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`Case IPR2015-00283
`Patent 6,038,295
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GOOGLE INC.
`Petitioner
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`v.
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`TLI COMMUNICATIONS LLC
`Patent Owner
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`Case IPR2015-00283
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`Patent 6,038,295
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`GOOGLE INC.’S UNOPPOSED MOTION FOR
`PRO HAC VICE ADMISSION OF KEVIN HARDY
`PURSUANT TO 37 C.F.R. § 42.10(c)
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`Case IPR2015-00283
`Patent 6,038,295
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`I.
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`RELIEF REQUESTED
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`Pursuant to 37 C.F.R. § 42.10(c) and the Board’s “Notice of Filing Date
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`Accorded to Petition” (Paper 3, dated December 5, 2014) (“Notice of Filing
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`Date”), Petitioner Google Inc. (“Google”) respectfully requests the pro hac vice
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`admission of Kevin Hardy in this proceeding.
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`II. GOVERNING LAW, RULES, AND PRECEDENT
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`The Board is authorized to recognize counsel pro hac vice pursuant to 37
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`C.F.R. § 42.10(c), which provides that:
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`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 at issue in the proceeding.
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`The Notice of Filing Date requires that any motion for pro hac vice
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`admission be filed in accordance with the “Order – Authorizing Motion for Pro
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`Hac Vice Admission” in Case IPR 2013-00639, Paper 7 (“Unified Patents Order”).
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`(See Notice of Filing Date at 3.)
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`Case IPR2015-00283
`Patent 6,038,295
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`The Unified Patents Order requires that a pro hac vice motion “[c]ontain a
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`statement of facts showing there is good cause for the Board to recognize counsel
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`pro hac vice during the proceeding.” Unified Patents Order at 3. A motion for pro
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`hac vice admission should also be accompanied by an affidavit or declaration of
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`the individual seeking to appear attesting to the following:
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`i.
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`ii.
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`Membership in good standing of the Bar of at least one State or
`the District of Columbia;
`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;
`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 37 C.F.R.;
`The individual will be subject to the USPTO Rules of
`Professional Conduct set forth in 37 C.F.R. §§ 11.101 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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`v.
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`vi.
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`Case IPR2015-00283
`Patent 6,038,295
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`Unified Patents Order at 3.
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`III. STATEMENT OF FACTS
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`Based on the following facts, and supported by the Declaration of Mr. Hardy
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`submitted herewith as Exhibit 1035, Google requests the pro hac vice admission of
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`Kevin Hardy in this proceeding:
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`1.
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`Google’s lead counsel, Andrew V. Trask, is a registered practitioner
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`(Reg. No. 59,239).
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`2. Mr. Hardy is an experienced litigating attorney. Mr. Hardy has been
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`practicing patent litigation for thirteen years. Ex. 1035 ¶ 1.
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`3. Mr. Hardy has established familiarity with the subject matter at issue
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`in this proceeding. As detailed below, Mr. Hardy is and has been
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`litigation counsel to Google in related proceedings in which the
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`identical claims of the ’295 patent are at issue. Id. ¶ 10.
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`4. Mr. Hardy is a member in good standing of the bars of the State of
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`Maryland and the District of Columbia. Id. ¶ 3.
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`5. Mr. Hardy has never been suspended or disbarred from practice
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`before any court or administrative body. Id. ¶ 4.
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`6.
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`No court or administrative body has ever denied Mr. Hardy’s
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`application for admission to practice before it. Id. ¶ 5.
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`Patent 6,038,295
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`7.
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`No court or administrative body has ever imposed sanctions or
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`contempt citations on Mr. Hardy. Id. ¶ 6.
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`8. Mr. Hardy has read and will comply with the Office Patent Trial
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`Practice Guide and the Board’s Rules of Practice for Trials set forth in
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`part 42 of 37 C.F.R. Id. ¶ 7.
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`9. Mr. Hardy understands that he will be subject to the USPTO Rules of
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`Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and
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`disciplinary jurisdiction under 37 C.F.R. § 11.19(a). Id. ¶ 8.
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`10. Mr. Hardy has not applied to appear pro hac vice in any proceedings
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`before this Office in the last three (3) years. Id. ¶ 9.
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`11. Counsel for Google conferred with lead counsel for TLI
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`Communications LLC (“TLI”) before filing this motion, and TLI
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`indicated that it does not oppose this motion or the admission of Mr.
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`Hardy on a pro hac basis for this matter.
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`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION OF
`MR. HARDY IN THIS PROCEEDING
`The Board may recognize counsel pro hac vice during a proceeding upon a
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`showing of good cause, subject to the condition that lead counsel be a registered
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`practitioner and to any other conditions as the Board may impose. 37 C.F.R.
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`§ 42.10(c). Google’s lead counsel, Andrew V. Trask, is a registered practitioner
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`Case IPR2015-00283
`Patent 6,038,295
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`before the Board. Based on the facts contained herein, as supported by Mr.
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`Hardy’s declaration, good cause exists to admit Mr. Hardy pro hac vice in this
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`proceeding.
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`As set forth in his declaration, Mr. Hardy is an experienced litigator with
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`approximately thirteen years of patent litigation experience. Id. ¶ 1. Moreover,
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`Mr. Hardy has established familiarity with the subject matter at issue in the
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`proceeding. He represented Google in the district court litigations of TLI
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`Communications LLC v. Google Inc., 1:13-cv-01924-GMS (D. Del.) and TLI
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`Communications LLC v. AV Automotive, L.L.C., 1:14-cv-00139 (E.D. Va.), the
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`latter of which was consolidated into In re TLI Communications LLC, No.
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`1:14md2534 (E.D. Va.). Mr. Hardy also represents Google in the appeal of the
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`judgment entered in the consolidated case, pending as TLI Communications LLC v.
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`AV Automotive, L.L.C., No. 15-1372 (Fed. Cir.). Each of those cases involved or
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`involves the identical claims of the ’295 patent at issue here. Id. ¶ 10.
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`Mr. Hardy thus has extensive experience not only with patent litigation, but
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`also with litigating the precise subject matter raised in Petitioner’s inter partes
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`review petition. Moreover, admission of Mr. Hardy pro hac vice will avoid
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`unnecessary expense and duplication of work for Google between this and the
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`earlier-filed parallel proceedings identified above. See 77 Fed. Reg. 48612, 48661
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`Case IPR2015-00283
`Patent 6,038,295
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`(Aug. 14, 2012) (Office’s comment on final rule discussing concerns about
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`efficiency and costs where a patent owner has already engaged counsel for parallel
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`litigation). As counsel for Google, Mr. Hardy has been actively involved in all
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`aspects of its related federal court litigations, including factual investigation and
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`development concerning the claims of the ’295 patent being challenged in this
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`proceeding. In view of Mr. Hardy’s extensive knowledge of the precise subject
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`matter at issue in this proceeding, and in view of the interrelatedness of this
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`proceeding and its federal court litigations, Google has a substantial need for Mr.
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`Hardy’s pro hac vice admission and his involvement in the continued prosecution
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`of this proceeding.
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`V. CONCLUSION
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`For the foregoing reasons, Google respectfully requests that Mr. Hardy be
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`admitted pro hac vice in this proceeding.
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`Date: February 27, 2015
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`Respectfully submitted,
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` /s/ Andrew V. Trask
`Andrew V. Trask
`Reg. No. 59,239
`Williams & Connolly LLP
`725 Twelfth Street, NW
`Washington, DC 20005
`Telephone: (202) 434-5098
`Facsimile: (202) 434-5029
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`Case IPR2015-00283
`Patent 6,038,295
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`Email: atrask@wc.com
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`Attorney for Petitioner Google Inc.
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`Case IPR2015-00283
`Patent 6,038,295
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the above-captioned Google Inc.’s
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`Unopposed Motion for Pro Hac Vice Admission of Kevin Hardy Pursuant to 37
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`C.F.R. § 42.10(c), along with Exhibit 1035, was served on February 27, 2015, by
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`filing this document through the Patent Review Processing System as well as
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`delivering a copy via electronic mail upon the following attorneys of record for the
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`Petitioner:
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`Tarek N. Fahmi
`Michael A. Davitz
`ASCENDA LAW GROUP, PC
`84 W. Santa Clara St., Suite 550
`San Jose, CA 95113
`patents@ascendalaw.com
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`Dated: February 27, 2015
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` /s/ Andrew V. Trask
`Andrew V. Trask
`Reg. No. 59,239
`Williams & Connolly LLP
`725 Twelfth Street, N.W.
`Washington, DC 20005
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`Phone: 202-434-5098
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`Attorney for Petitioner Google Inc.
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