Filed on behalf of NETWORK-1 TECHNOLOGIES, INC.
`
`By: Charles R. Macedo (Reg. No. 32,781)
`Amster, Rothstein & Ebenstein LLP
`90 Park Avenue
`New York, NY 10016
`Telephone: (212) 336–8074
`Facsimile: (212) 336–8001
`E-mail: cmacedo@arelaw.com
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`
`
`GOOGLE INC.
`Petitioner
`
`v.
`
`NETWORK-1 TECHNOLOGIES, INC.
`Patent Owner
`
`__________________
`
`Case No. IPR2015-00345
`U.S. Patent 8,205,237
`__________________
`
`
`
`PATENT OWNER’S MOTION FOR PRO HAC VICE ADMISSION OF
`GREG DOVEL PURSUANT TO 37 C.F.R. 42.10(c)
`
`
`
`
`608616.1
`
`
`
`By: Charles R. Macedo (Reg. No. 32,781)
`Amster, Rothstein & Ebenstein LLP
`90 Park Avenue
`New York, NY 10016
`Telephone: (212) 336–8074
`Facsimile: (212) 336–8001
`E-mail: cmacedo@arelaw.com
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`
`
`GOOGLE INC.
`Petitioner
`
`v.
`
`NETWORK-1 TECHNOLOGIES, INC.
`Patent Owner
`
`__________________
`
`Case No. IPR2015-00345
`U.S. Patent 8,205,237
`__________________
`
`
`
`PATENT OWNER’S MOTION FOR PRO HAC VICE ADMISSION OF
`GREG DOVEL PURSUANT TO 37 C.F.R. 42.10(c)
`
`
`
`
`608616.1
`
`
`
`Exhibit No.
`
`2001
`
`2002
`
`2003
`
`2004
`
`Case No. IPR2015-00345
`
`
`Exhibit List
`
`Description
`
`“Brute-force search”—http://en.wikipedia.org/wiki/Brute-
`force_search (3/19/2015)
`U.S. Patent 8,447,762 (Brendel)
`
`U.S. Patent 7,167,984 (Graveman)
`
`Declaration of Greg Dovel in Support of Motion for Pro Hac Vice
`Admission
`
`
`
`Motion
`
`Pursuant to 37 C.F.R. § 42.10 (c), Patent Owner Network-1 Technologies,
`
`Inc. respectfully requests that the Board recognize Mr. Greg Dovel as counsel pro
`
`hac vice in this proceeding. This motion was authorized by the Board in Paper 4 of
`
`this proceeding (December 31, 2014 “Notice of Filing Date Accorded”).
`
`As demonstrated below, this motion should be granted because the motion:
`
` is timely filed (see Section I);
`
` demonstrates the requisite good cause required by 37 C.F.R. § 42.10(c)
`
`(see Section II); and
`
` is accompanied by the requisite declaration (see Unified Patents v.
`
`Parallel Iron, Order – Authorizing Motion for Pro Hac Vice Admission,
`
`IPR2013-00639, Paper 7 (“IPR2013-00639 Order”) at 2) (see Section
`
`III).
`
`608616.1
`
`1
`
`
`
`Case No. IPR2015-00345
`
`
`I.
`
`Time for filing.
`
`This Motion for pro hac vice admission is timely filed. A motion for pro
`
`hac vice is timely filed if it is filed “no sooner than twenty-one (21) days after
`
`service of the petition.” IPR2013-00639 Order at 2. This motion is being filed
`
`after the date that is 21 days after service of the petition (December 3, 2014).
`
`Accordingly, this motion is timely filed.
`
`II.
`
`Statement of Facts.
`
`Section 42.10(c) of 37 C.F.R. 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.
`
`37 C.F.R. § 42.10(c). See IPR2013-00639 Order at 3 (“A motion for pro hac vice
`
`admission must: a. Contain a statement of facts showing there is good cause for
`
`the Board to recognize counsel pro hac vice during the proceeding.”).
`
`Good cause is established where:
`
`[a] the lead counsel is a registered practitioner …, [b] counsel is an
`
`experienced litigating attorney and [c] has an established familiarity
`
`with the subject matter at issue in the proceeding.
`
`37 C.F.R. § 42.10(c) (lettering added). Here all three criteria are satisfied:
`2
`
`608616.1
`
`
`
`
`
`[a] Lead counsel, Charles R. Macedo, is a registered practitioner (Reg.
`
`No. 32,781) (see Patent Owner Mandatory Notice Information, filed on December
`
`Case No. IPR2015-00345
`
`
`22, 2014).
`
`
`
`[b] Counsel Greg Dovel is an experienced litigating attorney. In
`
`particular, as reflected in his accompanying Declaration, Mr. Dovel has:
`
`
`
`
`
`
`
`
`
`
`
`
`
`been a litigation attorney for 27 years – since 1988;
`
`first-chaired numerous jury and bench trials to verdict;
`
`been primarily litigating patent cases since 2000;
`
`been lead counsel on over 30 patent cases;
`
`litigated a number of patent cases through trial; and
`
`conducted oral arguments on six patent cases before the Federal
`
`Circuit.
`
`Exh. 2004 ¶¶2-3.
`
`In addition, Mr. Dovel has been admitted pro hac vice in the following
`
`matters before the Patent Trial and Appeal Board: IPR2015-00179, IPR2015-
`
`00180, IPR2013-00071, IPR2013-00092 (IPRs 2013-00385 and 00495 were joined
`
`with IPR2013-0071), CBM2014-00054, CBM2014-00170, CBM2015-00019, and
`
`CBM2015-00020. He conducted the oral hearing before the Board in IPR2013-
`
`0071 on behalf of the Patent Owner. Exh. 2004 ¶4.
`
`608616.1
`
`3
`
`
`
`Case No. IPR2015-00345
`
`
`[c] Mr. Dovel has an established familiarity with the subject matter at issue
`
`in this proceeding, U.S. Patent 8,205,237 (the ‘237 Patent). Mr. Dovel has read the
`
`‘237 Patent and the prior art references that Petitioner has asserted against the ‘237
`
`Patent. Exh. 2004 ¶6. Mr. Dovel also assisted lead counsel Mr. Macedo in
`
`drafting the Patent Owner’s Preliminary Response and is therefore familiar with
`
`the ‘237 Patent and the issues in this proceeding. Exh. 2004 ¶7. See Google v.
`
`Arendis S.A.R.L., IPR2014-00452 Paper 22 at 2 (January 6, 2015) (granting motion
`
`for pro hac vice admission where the applicant “declares that he is familiar with
`
`the subject matter at issue in this proceeding based on having read the challenged
`
`patent and the references asserted by Petitioners, as well as familiarity with the
`
`contents of the Petition in this proceeding.”)
`
`III. Affidavit or Declaration of Individual Seeking to Appear.
`
`
`
`A pro hac vice motion must “[b]e accompanied by an affidavit or
`
`declaration of the individual seeking to appear attesting to” eight general
`
`requirements for pro hac vice admission. IPR2013-000639 Order at 3. This
`
`motion is accompanied by a declaration of Greg Dovel (Exh. 2004) in which Mr.
`
`Dovel attests to the general requirements for pro hac vice admission:
`
`i.
`
` “Membership in good standing of the Bar of at least one State or
`
`District of Columbia” (IPR2013-000639 Order at 3), specifically the State of
`
`California. Exh. 2004 ¶8.
`
`608616.1
`
`4
`
`
`
`Case No. IPR2015-00345
`
`
`ii.
`
`“No suspensions or disbarments from practice before any court or
`
`administrative body” (IPR2013-000639 Order at 3). Exh. 2004 ¶9.
`
`iii.
`
`“No application for admission to practice before any court or
`
`administrative body ever denied” (IPR2013-000639 Order at 3). Exh. 2004 ¶10.
`
`iv.
`
`“No sanctions or contempt citations imposed by any court or
`
`administrative body” (IPR2013-000639 Order at 3). Exh. 2004 ¶9.
`
`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 37 C.F.R.” (IPR2013-000639 Order at 3). Exh. 2004 ¶11.
`
`vi.
`
`“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)” (IPR2013-000639 Order at 3). Exh. 2004 ¶12.
`
`vii.
`
` “All other proceedings before the Office for which the individual has
`
`applied to appear pro hac vice in the last there (3) years” (IPR2013-000639 Order
`
`at 3). Exh. 2004 ¶¶4, 13.
`
`viii. “Familiarity with the subject matter at issue in this proceeding”
`
`(IPR2013-000639 Order at 3). Exh. 2004 ¶¶5-7.
`
`
`
`608616.1
`
`5
`
`
`
`Case No. IPR2015-00345
`
`
`IV. Conclusion.
`
`
`
`In light of the foregoing, Patent Owner Network-1 Technologies, Inc.
`
`respectfully submits that there is good cause for the Board to recognize Mr. Dovel
`
`as counsel pro hac vice during this proceeding.
`
`
`
`Respectfully submitted,
`
`
`
`
`
`/Charles R. Macedo/
`Charles R. Macedo
`Registration No. 32,781
`Amster, Rothstein & Ebenstein LLP
`90 Park Avenue
`New York, NY 10016
`Telephone: (212) 336–8074
`Facsimile: (212) 336–8001
`E-mail: cmacedo@arelaw.com
`Counsel for Patent Owner
`
`Date: July 22, 2015
`
`
`
`
`
`
`
`
`
`By:
`
`
`
`
`608616.1
`
`6
`
`
`
`Case No. IPR2015-00345
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing PATENT
`
`OWNER’S MOTION FOR PRO HAC VICE ADMISSION OF GREG
`
`DOVEL PURSUANT TO 37 C.F.R. 42.10(c) together with the
`
`DECLARATION OF GREG DOVEL IN SUPPORT OF MOTION FOR PRO
`
`HAC VICE ADMISSION (EXHIBIT 2004) are being served by electronic mail
`
`this 22nd day of July 2015 on counsel for Petitioner as follows:
`
`James J. Elacqua
`Douglas R. Nemec
`Skadden, Arps, Slate, Meagher & Flom LLP
`525 University Avenue
`Suite 1400
`Palo Alto, California 94301
`Telephone: (650) 470-4510
`Facsimile: (650) 798-6564
`DLGOOGLE1N@skadden.com
`James.Elacqua@skadden.com
`Douglas.Nemec@skadden.com
`
`
`
`
`
`
`
`
`
`
`By: /Charles R. Macedo/
`Charles R. Macedo
`Registration No. 32,781
`Amster, Rothstein & Ebenstein LLP
`90 Park Avenue
`New York, NY 10016
`Telephone: (212) 336–8074
`Facsimile: (212) 336–8001
`E-mail: cmacedo@arelaw.com
`
`Counsel for Patent Owner
`
`
`Date: July 22, 2015
`
`
`
`
`
`
`
`
`608616.1
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
