UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`MICRON TECHNOLOGY, INC., AND MICRON MEMORY JAPAN, INC.,
`Petitioners
`
`v.
`
`MASSACHUSETTS INSTITUTE OF TECHNOLOGY
`Patent Owner
`____________________
`
`Case: IPR2015-01087
`U.S. Patent No. 6,057,221
`____________________
`
`MICRON TECHNOLOGY, INC.’S AND MICRON MEMORY
`JAPAN, INC.’S MOTION FOR PRO HAC VICE ADMISSION OF
`ROSE CORDERO PREY UNDER 37 C.F.R. § 42.10(c)
`
`
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`Submitted Electronically via the Patent Review Processing System
`
`
`
`
`
`____________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`MICRON TECHNOLOGY, INC., AND MICRON MEMORY JAPAN, INC.,
`Petitioners
`
`v.
`
`MASSACHUSETTS INSTITUTE OF TECHNOLOGY
`Patent Owner
`____________________
`
`Case: IPR2015-01087
`U.S. Patent No. 6,057,221
`____________________
`
`MICRON TECHNOLOGY, INC.’S AND MICRON MEMORY
`JAPAN, INC.’S MOTION FOR PRO HAC VICE ADMISSION OF
`ROSE CORDERO PREY UNDER 37 C.F.R. § 42.10(c)
`
`
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`Submitted Electronically via the Patent Review Processing System
`
`
`
`
`
`Petitioners’ Motion for Pro Hac Vice Admission of Rose Cordero Prey
`Case No. IPR2015-01087
`
`
`
`TABLE OF EXHIBITS
`
`Exhibit #
`
`Exhibit Description
`(Citation is to page, column, or paragraph in original, except for
`Exhibits 1009, for which citation is to inserted page number)
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`Declaration of Dr. Michael Thomas
`
`Curriculum Vitae of Dr. Michael Thomas
`
`U.S. Patent No. 6,057,221
`
`File History for U.S. Patent No. 6,057,221
`
`The New IEEE Standard Dictionary of Electrical and Electronic
`Terms, Fifth Ed., Institute of Electrical and Electronics Engineers,
`Inc., New York (1993)
`
`Japan Pat. Appl. Publ. No. 8-213465 to Koyou (including English
`translation and supporting declaration)
`
`Japan Pat. Appl. Publ. No. 6-244285 to Wada, et al. (including
`English translation and supporting declaration)
`
`1008
`
`U.S. Patent No. 5,729,042 to Lou et al.
`
`1009
`
`U.S. Patent Application No. 514,800 filed August 14, 1995 (to which
`U.S. Pat. No. 5,729,042 claims priority)
`
`1010
`
`U.S. Patent No. 5,025,300 to Billig et al.
`
`1011
`
`1012
`
`1013
`
`1014
`
`Ex Parte Reexamination Application No. 90/011,607, Request for Ex
`Parte Reexamination filed March 30, 2011
`
`Ex Parte Reexamination Application No. 90/011,607, Corrected Pre-
`amendment under 35 C.F.R. 1.530 filed April 14, 2011
`
`Ex Parte Reexamination Application No. 90/011,607, Order Granting
`Request for Ex Parte Reexamination filed June 23, 2011
`
`Ex Parte Reexamination Application No. 90/011,607, Non-Final
`Office Action of January 26, 2012
`
`i
`
`
`
`Petitioners’ Motion for Pro Hac Vice Admission of Rose Cordero Prey
`Case No. IPR2015-01087
`
`
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`Ex Parte Reexamination Application No. 90/011,607, Request for
`Reconsideration filed March 26, 2012
`
`Ex Parte Reexamination Application No. 90/011,607, Declaration of
`Dr. Bernstein filed March 26, 2012 (including exhibits)
`
`Ex Parte Reexamination Application No. 90/011,607, Notice of Intent
`to Issue Ex Parte Reexamination Certificate of July 11, 2012
`
`“Thermal Conductivity of Metals,” The Engineering
`ToolBox, http://www.engineeringtoolbox.com/thermal-conductivity-
`metals-d_858.html (last visited April 1, 2015)
`
`Pierson, Handbook of Refractory Carbides and Nitrides:
`Properties, Characteristics, Processing, and Applications, Noyes
`Publications (1996)
`
`U.S. Patent No. 5,872,389 to Nishimura et al.
`
`U.S. Patent No. 5,675,174 to Nakajima
`
`U.S. Patent No. 5,538,924 to Chen
`
`U.S. Patent No. 5,300,461 to Ting
`
`U.S. Patent No. 5,729,041 to Yoo
`
`U.S. Patent No. 5,747,869 to Prall
`
`1026
`
`Wilson et al., Handbook of Multilevel Metallization For Integrated
`Circuits: Materials, Technology, and Applications, Noyes
`Publications (1993)
`1027 Wolf, Silicon Processing for the VLSI ERA Volume 2: Process
`Integration, Lattice Press, Sunset CA (1990)
`
`1028
`
`Construction Analyses of the Samsung KM44C4000J-7 16 Megabit
`DRAM, published by Integrated Circuit Engineering, Scottsdale AZ,
`Report No. SCA 9311-3001 (available at
`http://smithsonianchips.si.edu/ice/cd/9311_300.pdf)
`
`ii
`
`
`
`Petitioners’ Motion for Pro Hac Vice Admission of Rose Cordero Prey
`Case No. IPR2015-01087
`
`
`
`1029
`
`1030
`
`1031
`
`1032
`
`1033
`
`1034
`
`1035
`
`1036
`
`1037
`
`Construction Analyses of the Lattice ispLSI2032-180L CPLD,
`published by Integrated Circuit Engineering, Scottsdale AZ, Report
`No. SCA 9712-573 (available at
`http://smithsonianchips.si.edu/ice/cd/9712_573.pdf)
`
`Construction Analysis of the Intel Pentium Processor w/MMX,
`published by Integrated Circuit Engineering, Scottsdale AZ, Report
`No. SCA 9706-540 (available at
`http://smithsonianchips.si.edu/ice/cd/9706_540.pdf)
`
`“Intel Introduces The Pentium® Processor With MMX™
`Technology,”
`http://www.intel.com/pressroom/archive/releases/1997/dp010897.htm
`(last visited April 14, 2015)
`
`“Intel Microprocessor Quick Reference Guide,”
`http://www.intel.com/pressroom/kits/quickreffam.htm#pentium (last
`visited April 26, 2015)
`
`Construction Analyses of the Motorola PC603R Microprocessor,
`published by Integrated Circuit Engineering, Scottsdale AZ, Report
`No. SCA 9709-551 (available at
`http://smithsonianchips.si.edu/ice/cd/9709_551.pdf)
`
`Construction Analyses of the Toshiba TC5165165AFT-50 64 Mbit
`DRAM, published by Integrated Circuit Engineering, Scottsdale AZ,
`Report No. SCA 9702-524 (available at
`http://smithsonianchips.si.edu/ice/cd/9702_524.pdf)
`
`“Material: Stainless steel, bulk,”
`https://www.memsnet.org/material/stainlesssteelbulk/ (last visited
`April 14, 2015)
`
`“Material: Silicon Dioxide (SiO2), bulk,”
`https://www.memsnet.org/material/silicondioxidesio2bulk/ (last
`visited April 14, 2015)
`
`Osaka, et al. “Development of new electrolytic and electroless gold
`plating processes for electronics applications,” Science and
`Technology of Advanced Materials, vol. 7 (2006), pp. 425-437.
`
`iii
`
`
`
`Petitioners’ Motion for Pro Hac Vice Admission of Rose Cordero Prey
`Case No. IPR2015-01087
`
`
`
`1038
`
`1039
`
`1040
`
`1041
`
`1042
`
`1043
`
`1044
`
`Uttecht et al., "A four-level-metal fully planarized interconnect
`technology for dense high performance logic and SRAM
`applications," VLSI Multilevel Interconnection Conference, 1991,
`Proceedings, Eighth International IEEE, June 11-12, 1991, pp. 20-26
`
`Ex Parte Reexamination Application No. 90/011,607, Patent Owner
`Statement filed August 12, 2011
`
`Seshan ed., Handbook of Thin-Film Deposition Processes and
`Techniques: Principles, Methods, Equipment and Applications,
`Second Ed., Noyes Publications, New York (2002)
`
`Vlassak, et al., “A new bulge test technique for the determination of
`Young’s modulus and Poisson’s ratio of thin films”, J. Mater. Res.,
`Vol. 7, No. 12, Dec 1992
`
`Ineos USA LLC v. Berry Plastics Corp., No 2014-1540, 2015 WL
`1727013, (Fed. Cir. Apr. 16, 2015) (precedential)
`
`Affidavit of Thomas R. Makin in support of Motion for Pro Hac Vice
`Admission
`
`Affidavit of Rose Cordero Prey in support of Motion for Pro Hac
`Vice Admission
`
`iv
`
`
`
`Petitioners’ Motion for Pro Hac Vice Admission of Rose Cordero Prey
`Case No. IPR2015-01087
`
`I.
`
`RELIEF REQUESTED
`
`
`
`Pursuant to 37 C.F.R. § 42.10(c), and as authorized in the Board’s Notice of
`
`Filing Date issued May 13, 2015 (paper 3), Micron Technology, Inc. (“Micron”)
`
`and Micron Memory Japan, Inc. (“Micron Memory Japan”) (collectively
`
`“Petitioners”) respectfully request the pro hac vice admission of Rose Cordero
`
`Prey to serve as back-up counsel for Petitioners in this proceeding.
`
`II. GOVERNING LAWS, RULES, AND PRECEDENT
`Section 42.10(c) states as follows:
`
`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.
`
`Pursuant to the Board’s May 13, 2015 Notice of Filing Date, the parties are
`
`authorized to file motions for pro hac vice admission under 37 C.F.R. § 42.10(c) in
`
`accordance with the guidance specified in the “Order Authorizing Motion for Pro
`
`Hac Vice Admission” entered in Case IPR2013-000639 (Paper 7) (“Unified
`
`
`
`1
`
`
`
`Petitioners’ Motion for Pro Hac Vice Admission of Rose Cordero Prey
`Case No. IPR2015-01087
`
`Patents Order”). According to that guidance, pro hac vice motions can be filed “no
`
`
`
`sooner than twenty one (21) days after service of the petition.”
`
`III. STATEMENT OF FACTS
`Based on the following facts, and supported by the Affidavit of Ms. Prey
`
`(Ex. 1044) submitted herewith, Petitioners request the pro hac vice admission of
`
`Rose Cordero Prey in this proceeding:
`
`1. Petitioners’ lead counsel, David J. Cooperberg, is a registered
`
`practitioner (Reg. No. 63,250), and an attorney at the law firm of
`
`Kenyon & Kenyon LLP.
`
`2. Ms. Prey is a partner at the law firm of Kenyon & Kenyon LLP. Ex.
`
`1044, ¶ 3.
`
`3. Ms. Prey is an experienced litigation attorney. Ms. Prey has been
`
`litigating patent cases for 10 years, and has experience litigating
`
`patent infringement cases in many district courts and before the U.S.
`
`International Trade Commission. Id. at ¶ 4. Among her experience in
`
`patent litigation matters, Ms. Prey has been counsel at trial, hearings,
`
`and with respect to patent-related summary judgment proceedings and
`
`other patent-related hearings and pleadings concerning, inter alia,
`
`patent validity, claim construction, and infringement issues. Id.
`
`
`
`2
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`Petitioners’ Motion for Pro Hac Vice Admission of Rose Cordero Prey
`Case No. IPR2015-01087
`
`
`
`
`4. Ms. Prey received a Bachelor’s of Science degree in Mathematics in
`
`2001 and has several years of experience litigating patents specifically
`
`directed to semiconductor devices (and fabrication thereof), including
`
`for clients Micron, Elpida Memory, Inc. (“Elpida”) and Sony
`
`Corporation. Id. at ¶ 5.
`
`5. Ms. Prey has an established familiarity with the subject matter at issue
`
`in this proceeding. Ms. Prey is trial counsel for Petitioners Micron
`
`and Micron Memory Japan in co-pending district court litigation
`
`against the Patent Owner, MIT v. Micron Tech., Inc. et al., Civil
`
`Action No. 1:15-cv-10374, filed on February 12, 2015, in the U.S.
`
`District Court for the District of Massachusetts, which involves the
`
`same patent at issue in this proceeding (U.S. Patent No. 6,057,221 or
`
`the “’221 patent”). Id. at ¶ 6.
`
`6. Ms. Prey has been actively involved in all aspects of the
`
`aforementioned district court litigation, including Petitioners’ on-
`
`going factual investigation and development of their non-
`
`infringement, invalidity and unenforceability positions regarding the
`
`claims of the ’221 patent that are the subject matter of this proceeding.
`
`Id. at ¶ 7.
`
`
`
`3
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`
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`Petitioners’ Motion for Pro Hac Vice Admission of Rose Cordero Prey
`Case No. IPR2015-01087
`
`
`7. In 2011, Ms. Prey began representing Elpida, which has been
`
`
`
`succeeded by Petitioner Micron Memory Japan, in patent-related
`
`matters, and, in 2013, Ms. Prey represented Elpida in licensing
`
`negotiations with Patent Owner Massachusetts Institute of
`
`Technology (“MIT”) relating to the ’221 patent. Id. at ¶ 8. Through
`
`this representation, Ms. Prey has acquired specific familiarity with the
`
`claims of the ’221 patent being challenged in this proceeding. Id. at ¶
`
`9.
`
`8. Ms. Prey is a member in good standing of the State Bar of New York
`
`as well as the United States District Court for the Eastern District of
`
`New York, the United States District Court for the Southern District
`
`of New York, and the United States Court of Appeals for the Federal
`
`Circuit. Id. at ¶ 11.
`
`9. Ms. Prey has never been suspended or disbarred from practice before
`
`any court or administrative body. Id. at ¶ 12.
`
`10. No application of Ms. Prey for admission to practice before any court
`
`or administrative body has ever been denied. Id. at ¶ 13.
`
`11. No sanctions or contempt citations have been imposed against Ms.
`
`Prey by any court or administrative body. Id. at ¶ 14.
`
`
`
`4
`
`
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`Petitioners’ Motion for Pro Hac Vice Admission of Rose Cordero Prey
`Case No. IPR2015-01087
`
`
`
`
`12. Ms. Prey 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 Title 37 of the Code of Federal Regulations. Id. at ¶ 15.
`
`13. Ms. Prey understands that she 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). Id. at ¶ 16.
`
`14. Ms. Prey has not applied to appear pro hac vice in any proceeding
`
`before the United States Patent and Trademark Office in the last three
`
`(3) years.
`
`15. This motion was filed no sooner than 21 days after service of the
`
`Petition in this proceeding, which occurred on May 4, 2015.
`
`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION OF
`ROSE CORDER PREY IN THIS PROCEEDING
`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). Petitioners’ lead counsel, David J. Cooperberg, is a registered
`
`practitioner. Based on the facts contained herein, as supported by Ms. Prey’s
`
`affidavit (Ex. 1044), good cause exists to admit Ms. Prey pro hac vice in this
`
`proceeding.
`
`
`
`5
`
`
`
`Petitioners’ Motion for Pro Hac Vice Admission of Rose Cordero Prey
`Case No. IPR2015-01087
`
`
`
`
`As supported by her affidavit, Ms. Prey is an experienced litigating attorney
`
`with over ten (10) years of patent litigation experience. Ms. Prey has several years
`
`of experience litigating patents directed at semiconductor fabrication technologies,
`
`the field to which the ’221 patent is directed. Ms. Prey also has a deep and
`
`established familiarity with the subject matter at issue in this proceeding as she is
`
`Petitioners’ trial counsel in the co-pending district court litigation against the
`
`Patent Owner, MIT v. Micron Tech., Inc. et al., Civil Action No. 1:15-cv-10374,
`
`filed on February 12, 2015, in the U.S. District Court for the District of
`
`Massachusetts. This proceeding involves the same patent—U.S. Patent No.
`
`6,057,221—that is at issue in that co-pending litigation.
`
`As trial counsel for Petitioners, Ms. Prey has been actively involved in all
`
`aspects of the district court litigation, including Petitioners’ on-going factual
`
`investigation and development of invalidity positions regarding the claims of
`
`the ’221 patent being challenged in this proceeding. Ms. Prey gained further
`
`understanding of the subject matter at issue in this proceeding as early as 2013
`
`while representing Elpida (now Petitioner Micron Memory Japan) in licensing
`
`negotiations with Patent Owner MIT relating to the ’221 patent.
`
`In view of Ms. Prey’s extensive knowledge of the precise subject matter at
`
`issue in this proceeding, and in view of the interrelatedness of this proceeding and
`
`the co-pending district court litigation, Petitioners have a substantial need for Ms.
`6
`
`
`
`
`
`Petitioners’ Motion for Pro Hac Vice Admission of Rose Cordero Prey
`Case No. IPR2015-01087
`
`Prey’s pro hac vice admission and her involvement in depositions and the
`
`
`
`continued prosecution of this proceeding. Though Ms. Prey has been involved in
`
`this IPR in an advisory capacity, and has stayed up-to-date regarding the
`
`documents filed and actions taken to date (Ex. 1044, ¶ 10), there is a need for Ms.
`
`Prey to be added as backup counsel to this IPR. Admission of Ms. Prey pro hac
`
`vice will enable Petitioners to avoid unnecessary expense and duplication of work
`
`between this proceeding and their district court litigation. See 77 Fed. Reg. 157
`
`(Aug. 14, 2012), at 48661 (Office’s comment on final rule discussing concerns
`
`about efficiency and costs where an entity has already engaged counsel for parallel
`
`district court litigation). Admission of Ms. Prey will also ease the anticipated
`
`burden on Petitioners’ existing lead counsel during the discovery and oral hearing
`
`phases of this matter.
`
`V. CONCLUSION
`For the foregoing reasons as well as the reasons contained in the attached
`
`affidavit, Petitioners respectfully request the pro hac vice admission of Rose
`
`Cordero Prey to serve as back-up counsel for Petitioners in this proceeding.
`
`The Patent Trial and Appeal Board is hereby authorized to charge any fees
`
`associated with this filing to Deposit Account 11-0600 (Kenyon & Kenyon LLP).
`
`
`
`7
`
`
`
`Petitioners’ Motion for Pro Hac Vice Admission of Rose Cordero Prey
`Case No. IPR2015-01087
`
`
`
`
`Respectfully submitted,
`/s/ David J. Cooperberg _
`David J. Cooperberg
`Reg. No. 63,250
`Lead Counsel for Petitioners
`
`
`David J. Cooperberg
`Thomas Makin
`Rose Cordero Prey
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`Telephone: 212.425.7200
`Facsimile: 212.425.5288
`
`
`
`8
`
`
`
`
`
`
`
`Certificate of Service
`
`The undersigned hereby confirms that the foregoing MOTION FOR PRO
`
`HAC VICE ADMISSION OF ROSE CORDERO PREY, AFFIDAVIT OF ROSE
`
`CORDERO PREY IN SUPPORT OF MOTION FOR PRO HAC VICE
`
`ADMISSION, and Updated Exhibit List, was served on June 9, 2015, on Counsel
`
`for Patent Owner via e-mail as follows:
`
`Steven J. Pollinger
`MCKOOL SMITH, P.C.
`300 W. Sixth Street, Suite 1700
`Austin, Texas 78701
`T: (512) 692-8702
`F: (512) 692-8744
`spollinger@mckoolsmith.com
`
`Ramzi R. Khazen
`MCKOOL SMITH, P.C.
`300 W. Sixth Street, Suite 1700
`Austin, Texas 78701
`T: (512) 692-8743
`F: (512) 692-8744
`rkhazen@mckoolsmith.com
`
`01311-00004_IPR221@mckoolsmith.com
`
`/s/ David J. Cooperberg .
`David J. Cooperberg
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004-1007
`Tel: 212-425-7200
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