dlapiper.com
`
`
`
`
`For PATENT OWNER:
`
`William Meunier
`WAMeunier@mintz.com
`
`Matthew Durell
`Mdurell@mintz.com
`
`WEST\258427033.1
`
`3
`
`
`
`CERTIFICATE OF SERVICE
`
`IPR2014-01367
`U.S. Patent No. 6,009,469 C1
`
`
`
`
`The undersigned certifies service of a copy of this document on the Patent
`
`Owner’s counsel of record pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(b) by
`
`electronic mail to StraightPathIPRs@mintz.com.
`
`
`
`
`
` /s/ Brian Erickson
`Brian K. Erickson
`Registration No. 48,895
`DLA PIPER LLP (US)
`401 Congress Avenue, Suite 2500
`Austin, TX 78701-3799
`Telephone: 512-457-7000
`Facsimile: 512-457-7001
`Email: Samsung-SP-
`IPR@dlapiper.com
`
`Dated: May 22, 2015
`
`
`
`
`
`WEST\258427033.1
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`4
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