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`Filed on behalf of: Gold Standard Instruments, LLC Paper ____
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` Date file: February 20, 2015
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`By:
`Joseph A. Hynds, Lead Counsel
`R. Elizabeth Brenner-Leifer, Back-up Counsel
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`Phone: 202-783-6040
`Facsimile: 202-783-6031
`Emails: jhynds@rothwellfigg.com
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` ebrenner@rothwellfigg.com
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
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`US ENDODONTICS, LLC,
`Petitioner,
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`v.
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`GOLD STANDARD INSTRUMENTS, LLC,
`Patent Owner.
`_______________
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`Case IPR2015-00632
`Patent 8,727,773 B2
`_______________
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`PATENT OWNER’S MOTION FOR ADMISSION
`PRO HAC VICE OF STEVEN LIEBERMAN
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`Case IPR2015-00632
`Patent 8,727,773 B2
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`I.
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`Relief Requested
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`Pursuant to 37 C.F.R. § 42.10 and the Notice of Filing Date Accorded to
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`Petition and Time for Filing Patent Owner Preliminary Response, mailed February
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`12, 2015 (Paper 3), Patent Owner Gold Standard Instruments, LLC (“Patent
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`Owner”) requests that the Board admit Steven Lieberman pro hac vice in this
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`proceeding to serve as back-up counsel.
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`II.
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`Statement of Facts Showing There is Good Cause for the Board to
`Recognize Counsel Pro Hac Vice During the Proceeding
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`In accordance with 37 C.F.R. § 42.10(c), the Board may recognize counsel
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`pro hac vice during a proceeding upon a showing of good cause, subject to the
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`condition that lead counsel be a registered practitioner and to any other conditions
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`as the Board may impose. § 42.10(c) indicates that, “where lead counsel is a
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`registered practitioner, a motion to appear pro hac vice may be granted upon a
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`showing that counsel is an experienced litigating attorney and has an established
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`familiarity with the subject matter at issue in the proceeding.” The facts here
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`establish good cause for the Board to recognize Steven Lieberman pro hac vice
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`during this proceeding, so that he may participate in, inter alia, oral hearings,
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`Case IPR2015-00632
`Patent 8,727,773 B2
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`depositions, and conferences with the Board.
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`1.
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`2.
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`Lead counsel, Joseph A. Hynds, is a registered practitioner.
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`Counsel, Steven Lieberman, is an experienced litigating attorney and
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`has an established familiarity with the subject matter at issue in the proceeding.
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`Accompanying this motion is the Declaration of Steven Lieberman in Support of
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`Patent Owner’s Motion for Admission Pro Hac Vice (“Lieberman Decl.”). Mr.
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`Lieberman is a member in good standing of the Bars of the State of New York and
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`the District of Columbia, admitted to practice in the United States District Courts
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`for the District of Columbia, Maryland, the Northern District of California, and the
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`Northern, Eastern, and Southern Districts of New York. Lieberman Decl., ¶ 2.
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`Mr. Lieberman is also admitted to practice in the Courts of Appeals for the District
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`of Columbia, the Second Circuit, the Fourth Circuit, the Federal Circuit, and the
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`United States Supreme Court. Id. Mr. Lieberman has served as a President of the
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`Giles S. Rich American Inn of Court, the D.C. Inn is devoted to the practice of
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`intellectual property law. Id., ¶ 3. Mr. Lieberman has been litigating patent cases
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`since 1990, primarily as lead counsel. Id., ¶ 4.
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`3. Mr. Lieberman is familiar with the subject matter at issue in this
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`proceeding by virtue of his representing a licensee of the Patent Owner in a lawsuit
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`brought against the Petitioner, Dentsply International, Inc. and Tulsa Dental
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`3
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`Products LLC v. US Endodontics, LLC, Case No. 2:14-cv-00196-JRG-DHI (E.D.
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`Case IPR2015-00632
`Patent 8,727,773 B2
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`Tenn.), involving the patent at issue in this proceeding. Lieberman Decl., ¶ 11.
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` 4. Mr. Lieberman attests to each of the listed items required by the
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`“Order -- Authorizing Motion for Pro Hac Vice Admission in Case IPR2013-
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`00639” referenced in the Notice of Filing Date Accorded to Petition and Time for
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`Filing Patent Owner Preliminary Response, mailed February 12, 2015 (Paper 3).
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`See Lieberman Decl., ¶¶ 1-11.
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`5. Mr. Lieberman 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, as set forth in Part 42
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`of 37 C.F.R. Lieberman Decl., ¶ 8. Mr. Lieberman agrees to be subject to the
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`USPTO Rules of 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) and to be subject to the
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`USPTO Rules of Professional Conduct as set forth in Changes to Representation of
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`Others Before the United States Patent and Trademark Office; Final Rule, 78 Fed.
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`Reg. 20180 (Apr. 3, 2013) (effective May 3, 2013). Lieberman Decl., ¶ 9.
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`III. Conclusion
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`The requirements for admission pro hac vice being hereby established,
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`Patent Owner Gold Standard Instruments, LLC, respectfully requests that the
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`Board admit Steven Lieberman pro hac vice in this proceeding.
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`Case IPR2015-00632
`Patent 8,727,773 B2
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`Respectfully submitted,
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`/ Joseph A. Hynds /
`By:
`Date: February 20, 2015
`Joseph A. Hynds, Reg. No. 34,627
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`ROTHWELL, FIGG, ERNST &
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` MANBECK, P.C.
`607 14th St., N.W., Suite 800
`Washington, DC 20005
`Phone: 202-783-6040
`Facsimile: 202-783-6031
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`CERTIFICATE OF SERVICE
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`Case IPR2015-00632
`Patent 8,727,773 B2
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`I hereby certify that on this 20th day of February, 2015, a true and correct
`copy of the foregoing PATENT OWNER’S MOTION FOR ADMISSION PRO
`HAC VICE OF STEVEN LIEBERMAN was served, via electronic mail upon the
`following counsel for Petitioner US Endodontics, LLC:
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`Jeffrey S. Ginsberg, Esq.
`Matthew G. Berkowitz, Esq.
`Eric T. Schreiber, Esq.
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`Phone: 212-425-7200
`Facsimile: 212-425-5288
`Emails: jginsberg@kenyon.com
`mberkowitz@kenyon.com
`eschreiber@kenyon.com
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`/ Erik van Leeuwen /
`Erik van Leeuwen
`Litigation Operations Coordinator
`Rothwell, Figg, Ernst & Manbeck, P.C.
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