Patent No. 7,296,121
`IPR2015-00163
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC., HTC CORPORATION, HTC AMERICA, INC., SAMSUNG
`ELECTRONICS CO. LTD, SAMSUNG ELECTRONICS AMERICA, INC.,
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC AND
`AMAZON.COM, INC.
`Petitioners
`
`v.
`
`MEMORY INTEGRITY, LLC
`Patent Owner
`
`U.S. Patent No. 7,296,121
`
`
`
`Inter Partes Review Case No. 2015-00163
`
`
`
`MEMORY INTEGRITY, LLC’S MOTION FOR PRO HAC VICE
`ADMISSION OF MICHAEL D. SAUNDERS UNDER 37 CFR § 42.10(c)
`
`
`
`
`IPR2015-00163
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC., HTC CORPORATION, HTC AMERICA, INC., SAMSUNG
`ELECTRONICS CO. LTD, SAMSUNG ELECTRONICS AMERICA, INC.,
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC AND
`AMAZON.COM, INC.
`Petitioners
`
`v.
`
`MEMORY INTEGRITY, LLC
`Patent Owner
`
`U.S. Patent No. 7,296,121
`
`
`
`Inter Partes Review Case No. 2015-00163
`
`
`
`MEMORY INTEGRITY, LLC’S MOTION FOR PRO HAC VICE
`ADMISSION OF MICHAEL D. SAUNDERS UNDER 37 CFR § 42.10(c)
`
`
`
`
`
`I.
`Pursuant to 37 C.F.R. § 42.10(c), Patent Owner respectfully requests that the
`
` RELIEF REQUESTED
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`Patent No. 7,296,121
`IPR2015-00163
`
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`Board admit Michael D. Saunders pro hac vice in this proceeding.
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`II. GOVERNING LAW, RULES, AND PRECEDENT
`
`Section 42.10(c) of C.F.R. 37 provides:
`
`The Board may recognize counsel pro hac vice during a
`proceeding upon a showing of good cause, subject to the condition
`that lead counsel be a registered practitioner and to any other
`conditions as the Board may impose. For example, where the 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 showing that counsel is an experienced litigating attorney and
`has an established familiarity with the subject matter as issue in the
`proceeding.
`
`
`In the Notice of Filing Date Accorded to Petition (“Notice”) mailed on
`
`November 13, 2014, the Board authorized the parties to file motions for pro hac
`
`vice admission under 37 C.F.R. § 42.10(c). The Notice requires that such motions
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`be filed in accordance with the “Order – Authorizing Motion for Pro Hac Vice
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`Admission” in Case IPR2013-00639, Paper No. 7 (“Order”).
`
`The Order states that the “time for filing pro hac vice motions is no sooner
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`than twenty one (21) days after service of the petition…” The Order further states
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`that motions for pro hac vice must “[c]ontain a statement of facts showing there is
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`good cause for the Board to recognize counsel pro hac vice during the
`
`
`
`1
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`
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`Patent No. 7,296,121
`IPR2015-00163
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`proceeding,” and “[b]e accompanied by an affidavit or declaration of the individual
`
`seeking to appear attesting to the following:”
`
`i. Membership in good standing of the Bar of at least one State or the
`District of Columbia;
`
`ii. No Suspensions or disbarments from practice before any court or
`administrative body;
`
`iii. No application for admission to practice before any court or
`administrative body ever denied;
`
`iv. No sanctions or contempt citations imposed by any court or
`administrative body;
`
`v. The individual seeking to appear 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 C.F.R.;
`
`vi. The individual will be subject to the USPTO Rules of Professional
`Conduct set forth in 37 C.F.R. §§ 11.01 et. seq. and disciplinary
`jurisdiction under 37 C.F.R. § 11.19(a);
`
`vii. All other proceedings before the Office for which the individual
`has applied to appear pro hac vice in the last three (3) years; and
`
`viii. Familiarity with the subject matter at issue in the proceeding.
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`III. TIME FOR FILING
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`
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`As required by the Order, this motion for pro hac vice admission was filed
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`no sooner than twenty-one (21) days after service of the petition.
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`2
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`IV. STATEMENT OF FACTS
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`Patent No. 7,296,121
`IPR2015-00163
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`Patent Owner submits that the following statement of facts, supported by the
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`accompanying Declaration of Michael D. Saunders, shows that there is good cause
`
`for the Board to recognize Mr. Saunders pro hac vice in this proceedings:
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`1. Patent Owner’s lead counsel, Jonathan Baker, is a registered practitioner
`
`(Reg. No. 45708);
`
`2. Patent Owner’s backup counsel, Bryan Atkinson, is a registered
`
`practitioner (Reg. No. 52574);
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`3. Mr. Saunders is an experienced litigation attorney. He has been involved
`
`in numerous litigations involving patent infringement in District Courts
`
`across the country and has experience in Markman hearings.
`
`4. U.S. Patent No. 7,296,121 is currently asserted against Petitioners in
`
`Memory Integrity, LLC v. Sony Corporation, et al., Case No. 1:13-cv-
`
`01809-GMS (D. Del.), and against other entities in both Delaware and
`
`Oregon. Mr. Saunders is a counsel of record in all of the Patent Owner’s
`
`District Court litigations and has acquired substantial understanding of
`
`the underlying legal and technical issues in this proceeding. He has
`
`reviewed prior art, participated in discovery, and responded to dispositive
`
`motions. Patent Owner has expended significant financial resources in
`
`the District Court litigations with Mr. Saunders as counsel, and Patent
`
`
`
`3
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`
`
`Owner wishes to continue using Mr. Saunders as counsel in this
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`Patent No. 7,296,121
`IPR2015-00163
`
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`proceeding.
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`V. NO OPPOSITION TO THIS MOTION
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`Patent Owner has conferred with Petitioners with regard to this Motion, and
`
`Petitioners have confirmed that they will not oppose it.
`
`VI. DECLARATION OF INDIVIDUAL SEEKING TO APPEAR
`
`This Motion for Pro Hac Vice Admission is accompanied by the Declaration
`
`of Michael D. Saunders, as required by the Order.
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`VII. CONCLUSION
`
`In light of the foregoing, Patent Owner respectfully requests that the Board
`
`admit Michael D. Saunders pro hac vice in this proceeding.
`
`
`
`Date: July 16, 2015
`
`Respectfully submitted,
`
`
`
` /Jonathan D. Baker/
`Jonathan D. Baker
`Reg. No. 45708
`Farney Daniels PC
`411 Borel Avenue, Suite 350
`San Mateo, California 94402
`Phone: 424-268-5210
`E-mail: jbaker@farneydaniels.com
`
`
`
`
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`4
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`
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`DECLARATION OF MICHAEL D. SAUNDERS IN SUPPORT
`OF MOTION FOR PRO HAC VICE ADMISSION
`
`Patent No. 7,296,121
`IPR2015-00163
`
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`I, Michael D. Saunders, do hereby declare as follows:
`
`1.
`
`I am an attorney at the law firm of Farney Daniels PC, am over
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`
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`eighteen years of age, and would be competent to testify as to the matters set forth
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`herein if called upon to do so.
`
`2.
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`I am a member in good standing of the State Bars of California and
`
`the District of Columbia, as well as of the following Federal Courts:
`
`a.
`
`b.
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`c.
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`d.
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`U.S. Court of Appeals for the Federal Circuit;
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`U.S. District Court for the Northern District of California;
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`U.S. District Court for the Central District of California;
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`U.S. District Court for the Eastern District of Wisconsin.
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`3.
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`I have not been suspended or disbarred from practice before any court
`
`or administrative body.
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`4.
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`I have never had an application for admission to practice before any
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`court or administrative body denied.
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`5.
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`No sanction or contempt citation has been imposed against me by any
`
`court or administrative body.
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`6.
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`I have read and will comply with the Office Patent Trial Practice
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`Guide and the Board’s Rules of Practice for Trials set forth in part 42 of 37 C.F.R.
`
`
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`5
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`
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`I will be subject to the USPTO Rules of Professional Conduct set
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`Patent No. 7,296,121
`IPR2015-00163
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`7.
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`forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction under 37 C.F.R. §
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`11.19(a).
`
`8.
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`Contemporaneously with this Motion, I have applied to appear pro
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`hac vice before this Office in IPR2015-00158 and IPR2015-00159, both of which
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`involve the same Patent Owner and the same U.S. Patent 7,296,121 as the instant
`
`matter.
`
`9.
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`I am a counsel of record in Memory Integrity, LLC v. Sony
`
`Corporation, et al., Case No. 1:13-cv-01809-GMS (D. Del.) where U.S. Patent No.
`
`7,296,121 is currently asserted against Petitioners. I am also a counsel of record in
`
`all the District Court litigations initiated by Patent Owner and have acquired
`
`substantial understanding of the underlying legal and technical issues in this
`
`proceeding. I have reviewed prior art, participated in discovery, and responded to
`
`dispositive motions in such proceedings. I therefore have an established
`
`familiarity with the subject matter at issue in this proceeding.
`
`10.
`
`I am an experienced litigation attorney, with experience in numerous
`
`litigations involving patent infringement in District Courts across the country,
`
`including experience in Markman hearings.
`
`
`
`
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`6
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`
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`I
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`
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`declare unnder penaltty of perjurry that the
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`
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`foregoing
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`Patent
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`No. 7,2966,121
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`IPPR2015-000163
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`
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`Declaratioon is true aand
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`
`
`Michael D.
`Saunders
`
`
`aarney Daniiels PC
`
`
`
`4111 Borel AAvenue, Suuite 350
` 94402
`
`Saan Mateo,
`California
`
`-268-52100
`
`Phhone: 424
`
`
`
`
`MF
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`
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`
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`correct.
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`15
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`7
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` D
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`DATED: JJuly 16, 20
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`CERTIFICATE OF SERVICE
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`Patent No. 7,296,121
`IPR2015-00163
`
`
`Under 37 C.F.R. §§ 42.6(e), this is to certify that I served a copy of the
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`foregoing MOTION FOR PRO HAC VICE ADMISSION OF MICHAEL D.
`
`SAUNDERS UNDER 37 CFR § 42.10(c) along with the accompanying
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`declaration via email on July 16, 2015 to Petitioner’s counsel of record at the
`
`following email addresses:
`
`W. Karl Renner, Reg. No. 41, 265
`Roberto Devoto, Reg. No. 55, 108
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Email:
`IPR39521-0007IP1@fr.com
`IPR39521-0007IP2@fr.com
`IPR39521-0007IP3@fr.com
`IPR39521-0007IP4@fr.com
`renner@fr.com
`devoto@fr.com
`
`Dated: July 16, 2015
`
` /Jonathan D. Baker/
`Jonathan Baker
`Reg. No. 45708
`
`
`
`
`
`8
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