UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`COSTCO WHOLESALE CORPORATION,
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`____________________
`
`CASE NO. IPR2016-00039
`U.S. Patent No. 7,228,588
`____________________
`
`
`
`PATENT OWNER’S MOTION FOR ADMISSION
`PRO HAC VICE OF MARK A. HANNEMANN
`
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`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`COSTCO WHOLESALE CORPORATION,
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`____________________
`
`CASE NO. IPR2016-00039
`U.S. Patent No. 7,228,588
`____________________
`
`
`
`PATENT OWNER’S MOTION FOR ADMISSION
`PRO HAC VICE OF MARK A. HANNEMANN
`
`
`
`
`
`
`
`
`
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`
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`Pursuant to 37 C.F.R. § 42.10(c), Patent Owner Robert Bosch LLC
`
`CASE NO. IPR2016-00039
` U.S. Patent No. 7,228,588
`
`
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`respectfully requests that the Board admit Mark A. Hannemann pro hac vice as
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`back-up counsel in this proceeding.
`
`I.
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`Statement of Facts Showing There is Good Cause for the Board to
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`Admit Counsel Pro Hac Vice
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`“The Board may recognize counsel pro hac vice in a proceeding upon a
`
`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). “[W]here lead counsel is a registered practitioner, a motion to appear pro
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`hac vice by counsel who is not a registered practitioner may be granted upon a
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`showing that counsel is an experienced litigating attorney and has an established
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`familiarity with the subject matter at issue in the proceeding.” Id. The facts here
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`establish good cause for the Board to admit Mark Hannemann pro hac vice during
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`this proceeding, so that he may participate in, inter alia, oral hearings, depositions,
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`and conferences with the Board.
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`1.
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`2.
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`Lead counsel, Eric Schreiber, is a registered practitioner.
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`As set forth in the accompanying Declaration of Mark A. Hannemann
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`in Support of Patent Owner’s Motion for Admission Pro Hac Vice (“Hannemann
`
`Decl.”), Mr. Hannemann is admitted to practice law in the State of New York, the
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`U.S. Courts of Appeals for the Federal Circuit and the Second Circuit, and the U.S.
`
`1
`
`
`
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`District Courts for the Eastern District of New York, the Southern District of New
`
`CASE NO. IPR2016-00039
` U.S. Patent No. 7,228,588
`
`York, and the Eastern District of Michigan. Hannemann Decl., ¶ 3.
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`3. Mr. Hannemann is an experienced litigating attorney.
`
` More
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`specifically, he has 20 years of litigation experience with a focus on patent
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`infringement proceedings. Hannemann Decl., ¶ 4. Mr. Hannemann has been a
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`first-chair litigator in several patent infringement trials. Hannemann Decl., ¶ 4.
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`4. Mr. Hannemann also has an established familiarity with the subject
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`matter at issue in this proceeding. Since 2007, he has been lead counsel for Patent
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`Owner in numerous patent infringement cases in federal courts and before the U.S.
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`International Trade Commission involving the same subject matter at issue in this
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`proceeding, Patent Owner’s beam windshield wiper blade technology. Hannemann
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`Decl., ¶ 5. In each of those cases, Patent Owner has asserted patents directed to
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`beam wiper blade technology. Hannemann Decl., ¶ 5. U.S. Patent No. 7,228,588,
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`the patent at issue in this IPR proceeding, was at issue in several of these prior
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`cases. Hannemann Decl., ¶ 5.
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`5. Mr. Hannemann is lead counsel for Patent Owner in a patent
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`infringement case currently pending against Petitioner in the United States District
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`Court for the District of Delaware, Robert Bosch LLC v. Alberee Products Inc. et
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`al., Civil Action No. 12-574-LPS (consolidated with Civil Action No. 14-142-LPS
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`(D. Del.)). Hannemann Decl., ¶ 6. U.S. Patent No. 7,228,588, the patent at issue
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`2
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`in this IPR proceeding, is also at issue in the pending Delaware action.
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`CASE NO. IPR2016-00039
` U.S. Patent No. 7,228,588
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`Hannemann Decl., ¶ 6.
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`6. Mr. Hannemann attests to each of the pro hac vice declaration
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`requirements listed in the Board’s Order in Case No. IPR2013-00639 (Paper 7).
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`See Hannemann Decl., ¶¶ 3-12.
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`7. Mr. Hannemann 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, as set forth in Part 42
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`of 37 C.F.R. Hannemann Decl., ¶ 10.
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`8. Mr. Hannemann agrees to 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) and to be subject to the USPTO Rules of
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`Professional Conduct as set forth in Changes to Representation of Others Before
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`the United States Patent and Trademark Office; Final Rule, 78 Fed. Reg. 20180
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`(Apr. 3, 2013) (effective May 3, 2013). Hannemann Decl., ¶ 12.
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`II. Conclusion
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`The requirements for admission pro hac vice being hereby established,
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`Patent Owner respectfully requests that the Board admit Mark Hannemann pro hac
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`vice as back-up counsel in this proceeding.
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`3
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`CASE NO. IPR2016-00039
` U.S. Patent No. 7,228,588
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`
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` Respectfully submitted,
`
`
`Dated: November 2, 2015 KENYON & KENYON LLP
`
`/Eric T. Schreiber/
`Eric T. Schreiber
`Reg. No. 58,771
`KENYON & KENYON LLP
`One Broadway
`New York, NY 10004-1007
` Tel: (212) 425-7200
`
`Counsel for Patent Owner
`Robert Bosch LLC
`
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`
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`4
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`CASE NO. IPR2016-00039
` U.S. Patent No. 7,228,588
`
`
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`Certificate of Service
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`The undersigned hereby certifies
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`that
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`the
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`foregoing PATENT
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`OWNER’S MOTION FOR ADMISSION PRO HAC VICE OF MARK A.
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`HANNEMANN was served via electronic mail on November 2, 2015, in its
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`entirety on the following counsel for Petitioner:
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`
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`Richard M. Koehl (richard.koehl@hugheshubbard.com)
`James R. Klaiber (james.klaiber@hugheshubbard.com)
`David E. Lansky (david.lansky@ hugheshubbard.com)
`
`/Eric T. Schreiber/
`Eric T. Schreiber
`Reg. No. 58,771
`KENYON & KENYON LLP
`One Broadway
`New York, NY 10004-1007
` Tel: (212) 425-7200
`
`Counsel for Patent Owner
`Robert Bosch LLC
`
`
`
`
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`5
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