Inter Partes Review No. IPR2014-01536
`Patent 8,690,057
`Patent Owner Motion for Pro Hac Vice
`Admission of Benjamin T. Horton
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`RF CONTROLS, LLC,
`Petitioner
`
`v.
`
`A-1 PACKAGING SOLUTIONS, INC.,
`Patent Owner
`
`_______________
`
`Patent 8,690,057
`Issue Date: April 8, 2014
`
`Title: RADIO FREQUENCY IDENTIFICATION SYSTEM FOR TRACKING
`AND MANAGING MATERIALS IN A MANUFACTURING PROCESS
`_______________
`
`Case IPR: IPR2014-01536
`_______________
`
`PATENT OWNER’S MOTION FOR PRO HAC VICE
`ADMISSION OF BENJAMIN T. HORTON
`
`
`Patent 8,690,057
`Patent Owner Motion for Pro Hac Vice
`Admission of Benjamin T. Horton
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`RF CONTROLS, LLC,
`Petitioner
`
`v.
`
`A-1 PACKAGING SOLUTIONS, INC.,
`Patent Owner
`
`_______________
`
`Patent 8,690,057
`Issue Date: April 8, 2014
`
`Title: RADIO FREQUENCY IDENTIFICATION SYSTEM FOR TRACKING
`AND MANAGING MATERIALS IN A MANUFACTURING PROCESS
`_______________
`
`Case IPR: IPR2014-01536
`_______________
`
`PATENT OWNER’S MOTION FOR PRO HAC VICE
`ADMISSION OF BENJAMIN T. HORTON
`
`
`
`PATENT OWNER’S MOTION FOR PRO HAC VICE
`ADMISSION OF BENJAMIN T. HORTON
`
`I.
`
`Requested Relief
`Pursuant to 37 C.F.R. § 42.10 and the Board’s “Notice of Filing Date
`
`Accorded to Petition and Time for Filing Patent Owner Preliminary Response,”
`
`(Paper No. 3), dated October 7, 2014, the Patent Owner requests the Board to
`
`admit Benjamin T. Horton pro hac vice in this proceeding to serve as backup
`
`counsel for A-1 Packaging Solutions, Inc. in this inter partes review.
`
`II.
`
`Statement of Facts Showing Good Cause for the Requested Relief
`The Board may recognize counsel pro hac vice during an inter partes review
`
`proceeding upon a showing of good cause, subject to the condition that lead
`
`counsel be a registered practitioner and to any other conditions the Board may
`
`impose. See 37 C.F.R. § 42.10(c). Where “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 a showing that counsel is an experienced
`
`litigating attorney and has an established familiarity with the subject matter at issue
`
`in the proceeding.” Id. The Patent Owner respectfully submits that the following
`
`facts establish good cause for the Board to recognize Mr. Horton pro hac vice
`
`during this proceeding.
`
`Further, the Board requires that a motion for pro hac vice admission be filed
`
`in accordance with the “Order – Authorizing Motion for Pro Hac Vice Admission”
`
`-1-
`
`
`
`in Case IPR2013-00639, Paper 7 (“Representative Order”). The Representative
`
`Order states that the motion must “[c]ontain a statement of facts showing there is
`
`good cause for the Board to recognize counsel pro hac vice during the
`
`proceedings,” and “[b]e accompanied by an affidavit or declaration of the
`
`individual seeking to appear attesting to the following:”
`
`1.
`
`Lead counsel, Roger A. Heppermann, is a registered practitioner
`
`(Registration No. 37,641).
`
`2.
`
`Back-up counsel, Shawn M. Buchanan, is a registered practitioner
`
`(Registration No. 65,064).
`
`3.
`
`Mr. Horton is a partner at the law firm of Marshall, Gerstein & Borun LLP.
`
`(See Exh. 2000 (Horton Declaration) at ¶ 1.)
`
`4.
`
`Mr. Horton has been practicing in the field intellectual property, and
`
`particularly patent litigation, for approximately ten years. (Id. at ¶ 2.)
`
`5.
`
`Mr. Horton is a member in good standing of the Bar of the State of Illinois,
`
`as well as the United States District Court for the Northern District of
`
`Illinois, including the Trial Bar for the Northern District of Illinois, and has
`
`also been admitted to practice pro hac vice in a number of other Federal
`
`District courts. (Id. at ¶ 3.)
`
`-2-
`
`
`
`6.
`
`Mr. Horton has never been suspended or disbarred from practice before any
`
`court or administrative body. (Id. at ¶ 4.)
`
`7.
`
`Mr. Horton has never had an application for admission to practice before any
`
`court or administrative body denied. (Id. at ¶ 5.)
`
`8.
`
`Mr. Horton has never had sanctions or contempt citations imposed upon him
`
`by any court or administrative body. (Id. at ¶ 6.)
`
`9.
`
`Mr. Horton 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
`
`Code of Federal Regulations. (Id. at ¶ 7.)
`
`10. Mr. Horton has read and will abide by and be subject to the U.S. Patent and
`
`Trademark Office Code of Professional Responsibility set forth in 37 C.F.R.
`
`§ 11.101 et. seq. and the Office’s disciplinary jurisdiction under 37 C.F.R. §
`
`11.19(a). (Id. at ¶ 8.)
`
`11. Mr. Horton has not been admitted in any other proceedings before the Office
`
`in the past three years. (Id. at ¶ 9.) However, Mr. Horton will also seek
`
`admission pro hac vice in inter partes review proceeding IPR2015-00119
`
`regarding the same patent, U.S. Patent No. 8,690,057. (Id.)
`
`12. Mr. Horton is an experienced litigation attorney and he is familiar with the
`
`subject matter at issue in the proceeding. He has spent substantial time
`
`-3-
`
`
`
`reviewing and analyzing the patent at issue in this proceeding, its file
`
`history, the Petition in each of IPR2014-01536 and IPR2015-00119, and the
`
`references cited therein, and the references cited therein. (Id. at ¶ 10.) As a
`
`result, Mr. Horton has acquired substantial understanding of the underlying
`
`legal and technological issues at stake in this proceeding. Patent Owner has
`
`spent time and resources consulting with Mr. Horton as counsel in this and
`
`other matters involving the patent at issue in this proceeding and wishes to
`
`continue using Mr. Horton as counsel in this proceeding. (Id.)
`
`13.
`
`Further, in his declaration, Mr. Horton attests to each of the listed items
`
`required by 37 C.F.R. § 42.10(c). (See Id. at ¶¶ 1-11.)
`
`In the view of the foregoing, Patent Owner respectfully submits that
`
`Mr. Horton has sufficient legal and technical qualifications to represent the Patent
`
`Owner in this proceeding. Further, the Patent Owner respectfully submits that it
`
`has a need for its litigation counsel to be involved in this proceeding.
`
`-4-
`
`
`
`III. Conclusion
`For the foregoing reasons, Patent Owner respectfully requests the Board to
`
`admit Benjamin T. Horton pro hac vice in this proceeding to serve as backup
`
`counsel for A-1 Packaging Solutions, Inc. in this inter partes review.
`
`March 2, 2015
`
`Respectfully submitted,
`
`/Roger A. Heppermann #37,641/
`Roger A. Heppermann (Reg. No. 37,641)
`rheppermann@marshallip.com
`Lead Counsel for Patent Owner
`
`/Shawn M. Buchanan #65,064/
`Shawn M. Buchanan (Reg. No. 65,064)
`sbuchanan@marshallip.com
`Back-up Counsel for Patent Owner
`
`MARSHALL, GERSTEIN & BORUN LLP
`6300 Willis Tower
`233 South Wacker Drive
`Chicago, Illinois 60606-6357
`Telephone: (312) 474-6300
`Docket@marshallip.com
`
`-5-
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on February 24, 2015, pursuant to 37
`
`CFR §§ 42.6(b)(1) and (e), a copy of the foregoing PATENT OWNER MOTION
`
`FOR PRO HAC VICE ADMISSION OF BENJAMIN T. HORTON and Exh. 2000
`
`thereto are being electronically filed via the Patent Review Processing System
`
`(PRPS), and are being served via electronic mail on counsel for the Patent Owner
`
`as part of the PRPS as follows:
`
`mhickey@lewisrice.com, kdamman@lewisrice.com, and
`
`bsiders@lewisrice.com via electronic mail.
`
`LEWIS, RICE & FINGERSH, L.C.
`ATTN: BOX IP DEPT.
`600 WASHINGTON, SUITE 2500
`ST. LOUIS, MO 63101
`
`March 2, 2015
`
`/ Roger A. Heppermann #37,641/
`Roger A. Heppermann
`MARSHALL, GERSTEIN & BORUN LLP
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