By: Vivek Ganti (vg@hkw-law.com)
`Reg. No. 71368
`Gregory Ourada (go@hkw-law.com)
`Reg. No. 55516
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`AMERICAN MEGATRENDS, INC.,
`MICRO-STAR INTERNATIONAL CO., LTD,
`MSI COMPUTER CORP.,
`GIGA-BYTE TECHNOLOGY CO., LTD., AND
`G.B.T., INC.
`Petitioners
`
`v.
`
`KINGLITE HOLDINGS, LLC
`
`Patent Owner
`
`_________________
`
`Case IPR2015-01191
`
`U.S. Patent 6,892,304
`
`_________________
`
`PETITIONERS’ MOTION TO EXCLUDE
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`
`
`
`Reg. No. 71368
`Gregory Ourada (go@hkw-law.com)
`Reg. No. 55516
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`AMERICAN MEGATRENDS, INC.,
`MICRO-STAR INTERNATIONAL CO., LTD,
`MSI COMPUTER CORP.,
`GIGA-BYTE TECHNOLOGY CO., LTD., AND
`G.B.T., INC.
`Petitioners
`
`v.
`
`KINGLITE HOLDINGS, LLC
`
`Patent Owner
`
`_________________
`
`Case IPR2015-01191
`
`U.S. Patent 6,892,304
`
`_________________
`
`PETITIONERS’ MOTION TO EXCLUDE
`
`
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`
`
`
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`
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`I.
`
`Introduction
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`Pursuant to 37 C.F.R. § 42.64, Petitioners respectfully move to exclude Ex.
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`2008, which is the deposition transcript of Dr. Bottomley and further move to
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`exclude Ex. 2006, which is the deposition transcript of Mr. Sartori.
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`II. Exclusion of Ex. 2008
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`Petitioners timely objected to the deposition of Dr. Bottomley, as it was
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`taken by an attorney who was not admitted into this case at the time of the
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`deposition. (Paper 22). Petitioners also made the same objection at the outset of
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`the deposition. (Ex. 2008, 2:6-12). Patent Owner relied on the deposition
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`transcript in its Opposition Brief (paper 21, pp. 2, 6, 9, 11, 17, 18, 20, 22, 24, and
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`25). Petitioners move to exclude Ex. 2008 because 1) the deposition constitutes an
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`unauthorized practice of law; 2) applying analogous case law, Ex. 2008 should be
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`excluded; 3) Ex. 2008 should be excluded as a matter of policy; and 4) Patent
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`Owner’s conduct was systematic.
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`A. The deposition leading to Ex. 2008 constitutes an unauthorized
`practice of law
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`Inter partes review is a technically complex procedure, which is why the
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`Board has discretion to grant pro hac vice admission. Trial Practice Guide, Federal
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`Register, Vol. 77, No. 157 at 48758 (Tuesday, August 14, 2012). Typically, when
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`granting a pro hac vice motion, the Board requires compliance with the Office
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`Patent Trial Practice Guide and the Board’s Rules of Practice for Trials, as set forth
`1
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`
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`in Title 37, Part 42 of the Code of Federal Regulations and the USPTO Rules of
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`Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq. (See, e.g., paper 22).
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`
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`In this case, Mr. Summerfield was the attorney who took the deposition in
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`question (Ex. 2008). Mr. Summerfield was at all relevant times aware of the
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`obligation to secure timely pro hac admission, as he was authorized to file a pro
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`hac vice motion on May 28, 2015 (Notice of Filing Date Accorded, paper 8 at p.3),
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`and was designated as back-up counsel on June 2, 2015 (Patent Owner’s
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`Mandatory Notice, paper 10). Despite the Board’s notice advising him of the need
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`in advance to obtain pro hac admission, he only moved for pro hac vice admission
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`on February 7, 2016, one day before the deposition. (Paper 20). The Board
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`eventually granted Mr. Summerfield’s motion on March 4, 2016, after Mr.
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`Summerfield had completed the deposition in question. (Paper 23). Consequently,
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`Mr. Summerfield was not admitted into this case at the time of deposition. The
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`fact that he cross-examined a witness without the prior authorization of the Board
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`exemplifies the unauthorized practice of law. See, e.g., Hall v. Southwest Airlines
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`Co., 282 F.R.D 419, 420 n.2 (N.D. Tex. 2012) (stating “Accordingly, the Court
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`holds that an attorney must be admitted to practice in this district and appear of
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`record in order to take depositions in an action pending in this Court”).
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`B. Applying the case law, Ex. 2008 should be excluded
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`2
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`
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`Petitioners are unaware of an IPR case where a deposition was taken by an
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`attorney who was not first admitted to appear in the case. However, courts
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`requiring pro hac admission have prohibited unauthorized attorneys from taking
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`depositions. For example, the Northern District of Texas declined to compel
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`testimony when the court had yet to approve the deposing attorney’s pro hac vice
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`motion. Hall, 282 F.R.D 419, 420. In Hall, the court noted that the deposing
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`attorney may be permitted to take the deposition after the court grants his pro hac
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`vice motion. Id. This is telling because it demonstrates that granting admission
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`only authorizes the practice of law going forward, but does not retroactively cure
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`the prior, unauthorized practice.
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`In another case, an attorney yet-to-be admitted pro hac vice was not
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`permitted to submit motion papers or pleadings to the court or even appear on
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`behalf of entity client. Erbacci, Cerone, and Moriarty Ltd v. The United States of
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`America, 923 F. Supp. 482, 485 (S.D.N.Y. 1996); Mathews v. Cordeiro, 144
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`F.Supp.2d 37, 38 (D. Mass. 2001). When an unauthorized practitioner “attempts to
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`do something not permitted,” the product of such actions have been stricken. See
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`Mathews, 144 F.Supp.2d at 40.
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`Here, Mr. Summerfield appeared on behalf of the Patent Owner and cross-
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`examined a witness before his pro hac vice motion was granted. Applying the
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`3
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`
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`foregoing authorities, the deposition should be treated as a nullity, and excluded
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`from the record.
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`C. The Board should also exclude Ex. 2008 as a matter of policy.
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`
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`Petitioners expect that in response to the instant motion, Patent Owner will
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`protest that this is a “no harm, no foul” situation, given that Mr. Summerfield is not
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`alleged to have violated any rules of conduct or ethics during the deposition.
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`Notwithstanding any cries of “harmless error,” relaxing the standard requiring
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`strict adherence to the rules relating to pro hac admission is unwise. It will
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`undoubtedly signal to future attorney participants in proceedings such as these who
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`are not regular practitioners before the Board that pro hac vice admission is not
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`very important, and that counsel may disregard obtaining prior admission to
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`practice (opting instead to file their applications immediately prior to active
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`participation in events such as deposition or oral argument).
`
`
`
`Allowing non-registered attorneys to participate in IPR before they are
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`authorized would be inconsistent with the Board’s effort to strictly regulate pro
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`hac vice admission. In these efforts, the Board has denied a pro hac vice motions
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`where the movants have not established familiarity with the subject matter. QSC
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`Audio Products, Inc. v. Crest Audio, Inc.IPR2014-00127, Paper 32 (December 23,
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`2014); The Jewelry Channel Inc., USA v. America’s Collectibles Network, Inc.,
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`CBM2014-00119, paper7, p.3 (May 23, 2014). The Board has also controlled the
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`4
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`
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`number of attorneys who can be admitted pro hac vice movants within the same
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`case. Apotex v. Alcon Pharmaceuticals, Ltd., IPR2013-00012, paper 27, p.2
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`(January 18, 2013) (“It is difficult to see how Apotex could have the requisite need
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`for the pro hac vice admission of five attorneys and there is no explanation
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`provided in its Motions”). These cases show a concern to limit which individuals
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`may practice before the Board.
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`Recognizing that pro hac admission is an important mechanism to preserve
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`the efficacy of practice in front of the Board, and to ensure that all practitioners
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`have properly submitted themselves to the Board’s vetting process before
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`participating in the proceeding, Petitioners urge the Board to enforce its rules and
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`hold practitioners to the standard of practice which the rules governing these
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`procedures require. Patent Owner’s counsel should not be able to flout a rule as
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`basic as obtaining admission to practice before starting to participate in substantive
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`proceedings. Patent Owner’s counsel had ample time (seven months) in which to
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`secure a timely pro hac admission prior to the deposition, and chose not to file the
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`application timely.
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`The Board should use this case as an opportunity to discourage unauthorized
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`attorneys from taking depositions or otherwise attempting to participate in
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`proceedings which are material to an IPR. An IPR deposition is more than a mere
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`discovery tool, it is a cross-examination of a witness, whose testimony should be
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`
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`5
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`
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`treated as part of a trial record. Trial Practice Guide at 48772 (stating “The
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`examination and cross-examination of a witness proceed as they would in a trial
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`under the Federal Rules of Evidence . . .”). Would-be practitioners who are in
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`need of pro hac admission ought not to be encouraged to apply for admission only
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`days before they appear to take depositions or argue the case at oral argument.1 If
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`a practitioner knows he or she is not permanently admitted to practice before the
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`Board, then it is incumbent upon him or her to secure admission pro hac in a
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`timely manner. As that was not done in the instance case, the Board should grant
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`this motion and exclude reliance upon the deposition which was taken in violation
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`of the rules.
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`D. Patent Owner’s systematic conduct warrants exclusion
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`Petitioners understand that excluding a deposition transcript on this basis is a
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`harsh remedy for Patent Owner’s unauthorized practice. However, this case is
`
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`1 “In making this [pro hac vice] determination, the Board will consider the impact
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`of granting pro hac vice admission on a party's ability to timely complete the trial
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`proceeding, if instituted, within the statutory twelve month window and to
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`effectively participate in the proceeding” available at
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`http://www.uspto.gov/patent/laws-and-regulations/america-invents-act-
`
`aia/message-chief-judge-james-donald-smith-board#heading-4 (emphasis added).
`
`
`
`6
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`
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`more than just an isolated instance. It is a systematic practice spanning 7 related
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`IPRs where Patent Owner ignored the timeliness of filing a pro hac vice motion in
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`spite of objects made by Petitioners. The following table shows a series of
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`depositions in related cases taken by Mr. Summerfield ranging from Jan. 5, 2016 to
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`Feb. 8, 2016.
`
`IPR Case. No.
`
`Date of Deposition
`
`Pro Hac Vice Motion
`
`IPR2015-01081
`
`IPR2015-01140
`
`IPR2015-01079
`
`IPR2015-01132
`
`IPR2015-01094
`
`IPR2015-01133
`
`IPR2015-01141
`
`IPR2015-01191
`
`
`
`1-5-2016: Deposition of Mr.
`Poludov (paper 26)
`1-5-2016: Deposition of Mr.
`Righi (paper 18)
`1-8-2016: Deposition of Dr.
`Kaliski (paper 23)
`1-14-2016: Deposition of Dr.
`Levitt (paper 20)
`1-14-2016: Deposition of Mr.
`Sartori (paper 26)
`1-18-2016: Deposition of Dr.
`Smith (paper 18)
`2-8-2016: Deposition of Mr.
`Perla (paper 21)
`2-8-2016: Deposition of Dr.
`Bottomley (paper 19)
`
`1-5-2016 (paper 25)
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`1-5-2016 (paper 17)
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`1-6-2016 (paper 24)
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`1-14-2016 (paper 22)
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`1-14-2016 (paper 27)
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`2-8-2016 (paper 19)
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`2-7-2016 (paper 22)
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`2-7-2016 (paper 20)
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`In each instance, Mr. Summerfield’s pro hac vice motion was filed no more than
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`two days before the deposition, if not the same day or even after the deposition.
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`
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`There is no reason why Patent Owner could have filed a timely pro hac vice
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`motion. At the least, Patent Owner was put on actual notice on Jan. 5, 2016 that
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`Petitioners will object to the deposition testimony on this basis. IPR2015-01081,
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`
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`7
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`
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`Ex. 1022 at 4:14-18. Still, Patent Owner waited over a month (Feb. 7) to file the
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`pro hac motion in this IPR, which was scheduled to take place the next day. The
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`Board should not excuse Patent Owner’s conduct or show any sense of leniency
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`given that no degree of notice by Petitioners would have affected Patent Owner’s
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`conduct.
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`III. Exclusion of Ex. 2006
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`Ex. 2006 is a deposition transcript of Mr. Sartori, which was taken in a
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`related case, IPR2015-01094. Patent Owner filed Mr. Sartori’s deposition
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`transcript in the related case as Ex. 2006. Petitioners moved to exclude Ex. 2006
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`in the related case because Ex. 2006 was also taken by Mr. Summerfield before his
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`pro hac vice motion was granted. IPR2015-01094, paper 39.
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`Here, Petitioners timely objected to Ex. 2006. (Paper 22). Patent Owner
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`relied on the deposition transcript in its Opposition Brief (paper 21, pp. 1-3).
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`Petitioners move to exclude Ex. 2006 on the same basis as Ex. 2008. See also
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`IPR2015-01094, paper 39.
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`IV. Conclusion
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`For these reasons, Petitioners move to exclude the entirety of Exs. 2008 and
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`2006.
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`
`
`Date: July 11, 2016
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`
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`
`
`HILL, KERTSCHER & WHARTON, LLP
`
`/Vivek Ganti/
`
`
` Vivek Ganti (Registration No. 71,368)
`8
`
`
`
`Lead Counsel for Petitioners
`3350 Riverwood Pkwy, Suite 800
`Atlanta, GA 30339
`(770) 953-0995
`
`
`
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`
`
`9
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`
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`CERTIFICATION OF SERVICE
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`
`
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`The undersigned hereby certifies that the foregoing paper was served via
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`electronic mail on July 11, 2016, as agreed to by the parties pursuant to 37 C.F.R. §
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`Respectfully submitted,
`
`HILL, KERTSCHER & WHARTON,
`LLP
`
`
`/Vivek Ganti/
`
`
`
`Vivek Ganti (Reg. No. 71,368)
`Lead Counsel for Petitioners
`
`3350 Riverwood Pkwy, Suite 800
`Atlanta, GA 30339
`(770) 953-0995
`
`42.105, in its entirety on the following:
`
`
`Christopher Frerking
`chris@ntknet.com
`174 Rumford Street
`Concord, New Hampshire 03301
`Telephone: (603) 706-3127
`
`George C. Summerfield
`summerfield@stadheimgrear.com
`STADHEIM & GREAR, LTD.
`400 N. Michigan Ave.,
`Suite 2200
`Chicago, Illinois 60611
`Telephone: (312) 755-4400
`
`
`
`Date: July 11, 2016
`
`
`
`10
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