`By: Heath Briggs, Reg. No. 54,919
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`GREENBERG TRAURIG, LLP
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`1200 Denver, CO 80202
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`BriggsH@gtlaw.com
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`(303) 572-6500
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`Samsung Electronics Co., Ltd.
`Petitioner,
`
`v.
`
`Mobile Telecommunications Technologies, LLC
`Patent Owner
`______________________
`
`
`
`Inter Partes Review No. IPR2015-01727
`Patent No. 5,659,891
`
`
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`SAMSUNG ELECTRONICS CO., LTD.’S MOTION FOR PRO HAC VICE
`ADMISSION OF RONALD J. PABIS 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
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`1
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`
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`I.
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`RELIEF REQUESTED
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`Pursuant to 37 C.F.R. § 42.10(c), and as authorized in the Board’s Notice of
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`Filing Date in this proceeding (Paper 4, p. 2) (“Notice”), Petitioner, Samsung
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`Electronics Co., Ltd. (“Samsung”) respectfully requests the pro hac vice admission
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`of Ronald Pabis in this proceeding.
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`II. GOVERNING LAW, RULES, AND PRECEDENT
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`Section 42.10(c) states as follows:
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`The Board may recognize counsel pro hac vice during a proceeding
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`upon a showing of good cause, subject to the condition that lead
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`counsel be a registered practitioner and to any other conditions as the
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`Board may impose. For example, where the lead counsel is a
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`registered practitioner, a motion to appear pro hac vice by counsel
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`who is not a registered practitioner may be granted upon showing that
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`counsel is an experienced litigating attorney and has an established
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`familiarity with the subject matter at issue in the proceeding.
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`The Notice requires that any motion for pro hac vice admission under 37
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`C.F.R. § 42.10(c) must be filed in accordance with the “Order – Authorizing
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`Motion for Pro Hac Vice Admission” entered in Case IPR2013-00010 (MPT)
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`(“Motorola Order”). See Notice, p. 2.
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`2
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`The Motorola Order requires that such motions (1) “[c]ontain a statement of
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`facts showing there is good cause for the Board to recognize counsel pro hac vice
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`during the proceeding”; (2) be filed no sooner than twenty-one (21) days after
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`service of the petition; and (3) “[b]e accompanied by an affidavit or declaration of
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`the individual 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 the
`District of Columbia;
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`ii.
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`No suspensions or disbarments from practice before any court or
`administrative body;
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`iii. No application for admission
`administrative body ever denied;
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`to practice before any court or
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`iv. No sanctions or contempt citations
`administrative body;
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`imposed by any court or
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`v.
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`vi.
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`The individual seeking to appear 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 the C.F.R.;
`
`The individual will be subject to the USPTO Code of Professional
`Responsibility set forth in 37 C.F.R. §§ 10.20 et seq. and disciplinary
`jurisdiction under 37 C.F.R. § 11.19(a);
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`vii. All other proceedings before the Office for which the individual has
`applied to appear pro hac vice in the last three (3) years; and
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`viii. Familiarity with the subject at issue in the proceeding.
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`3
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`III. STATEMENT OF FACTS
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`Based on the following facts, and supported by the Affidavit of Mr. Pabis
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`(Ex. 1016) submitted herewith, Petitioner requests the pro hac vice admission of
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`Ronald Pabis in this proceeding:
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`1.
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`Petitioner’s lead counsel, Heath Briggs, is a registered practitioner
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`(Reg. No. 54,919).
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`2. Mr. Pabis is a shareholder at the law firm Greenberg Traurig, LLP.
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`Ex. 1016 at ¶3.
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`3. Mr. Pabis is an experienced litigating attorney. Mr. Pabis has been a
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`litigating attorney for more than twenty-one years. Id. at ¶4. Mr. Pabis has been
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`litigating patent cases for more than fourteen years. Id.
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`4. Mr. Pabis has an established familiarity with the subject matter at
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`issue in this proceeding. Mr. Pabis is Petitioner’s co-lead trial counsel in its
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`district court litigation (Mobile Telecommunication Technologies, LLC v. Samsung
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`Electronics Co., Ltd. et al., Case No. 2:15-cv-183 (E.D. Tex.)), which involves the
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`same patent at issue in this proceeding. Id. at ¶11. As counsel for Petitioner in that
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`matter, Mr. Pabis has been actively involved in all aspects of Petitioner’s litigation.
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`5. Mr. Pabis is a member in good standing in the bars of Florida, the
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`District of Columbia, numerous U.S. District Courts, and the U.S. Court of
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`Appeals for the Federal Circuit. Id. at ¶5.
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`4
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`6. Mr. Pabis has never been suspended or disbarred from practice before
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`any court or administrative body. Id. at ¶5.
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`7.
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`No application of Mr. Pabis for admission to practice before any court
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`or administrative body has ever been denied. Id. at ¶6.
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`8.
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`No sanctions or contempt citations have ever been imposed against
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`Mr. Pabis by any court or administrative body. Id. at ¶7.
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`9. Mr. Pabis 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 set forth in part 42 of
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`the C.F.R. Id. at ¶8.
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`10. Mr. Pabis understands that he will be subject to the USPTO Code of
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`Professional Responsibility set forth in 37 C.F.R. §§ 10.20 et seq. and disciplinary
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`jurisdiction under 37 C.F.R. § 11.19(a). Id. at ¶9.
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`11. Mr. Pabis is concurrently seeking pro hac vice admission in the
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`Petitioner’s inter partes challenges to U.S. Patent Nos. 5,915,210 and 5,659,891.
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`These proceedings have been designated IPR2015-01724 and IPR2015-01725, and
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`IPR2015-01726, respectively. Mr. Pabis has been granted pro hac vice admission
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`to represent Petitioner Amkor Technology, Inc. in an unrelated matter for case
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`IPR2013-00242 (paper 62). Otherwise, Mr. Pabis has not applied to appear pro
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`hac vice in any other proceedings before the Office in the last three (3) years. Id.
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`at ¶10.
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`5
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`12. This motion was filed no sooner than 21 days after service of the
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`Petition in this proceeding, which occurred on August 13, 2015.
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`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION OF
`MR. PABIS IN THIS PROCEEDING
`The Board may recognize counsel pro hac vice during a proceeding upon a
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`showing of good cause, subject to the condition that lead counsel be a registered
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`practitioner and to any other conditions as the Board may impose. 37 C.F.R. §
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`42.10(c). Petitioner’s lead counsel, Heath Briggs, is a registered practitioner.
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`Based on the facts contained herein, as supported by Mr. Pabis’s Affidavit (ex.
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`1016), good cause exists to admit Mr. Pabis pro hac vice in this proceeding.
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`As supported by his affidavit, Mr. Pabis is an experienced litigating attorney
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`with over fourteen (14) years of patent litigation experience. Mr. Pabis also has an
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`established familiarity with the subject matter at issue in this proceeding as he is
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`Petitioner’s
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`co-lead
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`counsel
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`in
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`its district
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`court
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`litigation
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`(Mobile
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`Telecommunication Technologies, LLC v. Samsung Electronics Co., Ltd. et al.,
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`Case No. 2:15-cv-183 (E.D. Tex.)). This proceeding involves the same patent –
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`U.S. Patent No. 5,659,891 – that is at issue in that pending litigation (among
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`others).
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`As counsel for Petitioner, Mr. Pabis has been actively involved in all aspects
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`of its district court litigation, including Petitioner’s factual investigation and
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`development of its invalidity positions regarding the claims of the ’891 patent
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`6
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`
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`being challenged in this proceeding. In view of Mr. Pabis’s extensive knowledge
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`of the precise subject matter at issue in this proceeding, and in view of the
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`interrelatedness of this proceeding and its district court proceeding, Petitioner has a
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`substantial need for Mr. Pabis’s pro hac vice admission and his involvement in this
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`proceeding. Though Mr. Pabis has been involved throughout this IPR in an
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`advisory capacity, and has stayed up-to-date regarding the documents filed and
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`actions taken, there is now a need for Mr. Pabis to be added as backup counsel to
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`this IPR. Mr. Pabis’s pro hac vice admission will enable Petitioner to avoid
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`unnecessary expense and duplication of work between this proceeding and its
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`district court proceeding. See 77 Fed. Reg. 157 (Aug. 14, 2012), at 48661
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`(Office’s comment on final rule discussing concerns about efficiency and costs
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`where an entity has already engaged counsel for parallel district court litigation).
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`V. CONCLUSION
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`For the foregoing reasons, Samsung respectfully requests that the Board
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`admit Mr. Pabis pro hac vice in this proceeding.
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`The Patent Trial and Appeal Board is hereby authorized to charge any fees
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`associated with this filing to Deposit Account No. 50-2775.
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`7
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`Dated: November 4, 2015
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`
`
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`Respectfully submitted,
`
`GREENBERG TRAURIG, LLP
`
`/s/ Heath J. Briggs
`Heath J. Briggs
`Registration No. 54,919
`1200 17th Street, Suite 2400
`Denver, CO 80202
`Phone: (303) 572-6500
`Fax: (303) 572-6540
`
`8
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`
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`Filed on behalf of Samsung Electronics Co., Ltd.
`By: Heath Briggs, Reg. No. 54,919
`GREENBERG TRAURIG, LLP
`1200 Denver, CO 80202
`BriggsH@gtlaw.com
`(303) s72-6s00
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Samsung Electronics Co., Ltd.
`Petitioner,
`
`V
`
`Mobile Telecommunications Technologies, LLC
`Patent Owner
`
`Inter Partes Review No. IPR20I5-0I727
`Patent No. 5,659,891
`
`AFF'IDAVIT OF RONALD PABIS
`IN SUPPORT OF'MOTION F'OR PRO HAC VICE ADMISSION
`
`Maíl Stop 'PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office P.O. Box 1450
`Alexandria, VA 223 13 -1450
`
`
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`Samsung Exhibit 1016
`rPR2015-0t727
`AFFIDAVIT OF RONALD PABIS
`1.
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`I, Ronald Pabis, am more than twenty-one years of age, am competent
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`to present this affidavit, and have personal knowledge of the facts below
`2. This affidavit supports Samsung's motion for pro hac vice admission.
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`I am a shareholder at the law firm Greenberg Traurig, LLP
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`I have been a litigating attorney for more than twenty-one years. I
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`J 4
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`have been litigating patent cases for more than fourteen years.
`5.
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`I am a member in good standing in the bars of Florida, the District of
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`Columbia, numerous U.S. District Courts, and the U.S. Court of Appeals for the
`
`Federal Circuit. I have never been suspended or disbarred from practice before
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`any court or administrative body
`6. No court or administrative body has ever denied my application for
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`admission to practice before it
`7. No court or administrative body has ever imposed sanctions or
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`contempt citations on me.
`8.
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`I have 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 part 42 of the C.F.R.
`I agree to be subject to the USPTO Code of Professional
`9.
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`Responsibility set forth in 37 C.F.R. $$ 10.20 et seq. and disciplinary jurisdiction
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`under 37 C.F.R. $ 1 1.19(a).
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`
`
`Samsung Exhibit 1016
`IPR2015-01727
`AFFIDAVIT OF RONALD PABIS
`10. I am concurrently seeking pro hac vice admission in the Petitioner's
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`inter partes challenges to U.S. Patent Nos. 5,975,210 and 5,659,891. These
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`proceedings have been designated IPR2015-0I724 and IPR2015-07725, and
`IPR2015-0I726, respectively. I have been granted pro hac vice admission to
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`represent petitioner Amkor Technology, Inc. in an unrelated matter for case
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`IPR2013-00242 (çtaper 62). Otherwise, I have not applied to appear pro hac vice
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`in any other proceedings before the Office in the last three (3) years.
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`11. I am petitioner's co-lead trial counsel in the district court litigation
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`(Mobile Telecommunication Technologies, LLC v. Samsung Electronics Co., Ltd.
`
`et al., Case No. 2:15-cv-183 (E.D. Tex.)), which involves the same patent at issue
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`in this proceeding. As counsel for petitioner in that matter, I have been actively
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`involved in all aspects of petitioner's litigation, including petitioner's factual
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`investigation and development of its non-infringement and invalidity positions
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`regarding the claims of the '891 patent being challenged in this proceeding.
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`12. I declare that all statements made herein of my own knowledge are
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`true and that all statements made on information and belief are believed to be true;
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`and further that these statements were made with the knowledge that willful false
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`statements and the like so made are punishable by fine or imprisonment, or both,
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`under Section 1001 of Title 18 of the United States Code.
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`
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`Sarnsung Exhibit 1016
`IPR2015-01727
`AFFIDAVIT OF RONALD PABIS
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`I declare under penalty of perjury that the
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`and correct.
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`Date: lo'2\' 15
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`, Esq.
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`
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`Motion for Pro Hac Vice Admission of Ronald J. Pabis
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 4th day of November, 2015, a copy of this Motion and
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`
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`affidavit has been served in its entirety on the following e-mail address for patent owner:
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`
`
`
`John R. Kasha
`Kasha Law LLC
`14532 Dufief Mill Rd.
`North Potomac, MD 20878
`john.kasha@kashalaw.com
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`The Patent Owner has consented to service by email.
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`Respectfully submitted,
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`Date: November 4, 2015
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`/s/ Heath J. Briggs
`Heath J. Briggs
`Registration No. 54,919
`1200 17th Street, Suite 2400
`Denver, CO 80202
`Phone: (303) 572-6500
`Fax: (303) 572-6540