Filed on behalf of: Apple Inc.
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`Entered: May 12, 2016
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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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`APPLE INC. and MOTOROLA MOBILITY LLC,
`Petitioner
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`v.
`
`GLOBAL TOUCH SOLUTIONS, LLC,
`Patent Owner
`_______________________
`
`Case IPR2015-01175
`U.S. Patent No. 8,288,952 B2
`_______________________
`
`Before JUSTIN BUSCH, LYNN E. PETTIGREW, and
`BETH Z. SHAW, Administrative Patent Judges.
`
`
`PETITIONER APPLE INC.’S UNOPPOSED MOTION FOR
`PRO HAC VICE ADMISSION OF JAMES R. BENDER
`UNDER 37 C.F.R. § 42.10(c)
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`Entered: May 12, 2016
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
`
`APPLE INC. and MOTOROLA MOBILITY LLC,
`Petitioner
`
`v.
`
`GLOBAL TOUCH SOLUTIONS, LLC,
`Patent Owner
`_______________________
`
`Case IPR2015-01175
`U.S. Patent No. 8,288,952 B2
`_______________________
`
`Before JUSTIN BUSCH, LYNN E. PETTIGREW, and
`BETH Z. SHAW, Administrative Patent Judges.
`
`
`PETITIONER APPLE INC.’S UNOPPOSED MOTION FOR
`PRO HAC VICE ADMISSION OF JAMES R. BENDER
`UNDER 37 C.F.R. § 42.10(c)
`
`
`
`
`
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`Case IPR2015-01175
`U.S. Patent No. 8,288,952
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`I.
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`RELIEF REQUESTED
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`Under 37 C.F.R. § 42.10(c) and the Notice of Filing Date Accorded to
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`Petition and Time for Filing Patent Owner Preliminary Response (Paper No. 4),
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`Petitioner Apple Inc. (“Petitioner”) respectfully requests the pro hac vice
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`admission of attorney James R. Bender, Esq. in this proceeding. Petitioner has
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`conferred with counsel for Global Touch Solutions, LLC (“Patent Owner”), and
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`Patent Owner does not oppose this motion.
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`II. LEGAL STANDARD
`Under 37 C.F.R. § 42.10(c):
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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 Accorded to Petition and Time for Filing Patent
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`Owner Preliminary Response (Paper No. 4) further instructs:
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`The parties are advised that under 37 C.F.R. § 42.10(c), recognition of
`counsel pro hac vice requires a showing of good cause. The parties
`are authorized to file motions for pro hac vice admission under 37
`C.F.R. § 42.10(c). Such motions shall be filed in accordance with the
`
`1
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`
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`Case IPR2015-01175
`U.S. Patent No. 8,288,952
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`
`“Order -- Authorizing Motion for Pro Hac Vice Admission” in Case
`IPR2013-00639, Paper 7, a copy of which is available on the Board
`Web site under “Representative Orders, Decisions, and Notices.”
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`(Id. at 2.) The above referenced “Order - - Authorizing Motion for Pro Hac Vice
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`Admission” further provides:
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`A motion for pro hac vice admission must:
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`a.
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`Contain a statement of facts showing there is good cause for the Board
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`to recognize counsel pro hac vice during the proceeding.
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`b.
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`Be accompanied by an affidavit or declaration of the individual
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`seeking to appear attesting to the following:
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`i. Membership in good standing of the Bar of at least one State or
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`the District of Columbia;
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`ii.
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`No suspensions or disbarments from practice before any court
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`or administrative body;
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`iii.
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`No application for admission to practice before any court or
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`administrative body ever denied;
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`iv.
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`No sanctions or contempt citations imposed by any court or
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`administrative body;
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`v.
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`The individual seeking to appear has read and will comply with
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`the Office Patent Trial Practice Guide and Board’s Rules of
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`2
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`
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`Case IPR2015-01175
`U.S. Patent No. 8,288,952
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`Practice for Trials set forth in part 42 of 37 C.F.R.;
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`vi.
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`The individual 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.
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`and disciplinary jurisdiction under 37 C.F.R. § 11.19(a);
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`vii.
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`All other proceedings before the Office for which the individual
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`has applied to appear pro hac vice in the last (3) years; and
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`viii.
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`Familiarity with the subject matter at issue in the proceeding.
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`(IPR2013-00639, Paper No. 7 at 3.) As set forth below, and in the accompanying
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`Declaration of James R. Bender (Ex. 1031, “Bender Decl.”), each of these
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`requirements is satisfied here.
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`III. STATEMENT OF FACTS SHOWING GOOD CAUSE FOR THE
`BOARD TO RECOGNIZE JAMES R. BENDER PRO HAC VICE IN
`THIS PROCEEDING
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`Mr. Bender is a member in good standing of the District of Columbia Bar
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`(Bar No. 1004382) and admitted to practice before the U.S. District Court for the
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`Eastern District of Texas and the U.S. Court of Appeals for the Federal Circuit.
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`(Bender Decl. ¶ 2.) Mr. Bender has never been suspended or disbarred from
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`practice before any court or administrative body. (Id. ¶ 3.) No application of Mr.
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`Bender for admission to practice before any court or administrative body has ever
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`been denied. (Id.) Nor has any court or administrative body imposed sanctions or
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`contempt citations against Mr. Bender. (Id.) Mr. Bender has read, fully
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`3
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`Case IPR2015-01175
`U.S. Patent No. 8,288,952
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`understands, and will comply with the Office Patent Trial Practice Guide and the
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`Board’s Rules of Practice for Trials set forth in part 42 of the C.F.R. (Id. ¶ 4.) Mr.
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`Bender acknowledges and agrees 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 disciplinary
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`jurisdiction under 37 C.F.R. § 11.19(a). (Id.)
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`Petitioner’s lead counsel in this proceeding, Robert Steinberg, is a registered
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`practitioner (Reg. No. 33,144). Moreover, as set forth below (and in his
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`accompanying declaration), Mr. Bender is both an experienced and technically-
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`trained litigation attorney with an established familiarity with the subject matter at
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`issue in this proceeding.
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`Mr. Bender received a Bachelor of Science degree in Electrical Engineering
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`and Computer Science from the University of California, Berkeley in 2002. (Id. ¶
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`5.) Mr. Bender earned a law degree from Columbia University School of Law in
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`2010, where he was a James Kent Scholar. (Id.) Mr. Bender joined Latham &
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`Watkins LLP (“Latham”) as an associate in 2010. (Id.) Mr. Bender worked as an
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`associate at Latham until 2013, when he left Latham to work as a judicial law clerk
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`for the Honorable Todd M. Hughes of the U.S. Court of Appeals for the Federal
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`Circuit. (Id.) Mr. Bender completed his clerkship in 2014 and rejoined Latham
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`thereafter. (Id.)
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`Mr. Bender is currently a member of Latham’s intellectual property group,
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`4
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`
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`Case IPR2015-01175
`U.S. Patent No. 8,288,952
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`with a focus on patent litigation. (Id. ¶ 6.) Mr. Bender has practiced in this group
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`for approximately five years. (Id.)
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`Mr. Bender also has an established familiarity with the subject matter at
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`issue in this proceeding. Mr. Bender has been actively involved in the related
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`district court litigation between the Patent Owner and Petitioner, Global Touch
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`Solutions, LLC v. Apple Inc.., No. 3:15-cv-2748 (N.D. Cal.) since August 2014.
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`(Id. ¶ 7.) U.S. Patent No. 8,288,952 (“’952 Patent”), which is at issue in this
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`proceeding, was one of the patents asserted by the Patent Owner in the district
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`court litigation. (Id. ¶ 8.) Mr. Bender has been actively involved in all aspects of
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`the litigation, including Petitioner’s factual investigation and development of its
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`invalidity and claim construction positions regarding the claims of the ’952 Patent
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`at issue here. (Id.)
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`Mr. Bender has been actively involved in analyzing and assisting with the
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`Petition for Inter Partes Review submitted in this proceeding. (Id. ¶ 9.) He is
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`concurrently applying to appear pro hac vice in the following related proceedings
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`before the USPTO: Nos. IPR2015-01171, IPR2015-01172, IPR2015-01173, and
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`IPR2015-01174. (Id. ¶ 10.) Mr. Bender has appeared pro hac vice in the
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`following proceeding before the USPTO: NVIDIA Corp. v. Samsung Elecs. Co.,
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`Ltd., No. IPR2015-01324. (Id.)
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`In view of Mr. Bender’s extensive knowledge of the subject matter at issue
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`5
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`Case IPR2015-01175
`U.S. Patent No. 8,288,952
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`in this proceeding, and in view of the interrelatedness of this proceeding and the
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`related district court litigation, Petitioner has a substantial need for Mr. Bender’s
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`pro hac vice admission and his involvement in the continued prosecution of this
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`proceeding. In addition, admission of Mr. Bender pro hac vice will enable
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`Petitioner to avoid unnecessary expense and duplication of work between this
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`proceeding and the district court litigation. See 77 Fed. Reg. 48,612, 48,661 (Aug.
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`14, 2012) (Office’s comment on final rule discussing concerns about efficiency
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`and costs where an entity has already engaged counsel for parallel district court
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`litigation).
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`IV. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that Mr. Bender
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`be admitted pro hac vice in this proceeding.
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`
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`Respectfully submitted,
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`By: /Robert Steinberg/
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`
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`Robert Steinberg (Reg. No. 33144)
`Latham & Watkins LLP
`355 South Grand Avenue
`Los Angeles, CA 90071-1560
`213.485.1234; 213.891.8763 (Fax)
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`Counsel for Petitioner Apple Inc.
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`Dated: May 12, 2016
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`6
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`Case IPR2015-01175
`U.S. Patent No. 8,288,952
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on this 12th day of
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`May, 2016, a true and correct copy of the foregoing Petitioner Apple Inc.’s
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`Unopposed Motion For Pro Hac Vice Admission Of James R. Bender Under
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`37 C.F.R. § 42.10(c) was served by electronic mail to gts@sughrue.com upon the
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`following counsel of record for Patent Owner Global Touch Solutions, LLC:
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`Lead Counsel
`William H. Mandir (Reg. No. 32,156)
`wmandir@sughrue.com
`SUGHRUE MION PLLC
`2100 Pennsylvania Ave NW
`Suite 800
`Washington, DC 20037
`Tel: (202) 663-7458
`Fax: (202) 293-7860
`Backup Counsel
`Brian K. Shelton (Reg. No. 50,245)
`bshelton@sughrue.com
`SUGHRUE MION PLLC
`2100 Pennsylvania Ave NW
`Suite 800
`Washington, DC 20037
`Tel: (202) 663-7957
`Fax: (202) 293-7860
`
`Backup Counsel
`Peter S. Park (Reg. No. 60,719)
`pspark@sughrue.com
`SUGHRUE MION PLLC
`2100 Pennsylvania Ave NW
`Suite 800
`Washington, DC 20037
`Tel: (202) 857-3358
`Fax: (202) 293-7860
`Backup Counsel
`Fadi N. Kiblawi (Reg. No. 61,973)
`fkiblawi@sughrue.com
`SUGHRUE MION PLLC
`2100 Pennsylvania Ave NW
`Suite 800
`Washington, DC 20037
`Tel: (202) 663-7386
`Fax: (202) 293-7860
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`By: /Robert Steinberg/
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`
`
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`Robert Steinberg (Reg. No. 33144)
`
`Counsel for Petitioner Apple Inc.
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