UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`ACTIVISION BLIZZARD, INC.,
`ELECTRONIC ARTS INC.,
`TAKE-TWO INTERACTIVE SOFTWARE, INC.,
`2K SPORTS, INC.,
`ROCKSTAR GAMES, INC., and
`BUNGIE, INC.,
`Petitioner,
`
`v.
`
`ACCELERATION BAY, LLC,
`Patent Owner.
`____________________
`
`Case IPR2015-019961
`Patent 6,829,634
`__________________________________________________________
`
`PATENT OWNER’S MOTION FOR PRO HAC VICE ADMISSION OF
`PAUL J. ANDRE UNDER 37 C.F.R. § 42.10(c)
`
`
`1 Bungie, Inc., who filed a Petition in IPR2016-00964, has been joined as a
`petitioner in this proceeding.
`
`
`
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`ACTIVISION BLIZZARD, INC.,
`ELECTRONIC ARTS INC.,
`TAKE-TWO INTERACTIVE SOFTWARE, INC.,
`2K SPORTS, INC.,
`ROCKSTAR GAMES, INC., and
`BUNGIE, INC.,
`Petitioner,
`
`v.
`
`ACCELERATION BAY, LLC,
`Patent Owner.
`____________________
`
`Case IPR2015-019961
`Patent 6,829,634
`__________________________________________________________
`
`PATENT OWNER’S MOTION FOR PRO HAC VICE ADMISSION OF
`PAUL J. ANDRE UNDER 37 C.F.R. § 42.10(c)
`
`
`1 Bungie, Inc., who filed a Petition in IPR2016-00964, has been joined as a
`petitioner in this proceeding.
`
`
`
`
`
`Motion for Pro Hac Vice Admission of Paul J. Andre
`IPR2015-01996 (U.S. Patent No. 6,829,634)
`
`I.
`
`Statement of Precise Relief Requested
`
`Pursuant to 37 C.F.R. § 42.10(c) and Paper No. 3 authorizing the parties to
`
`file motion for pro hac vice admission under 37 C.F.R. § 42.10(c), Petitioner
`
`Acceleration Bay, LLC (“Acceleration Bay”), requests that the Patent Trial and
`
`Appeal Board (the “Board”) admit Paul J. Andre pro hac vice in this proceeding,
`
`IPR2015-01996.
`
`In support of this motion, a declaration of Paul J. Andre is submitted as
`
`Exhibit 1 explaining that he satisfies all the criteria for pro hac vice admission as
`
`set forth in Case IPR2013-00639, Paper 7 (Oct. 15, 2013).
`
`This motion is being filed no sooner than twenty one (21) days after service
`
`of the petition.
`
`II.
`
`Statement of Facts
`
`Based on the following facts, and supported by the Declaration of Paul J.
`
`Andre Declaration in Support of Pro Hac Vice Admission (“Andre Declaration”)
`
`submitted herewith as Exhibit 1, Acceleration Bay hereby requests pro hac vice
`
`admission of Mr. Andre in this proceeding:
`
`1.
`
`Lead counsel, James Hannah, is a registered practitioner (Reg. No
`
`56,369).
`
`2. Mr. Andre is a partner at the law firm Kramer Levin Naftalis &
`
`Frankel LLP. Andre Declaration, ¶ 1.
`
`1
`
`
`
`Motion for Pro Hac Vice Admission of Paul J. Andre
`IPR2015-01996 (U.S. Patent No. 6,829,634)
`
`3. Mr. Andre is an experienced litigating attorney. Mr. Andre has been a
`
`litigating attorney for more than twenty (20) years. Mr. Andre has been litigating
`
`patent cases during that entire time period. Id., ¶ 2.
`
`4. Mr. Andre is a member in good standing of the State Bar of
`
`California, State Bar of New York, State Bar of Connecticut, and the Bar of
`
`District of Columbia. Id., ¶ 3.
`
`5. Mr. Andre has never been suspended or disbarred from practice
`
`before any court or administrative body. Id., ¶ 4.
`
`6. Mr. Andre was once denied pro hac vice admission to the Board. In
`
`particular, Mr. Andre was denied pro hac vice admission to the Board for the Inter
`
`Partes Reexamination Appeal, Everbridge, Inc., Federal Signal Corp., Twitter, Inc.
`
`v. Copper Notification, Inc., Control No. 95/001,425, Appeal 2013-007396. But
`
`the denial was due to an unintentional procedural error. At the time, Mr. Andre’s
`
`petition was erroneously and unintentionally directed towards complying with Part
`
`42 of Title 37 which governs AIA Trial Proceedings, instead of the proper Part 41
`
`of Title 37 which governs inter partes reexamination appeal proceedings. As Part
`
`42 of Title 37 applies different standards than Part 41 of Title 37, the petition was
`
`denied. Id., ¶ 5.
`
`7.
`
`Specifically, Mr. Andre submitted an application for pro hac vice
`
`under Part 42 of Title 37 of the C.F.R. in Everbridge, Inc. et. al. v. Cooper
`
`2
`
`
`
`Motion for Pro Hac Vice Admission of Paul J. Andre
`IPR2015-01996 (U.S. Patent No. 6,829,634)
`
`Notification, Inc. In so doing, Mr. Andre made the requisite affirmations under
`
`Part 42 of Title 37 of the C.F.R. The Board denied Mr. Andre’s application stating
`
`that : (1) patent owner is already represented by patent counsel registered to
`
`practice before the USPTO; (2) there was no explanation of the “interrelatedness of
`
`[the] proceeding and the district court litigation and appeal”; (3) and Mr. Andre
`
`stated that he would comply with the rules of Part 42 of Title 37 of the C.F.R. As
`
`shown, Mr. Andre complied with the wrong C.F.R. section which resulted in the
`
`petition’s denial. No other application by Mr. Andre for admission to practice
`
`before any court or administrative body has been denied. In fact, Mr. Andre been
`
`admitted pro hac vice to federal courts in over 25 states. Id., ¶ 5.
`
`8.
`
`No sanctions or contempt citations have ever been imposed against
`
`Mr. Andre by any court or administrative body. Id., ¶ 6.
`
`9. Mr. Andre 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 37 C.F.R. Id., ¶ 7.
`
`10. Mr. Andre understands that he will be subject to the USPTO Code of
`
`Professional Responsibility set forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary
`
`jurisdiction under 37 C.F.R. § 11.19(a). Id., ¶ 8.
`
`11.
`
`In the past three (3) years, Mr. Andre has applied once to appear pro
`
`hac vice before the United State Patent and Trademark Office in Everbridge, Inc.,
`
`3
`
`
`
`Motion for Pro Hac Vice Admission of Paul J. Andre
`IPR2015-01996 (U.S. Patent No. 6,829,634)
`
`Federal Signal Corp., Twitter, Inc. v. Cooper Notification, Inc., Inter Partes
`
`Control No. 95/001,425, Appeal No. 2013-007396 and four times to appear pro
`
`hac vice before the Board in the inter partes review proceedings captioned Finjan,
`
`Inc. v. FireEye, Inc., Case No. IPR2014-00344; Purdue Pharma LP v. Depomed,
`
`Inc., Case No. IPR2014-00377; Purdue Pharma LP v. Depomed, Inc., Case No.
`
`IPR2014-00378; and Purdue Pharma LP v. Depomed, Inc., Case No. IPR2014-
`
`00379. Id., ¶ 9.
`
`12. Mr. Andre has an established familiarity with the subject matter at
`
`issue in this proceeding. Id., ¶ 10.
`
`13. Mr. Andre is Acceleration Bay’s lead trial counsel in the related
`
`district court litigations against Petitioners Activision Blizzard, Inc., Electronic
`
`Arts Inc. and Take-Two Interactive Software, Inc. et al – specifically, Acceleration
`
`Bay, LLC v. Activision Blizzard, Inc., C.A. 1:16-cv-00453 (D. Del.); Acceleration
`
`Bay, LLC v. Electronic Arts Inc., C.A. 1:16-cv-00454 (D. Del.); and Acceleration
`
`Bay, LLC v. Take-Two Interactive Software, Inc., et al, C.A. 1:16-cv-00455 (D.
`
`Del.) – which involve the same asserted patent and other related patents. Id., ¶ 10.
`
`14. Mr. Andre has substantively reviewed U.S. Patent No. 6,829,634, the
`
`petition and all materials already filed in this proceeding. Id., ¶ 11
`
`III. Good Cause Exists for Pro Hac Vice Admission
`In accordance with 37 C.F.R. § 42.10(c), the Board may recognize counsel
`
`4
`
`
`
`Motion for Pro Hac Vice Admission of Paul J. Andre
`IPR2015-01996 (U.S. Patent No. 6,829,634)
`
`pro hac vice during a proceeding upon showing of good cause, subject to the
`
`condition that lead counsel be a registered practitioner and to any other condition
`
`the Board may impose. Furthermore, § 42.10(c) indicates that “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.” Good cause exists here for the pro hac vice
`
`admission of Mr. Andre.
`
`First, Acceleration Bay’s lead counsel, James Hannah, is a registered
`
`practitioner. Second, Mr. Andre has been a litigating attorney for over twenty (20)
`
`years and is an experienced litigator particularly in the field of patent litigation.
`
`Third, Mr. Andre has developed a technical understanding and familiarity with
`
`asserted patent through his representation of Acceleration Bay in the district court
`
`litigations. Furthermore, Mr. Andre is Acceleration Bay’s lead counsel in the
`
`related district court litigations between Acceleration Bay and the Petitioners. This
`
`establishes that Mr. Andre is an experienced litigator and familiar with the subject
`
`matter of this proceeding.
`
`The only time that Mr. Andre’s pro hac vice application has ever been
`
`denied was due to a procedural error. Specifically, in Everbridge, Inc. et. al. v.
`
`Cooper Notification, Inc., Mr. Andre’s pro hac vice application was denied
`
`5
`
`
`
`Motion for Pro Hac Vice Admission of Paul J. Andre
`IPR2015-01996 (U.S. Patent No. 6,829,634)
`
`because he complied with the wrong C.F.R. section. In particular, Mr. Andre
`
`submitted a pro hac vice application pursuant to Part 42 of Title 37 of C.F.R. in an
`
`inter-partes reexamination. The Board denied Mr. Andre’s application because
`
`Part 41 of Title 37 of C.F.R. applies to inter-partes reexamination, not Part 42 of
`
`Title 37 of C.F.R. There have been no other instances in which Mr. Andre’s pro
`
`hac vice application has been denied.
`
`IV. Conclusion
`The facts here supported by the attached Andre Declaration and the reasons
`
`stated above establish good cause for the Board to admit Paul J. Andre pro hac
`
`vice in this proceeding.
`
`Dated: November 7, 2016
`
`(Case No. IPR2015-01996)
`
`
`
`Respectfully submitted,
`
`
`
`
`
`/James Hannah/
`
`James Hannah (Reg. No. 56,369)
`jhannah@kramerlevin.com
`Michael Lee (Reg. No. 63,941)
`mhlee@kramerlevin.com
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Tel: 650.752.1700 Fax: 650.752.1800
`
`Shannon Hedvat (Reg. No. 68,417)
`shedvat@kramerlevin.com
`Kramer Levin Naftalis & Frankel LLP
`1177 Avenue of the Americas
`New York, NY 10036
`Tel: 212.715.9185 Fax: 212.715.8000
`
`Attorneys for Patent Owner
`
`6
`
`
`
`Motion for Pro Hac Vice Admission of Paul J. Andre
`IPR2015-01996 (U.S. Patent No. 6,829,634)
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that a true and
`
`correct copy of the foregoing Patent Owner’s Motion for Pro Hac Vice Admission
`
`of Paul J. Andre under 37 C.F.R. § 42.10(c) and Declaration of Paul J. Andre in
`
`Support of Patent Owner’s Motion for Pro Hac Vice Admission were served on
`
`November 7, 2016, by filing the documents through the Patent Review Processing
`
`System as well as delivering via electronic mail upon the following counsel of
`
`record for Petitioner:
`
`
`
`
`J. Steven Baughman
`ROPES & GRAY LLP
`2099 Pennsylvania Ave., NW
`Washington, DC 20005-3948
`steven.baughman@ropesgray.com
`Activision_Blizzard_PTAB_Service@ropesgray.com
`
`Matthew R. Shapiro
`Joseph E. Van Tassel
`ROPES & GRAY LLP
`1211 Avenue of the Americas
`New York, NY 10036
`matthew.shapiro@ropesgray.com
`joseph.vantassel@ropesgray.com
`
`
`Andrew Thomases
`Daniel W. Richards
`James Davis, Jr.
`ROPES & GRAY LLP
`1900 University Ave., 6th Floor
`East Palo Alto, CA 94303
`andrew.thomases@ropesgray.com
`daniel.w.richards@ropesgray.com
`james.l.davis@ropesgray.com
`
`Michael M. Murray
`WINSTON &STRAWN LLP
`275 Middlefield Road, Suite 205
`Menlo Park, CA 94025
`mmurray@winston.com
`
`
`Mike Tomasulo
`WINSTON &STRAWN LLP
`333 S. Grand Avenue, 38th Floor
`Los Angeles, CA 90071
`mtomasulo@winston.com
`
`7
`
`
`
`Motion for Pro Hac Vice Admission of Paul J. Andre
`IPR2015-01996 (U.S. Patent No. 6,829,634)
`
`
`
`Andrew R. Sommer
`WINSTON &STRAWN LLP
`1700 K. Street, N.W.
`Washington D.C. 20006-3817
`asommer@winston.com
`
`
`Counsel for Petitioner Activision Blizzard, Inc.,
`Electronic Arts Inc., Take-Two Interactive Software,
`Inc., 2K Sports, Inc., and Rockstar Games, Inc.
`
`Michael T. Rosato
`Andrew S. Brown
`WILSON SONSINI GOODRICH
` & ROSATI
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104-7036
`mrosato@wsgr.com
`asbrown@wsgr.com
`
`Jose C. Villarreal
`Eric C. Arnell
`WILSON SONSINI GOODRICH
` & ROSATI
`900 South Capital of Texas Hwy
`Las Cimas IV, Fifth Floor
`Austin, TX 78746-5546
`jvillarreal@wsgr.com
`earnell@wsgr.com
`
`
`
`
`
`/James Hannah/
`
`James Hannah (Reg. No. 56,369)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road,
`Menlo Park, CA 94025
`(650) 752-1700
`
`8
`
`
`Counsel for Petitioner Bungie, Inc.
`
`
`
`
`
`
`
`EXHIBIT 1
`
`EXHIBIT 1
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`ACTIVISION BLIZZARD, INC.,
`ELECTRONIC ARTS INC.,
`TAKE-TWO INTERACTIVE SOFTWARE, INC.,
`2K SPORTS, INC.,
`ROCKSTAR GAMES, INC., and
`BUNGIE, INC.,
`Petitioner,
`
`v.
`
`ACCELERATION BAY, LLC,
`Patent Owner.
`____________________
`
`Case IPR2015-019961
`Patent 6,829,634
`__________________________________________________________
`
`DECLARATION OF PAUL J. ANDRE IN SUPPORT
`OF PATENT OWNER’S MOTION FOR PRO
`HAC VICE ADMISSION UNDER 37 C.F.R. § 42.10(c)
`
`
`
`1 Bungie, Inc., who filed a Petition in IPR2016-00964, has been joined as a
`petitioner in this proceeding.
`
`
`
`
`
`Declaration of Paul J. Andre
`IPR2015-01996 (U.S. Patent No. 6,829,634)
`
`I, PAUL J. ANDRE, hereby declare as follows:
`
`1.
`
`I am a partner at the law firm Kramer Levin Naftalis & Frankel LLP.
`
`I have personal knowledge of the facts set forth in this declaration and can testify
`
`competently to those facts.
`
`2.
`
`I am an experienced litigating attorney with more than twenty (20)
`
`years of patent litigation experience. I have been litigating patent cases during that
`
`entire time period.
`
`3.
`
`I am a member in good standing of the State Bar of California, State
`
`Bar of New York, State Bar of Connecticut, and the Bar of District of Columbia.
`
`4.
`
`I have never been suspended or disbarred from practice before any
`
`court or administrative body.
`
`5.
`
`I was once denied pro hac vice admission to the Patent Trial and
`
`Appeal Board (the “Board”) for the Inter Partes Reexamination Appeal,
`
`Everbridge, Inc., Federal Signal Corp., Twitter Inc. v. Copper Notification, Inc.,
`
`Control No. 95/001,425, Appeal 2013-007396. That proceeding was related to an
`
`inter partes reexamination where the Board applied different standards than an
`
`inter partes review proceeding. I submitted an application for pro hac vice
`
`admission that conformed to the standards set forth in Part 42 of Title 37 of the
`
`C.F.R. This caused my denial for pro hac vice admission in Everbridge, Inc. et. al.
`
`v. Cooper Notification, Inc., based on: (1) patent owner is already represented by
`
`1
`
`
`
`Declaration of Paul J. Andre
`IPR2015-01996 (U.S. Patent No. 6,829,634)
`
`patent counsel registered to practice before the USPTO; (2) there was no
`
`explanation of the “interrelatedness of [the] proceeding and the district court
`
`litigation and appeal”; (3) and my statement which I would comply with the rules
`
`of Part 42 of Title 37 of the C.F.R. rather than Part 41. I erroneously and
`
`unintentionally stated I would comply with Part 42 of Title 37 which governs AIA
`
`Trial Proceedings, instead of the proper Part 41 of Title 37 which governs inter
`
`partes reexamination appeal proceedings. No other application under my name for
`
`admission to practice before any court or administrative body has been denied. In
`
`fact, I have been admitted pro hac vice to federal courts in over 25 states.
`
`6.
`
`No sanctions or contempt citations have ever been imposed against
`
`me by any court or administrative body.
`
`7.
`
`I have 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 37 C.F.R.
`
`8.
`
`I understand that I will be subject to the USPTO Code of Professional
`
`Responsibility set forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction
`
`under 37 C.F.R. § 11.19(a).
`
`9.
`
`In the past three years I applied once to appear pro hac vice before the
`
`United State Patent and Trademark Office in the appeal of Everbridge, Inc.,
`
`Federal Signal Corp., Twitter, Inc. v. Copper Notification, Inc., Control No.
`
`95/001,425, Appeal 2013-007396 and four times to appear pro hac vice before the
`
`2
`
`
`
`Declaration of Paul J. Andre
`IPR2015-01996 (U.S. Patent No. 6,829,634)
`
`Board in the inter partes review proceedings captioned Finjan, Inc. v. FireEye,
`
`Inc., Case No. IPR2014-00344; Purdue Pharma LP v. Depomed, Inc., Case No.
`
`IPR2014-00377; Purdue Pharma LP v. Depomed, Inc., Case No. IPR2014-00378;
`
`and Purdue Pharma LP v. Depomed, Inc., Case No. IPR2014-00379.
`
`10.
`
`I have an established familiarity with the subject matter at issue in this
`
`proceeding. I represent Acceleration Bay, LLC (“Acceleration Bay”) as lead trial
`
`counsel in the related district court litigations against Petitioners Activision
`
`Blizzard, Inc., Electronic Arts Inc. and Take-Two Interactive Software, Inc. et al –
`
`specifically, Acceleration Bay, LLC v. Activision Blizzard, Inc., C.A. 1:16-cv-
`
`00453 (D. Del.); Acceleration Bay, LLC v. Electronic Arts Inc., C.A. 1:16-cv-
`
`00454 (D. Del.); and Acceleration Bay, LLC v. Take-Two Interactive Software,
`
`Inc., et al, C.A. 1:16-cv-00455 (D. Del.) – which involve the same asserted patent
`
`and other related patents.
`
`11.
`
`I have reviewed U.S. Patent No. 6,829,634, the petition and all other
`
`materials filed in this proceeding.
`
`3
`
`
`
`
`
`
`
`Declaration of Paul J. Andre
`IPR2015-01996 (U.S. Patent No. 6,829,634)
`
`I hereby declare that all statements made herein of my own knowledge are
`
`true and that all statements made on information and belief are believed to be true;
`
`and further that these statements are made with the knowledge that willful false
`
`statements and the like so made are punishable by fine or imprisonment, or both,
`
`under section 1001 of Title 18 of the United States Code.
`
`Executed on November 7, 2016, at Menlo Park, California.
`
`
`
`990 Marsh Road
`Menlo Park, California 94025
`Telephone: (650) 752-1700
`Facsimile: (650) 752-1800
`Email: pandre@kramerlevin.com
`
`
`
`4
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