`Filed By: Donald R. Steinberg, Reg. No. 37,241
`David L. Cavanaugh, Reg. No. 36,476
`Michael H. Smith, Reg. No. 71,190
`60 State Street,
`Boston, Massachusetts 02109
`Tel: (617) 526-6000
`Email: Don.Steinberg@wilmerhale.com
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` David.Cavanaugh@wilmerhale.com
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` MichaelH.Smith@wilmerhale.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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`
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`ASML NETHERLANDS B.V., EXCELITAS TECHNOLOGIES CORP., AND QIOPTIQ
`PHOTONICS GMBH & CO. KG,
`Petitioners
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`v.
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`ENERGETIQ TECHNOLOGY, INC.,
`Patent Owner.
`
`Case IPR2015-01377
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`
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`PETITIONERS’ MOTION FOR ADMISSION PRO HAC VICE OF
`JAMES M. DOWD
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`
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`IPR2015-01377
`Petitioners’ Motion for Admission Pro Hac Vice Of James M. Dowd
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`Statement of Precise Relief Requested
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`Pursuant to 37 C.F.R. § 42.10(c) and Paper No. 6 authorizing the parties to
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`I.
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`file motions for pro hac vice admission under 37 C.F.R. § 42.10(c), Petitioners
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`ASML Netherlands B.V., Excelitas Technologies Corp., and Qioptiq Photonics
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`GmbH & Co., KG (“Petitioners”) request that the Patent Trial and Appeal Board
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`(the “Board”) admit James M. Dowd pro hac vice in this proceeding, IPR2015-
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`01377. Patent Owner Energetiq Technology, Inc. (“Patent Owner”) does not
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`oppose this motion.
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`II.
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`Statement of Facts Showing 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. Section 42.10(c) indicates that “where lead counsel is a
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`registered practitioner, a motion to appear pro hac vice by counsel who is not a
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`registered practitioner may be granted upon a showing that counsel is an
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`experienced litigating attorney and has an established familiarity with the subject
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`matter at issue in the proceeding.” The facts here establish good cause for the
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`Board to recognize James M. Dowd pro hac vice in this proceeding.
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`1
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`IPR2015-01377
`Petitioners’ Motion for Admission Pro Hac Vice Of James M. Dowd
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`1.
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`Lead counsel, Donald R. Steinberg, is a registered practitioner.
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`Backup counsel, David L. Cavanaugh and Michael H. Smith, are also registered
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`practitioners.
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`2. Counsel, James M. Dowd, is an experienced litigator and has an
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`established familiarity with the subject matter at issue in the proceeding.
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`Accompanying this motion as Exhibit 1220 is the Declaration of James M. Dowd
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`in Support of this Motion for Admission Pro Hac Vice (“Dowd Decl.”). In his
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`declaration, Mr. Dowd asserts:
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`I am a member in good standing of the Virginia State Bar, the District
`of Columbia Bar, and the State Bar of California, and am admitted to
`practice before the Supreme Court of the United States, the U.S.
`Courts of Appeals for the Federal Circuit, the Ninth Circuit, and the
`Fourth Circuit, and U.S. District Courts for the Central District of
`California, the Northern District of California, the Southern District of
`California, the Eastern District of California, and the Eastern District
`of Virginia.
`Dowd Decl. ¶ 2 (Ex. 1220). Mr. Dowd also states that he has a long-standing
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`relationship with real-party-in-interest ASML Netherlands B.V. (“ASML”) and has
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`represented ASML in numerous patent cases:
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`Beginning in 2002 and continuing until the present, I have represented
`ASML Netherlands B.V., a real-party-in-interest in this proceeding, in
`several patent and patent-related litigations and arbitrations. Patent
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`2
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`IPR2015-01377
`Petitioners’ Motion for Admission Pro Hac Vice Of James M. Dowd
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`and patent-related cases in which I represent or have represented
`include: Certain
`ASML Netherlands B.V. or
`its affiliates
`Microlithographic Machines and Components Thereof, Inv. No. 337-
`TA-468 (USITC 2003), Nikon Corp. v. ASML Netherlands B.V., Civ.
`No.: 3:02-cv-05081 (N.D. Cal. 2004), and ASML Netherlands B.V. v.
`Nikon Corp., Civ. No.: 3:02-cv-05601 (N.D. Cal. 2004).
`Dowd Decl. ¶ 11 (Ex. 1220). Mr. Dowd also asserts that he has been a part of
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`numerous patent litigations that have concerned PTO rules and regulations:
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`Over the course of my career, I have been counsel in dozens of patent
`litigations. Several of these cases have concerned Patent Office rules
`and regulations. For example, I have litigated a number of cases
`concerning the duty of candor to the Patent Office embodied in 37
`C.F.R. § 1.56. Cases that I have been involved in which implicate this
`rule include Energetiq Tech., Inc. v. ASML Netherlands B.V. et al.,
`Civ. No.: 1:15-cv-10240-LTS (D. Mass.) (the “Energetiq litigation”,
`which is a related matter to this proceeding); Cal. Inst. Of Tech. v.
`Hughes Communs., Inc., Civ. No: 2:13-cv-07245 (C.D. Cal. 2014);
`ASML Netherlands B.V. v. Nikon Corp., Civ. No.: 3:02-cv-05601
`(N.D. Cal. 2004); SanDisk Corp. v. STMicroelectronics, Inc., Civ.
`No.: 5:06-cv-00194 (N.D. Cal. 2006); In the Matter of Certain NAND
`Flash Memory Circuits and Products Containing Same, Inv. No. 337-
`TA-526 (USITC 2006); and In the Matter of Certain NOR and NAND
`Flash Memory Devices and Products Containing Same, Inv. No. 337-
`TA-560 (USITC 2006). In addition, the Energetiq litigation also
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`IPR2015-01377
`Petitioners’ Motion for Admission Pro Hac Vice Of James M. Dowd
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`concerned Patent Office rules and regulations embodied in 37 C.F.R.
`§ 1.27 regarding the definition and treatment of small entities.
`Dowd Decl. ¶ 4 (Ex. 1220). Furthermore, Mr. Dowd also demonstrates that he has
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`a detailed working knowledge of the relevant subject matter:
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`I am familiar with the subject matter at issue in this proceeding. I
`have reviewed U.S. Patent No. 7,435,982 (the “’982 patent”), which is
`being challenged in this proceeding, and I have reviewed the relevant
`prior art. Beginning in 2015 and continuing until the present, I have
`represented Petitioners ASML Netherlands B.V., Excelitas
`Technologies Corp., and Qioptiq Photonics GmbH & Co. KG in the
`Energetiq litigation, which is a related matter to this proceeding. The
`validity of the ’982 patent over the prior art raised in this proceeding
`is a contested issue in the Energetiq litigation. The validity of other
`patents in the same patent family as the ’982 patent over some of the
`prior art raised in this proceeding are also contested issues in the
`Energetiq litigation.
`Dowd Decl. ¶ 12 (Ex. 1220).
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`3.
`In his declaration, Mr. Dowd also attests to each of the listed items
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`required by the Order – Authorizing Motion for Pro Hac Vice Admission – 37
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`C.F.R. § 42.10 in IPR2013-00639. See Dowd Decl. ¶¶ 2-12 (Ex. 1220). Mr.
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`Dowd attests that he has read and will comply with the Office Patent Trial Practice
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`Guide and the Board’s Rules of Practice for Trials set forth in 35 C.F.R. § 42. Mr.
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`Dowd further attests that he agrees to be subject to the United States Patent and
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`4
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`IPR2015-01377
`Petitioners’ Motion for Admission Pro Hac Vice Of James M. Dowd
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`Trademark Office’s Rules of Professional Conduct as set forth in 37 C.F.R. §§
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`11.101 et seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a). See id. ¶ 9.
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`III. Conclusion
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`For the foregoing reasons, Petitioners respectfully request that the Board
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`admit James M. Dowd pro hac vice in this proceeding.
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`Respectfully Submitted,
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`___/Michael Smith/____
`Michael H. Smith
`Registration No. 71,190
`Second Backup Counsel for Petitioners
`Wilmer Cutler Pickering
` Hale & Dorr LLP
`Tel: 202-663-6055
`Fax: 202-663-6363
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`Date: March 2, 2016
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`IPR2015-01377
`Petitioners’ Motion for Admission Pro Hac Vice Of James M. Dowd
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`CERTIFICATE OF SERVICE
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`I hereby certify that on March 2, 2016, I caused a true and correct copy of the
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`following materials:
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` Petitioners’ Motion For Admission Pro Hac Vice Of James M. Dowd
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` Petitioners’ Updated List of Exhibits
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` Exhibit 1220: Declaration of James M. Dowd in Support of Motion
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`For Admission Pro Hac Vice
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`to be served by electronic mail to the following address:
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`PTABMattersBoston@proskauer.com.
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`Respectfully Submitted,
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`___/Michael Smith/______
`Michael H. Smith
`Registration No. 71,190
`Wilmer Cutler Pickering
`
`Hale & Dorr LLP
`Tel: 202-663-6055
`Fax: 202-663-6363
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`IPR2015-01377
`U.S. Patent No. 7,435,982
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`PETITIONERS’ UPDATED LIST OF EXHIBITS FOR
`IPR2015-01377
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`Exhibit
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`Description
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`1201
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`1202
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`1203
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`1204
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`1205
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`1206
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`1207
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`U.S. Patent No. 7,435,982
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`Chart of Patent Family Members
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`Declaration of J. Gary Eden, Ph.D. Regarding U.S. Patent No.
`7,435,982, Claims 23 and 60 (“Eden Decl.”)
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`French Patent Publication No. FR2554302A1, published May 3,
`1985 with English Translation and affidavit of translation (“Gärtner”)
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`Bussiahn, “Experimental and theoretical investigations of a low-
`pressure He-Xe discharge for lighting purpose,” J. Appl. Phys. 95(9),
`pp. 4627-34 (May 1, 2004) (“Bussiahn”)
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`D. Keefer, “Laser-Sustained Plasmas,” Chapter 4, in Radziemski et
`al., Laser-Induced Plasmas and Applications, pp. 169-206, CRC
`Press (1989) (“Keefer”)
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`Notice of Allowability U.S. App. No. 11/395,523, dated Aug. 28,
`2008
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`1208
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`Energetiq EQ-10M Soft X-Ray & EUV Source Data Sheet (2005)
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`1209
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`William T. Silfvast, Laser Fundamentals, 2d ed., pp. 1-6, 199-222,
`565-68 (2004) (“Silfvast”)
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`1210
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` U.S. Patent No. 4,780,608 (“Cross”)
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`1211
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`Second Declaration of Donald K. Smith, Ph.D. in Support of
`Energetiq’s Reply Brief In Support of Its Motion For Preliminary
`Injunction, Energetiq Technology, Inc. v. ASML Netherlands B.V., et
`al., Civil Action No. 1:15-cv-10240-LTS (D. Mass.), Dated Mar. 17,
`2015 (“Second Smith Declaration”).
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`i
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`IPR2015-01377
`U.S. Patent No. 7,435,982
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`Exhibit
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`1212
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`1213
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`1214
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`Description
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`Energetiq Technology, Inc. v. ASML Netherlands B.V. et al, Civil
`Action No. 1:15-cv-10240-LTS (D. Mass.), Mar. 17, 2015 Reply
`Brief (Dkt. 66) (“PI Reply Brief”).
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`Declaration of Donald K. Smith, Ph.D. In Support of Energetiq’s
`Motion for A Preliminary Injunction, Energetiq Technology, Inc. v.
`ASML Netherlands B.V., et al., Civil Action No. 1:15-cv-10240-LTS
`(D. Mass.), Dated Feb. 6, 2015 (“First Smith Declaration”).
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`Gabriel Laufer, Introduction to Optics and Lasers in Engineering, pp.
`449-454 (1996).
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`1215
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`U.S. Patent No. 4,901,330 (“Wolfram”)
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`1216
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`I.M. Beterov et al., Resonance radiation plasma (photoresonance
`plasma), Sov. Phys. Usp. 31 (6), pp. 535-54 (1988) (“Beterov”)
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`1217
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`Kelin Kuhn, Laser Engineering, Chapter 12, pp. 384-440 (1998)
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`1218
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`1219
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`1220
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`Koch et al., “Sodium Plasmas Produced by Milliwatt cw Laser
`Irradiation,” Journal of the Optical Society of America, vol. 70, No.
`6, p. 627 (1980).
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`Declaration of Kevin S. Prussia in Support of Motion for Admission
`Pro Hac Vice (“Prussia Decl.”)
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`Declaration of James M. Dowd in Support of Motion for Admission
`Pro Hac Vice (“Dowd Decl.”)
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`ii