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`1 Protection One, Inc., who filed a Petition in IPR2016-01235, has been joined as a party to the
`petitioner in this proceeding.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`RPX CORPORATION and
`PROTECTION ONE, INC.,
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`Petitioner
`
`v.
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`
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`MD SECURITY SOLUTIONS LLC
`
`Patent Owner
`___________
`
`IPR2016-002851
`Patent 7,864,983
`
`MOTION FOR PRO HAC VICE ADMISSION OF
`DANIEL J. WEINBERG PURSUANT TO 37 C.F.R. § 42.10
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, and WILLIAM M. FINK,
`Administrative Patent Judges.
`
`FINK, Administrative Patent Judge.
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`
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`
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`Patent Owner MD Security Solutions LLC (“MD Security”), respectfully
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`requests the Board to recognize Daniel J. Weinberg as counsel pro hac vice during
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`this proceeding. Pursuant to 37 C.F.R. § 42.10 and in response to the authorization
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`provided by the United States Patent and Trademark Office’s Patent Trial and
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`Appeal Board (“Board”) in the Notice of Filing Date Accorded to Petition (Paper
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`Number 4, entered December 15, 2015) (“Notice”), MD Security submits this
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`motion for Mr. Weinberg to appear pro hac vice.
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`I.
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`Time for Filing
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`Pursuant to the “Order – Authorizing Motion for Pro Hac Vice Admission”
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`in Case IPR2013-006392 (“Order”), this motion for pro hac vice admission is being
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`filed no sooner than twenty-one (21) days after service of the petition.
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`II. Good Cause for Additional Back-Up Counsel
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`MD Security respectfully requests admission of Mr. Weinberg as additional
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`back-up counsel. MD Security has a sufficient need for the admission of
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`additional back-up counsel in light of lead counsel’s unavailability and scheduled
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`appearance in another court. In addition to this proceeding, the Board instituted an
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`inter partes review of a second MD Security patent in IPR2016-01235. This
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`2 Patent Owner notes that while the Notice references the “Order – Authorizing Motion for Pro
`Hac Vice Admission” in Case IPR2013-00010 (MPT), the Order in Case IPR2013-00639 states
`that the Final Rule regarding Changes to Representation of Others Before the United States
`Patent and Trademark Office removes part 10 of title 37, C.F.R. referred to in the Order in Case
`IPR2013-00010 (MPT). Accordingly, for purpose of this proceeding, Patent Owner will refer to
`the Order in Case IPR2013-00639.
`
`-1-
`
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`
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`request is accompanied by the attached Power of Attorney.
`
`III.
`
`Statement of Facts
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`Pursuant to the Order, the following statement of facts, supported by the
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`attached Declaration of Mr. Weinberg shows that there is good cause for the Board
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`to recognize Mr. Weinberg pro hac vice.
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`Lead counsel for this proceeding, Jason S. Angell, is a registered practitioner
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`(Reg. No. 51408).
`
`Mr. Weinberg is an experienced litigation attorney, and has served as
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`counsel in numerous complex cases and patent infringement litigations in various
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`district courts. Mr. Weinberg has not been suspended or disbarred from practice,
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`and he has not had any application for admission to practice denied, or had any
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`sanctions or contempt citations imposed against him. Mr. Weinberg is an active
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`member in good standing of the California Bar and is admitted to practice before
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`the United States Court of Appeals for the Ninth Circuit, the United States Court of
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`Appeals for the Federal Circuit, the U.S. District Court for the Northern District of
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`California, the United States District Court for the Central District of California,
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`and the U.S. District Court for the Western District of Tennessee. Mr. Weinberg’s
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`mailing address is Freitas Angell & Weinberg LLP, 350 Marine Parkway, Suite
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`200, Redwood Shores, California 94065, his email address is
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`dweinberg@fawlaw.com, and his direct dial telephone number is (650) 730-5501.
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`-2-
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`Mr. Weinberg is a member of the litigation team for MD Security in MD
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`Security Solutions LLC v. Protection 1, Inc., No. 6:15-cv-1968-Orl-40GJK,
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`pending in the U.S. District Court for the Middle District of Florida, Orlando
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`Division. That action involves U.S. Patent No. 7,864,983 (“’983 Patent”), the
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`patent at issue in this proceeding. In his role as counsel, Mr. Weinberg is
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`knowledgeable about the ’983 Patent and assertions regarding the invalidity of the
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`’983 Patent. Further, Mr. Weinberg is familiar with the factual and legal matters at
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`issue in that case. Mr. Weinberg has thus established familiarity with the subject
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`matter at issue in this proceeding.
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`Mr. Weinberg has read and will comply with the Office Patent Trial Practice
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`Guide and the Board’s Rules for Practice for Trials set forth in part 42 of the
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`C.F.R., and he agrees to be subject to the USPTO Rules of Professional Conduct
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`set forth in 37 C.F.R. § 11.101 et seq. and disciplinary jurisdiction under 37 C.F.R.
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`§ 11.19(a).
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`In the past three (3) years, Mr. Weinberg has also applied pro hac vice
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`before the United States Patent and Trademark Office in the following IPR actions:
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`Sony Mobile Communications (USA) Inc. v. B.E.
`Technology, L.L.C.
`Google Inc. v. B.E. Technology, L.L.C.
`Google Inc. v. B.E. Technology, L.L.C.
`Google Inc. v. B.E. Technology, L.L.C.
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`IPR2014-00029
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`IPR2014-00031
`IPR2014-00033
`IPR2014-00038
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`-3-
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`Microsoft Corporation v. B.E. Technology, L.L.C.
`Microsoft Corporation v. B.E. Technology, L.L.C.
`Samsung Electronics America, Inc. v. B.E.
`Technology, L.L.C.
`Facebook, Inc. v. B.E. Technology, L.L.C.
`Facebook, Inc. v. B.E. Technology, L.L.C.
`Match.com L.L.C. & People Media, Inc. v. B.E.
`Technology, L.L.C.
`Match.com L.L.C. & People Media, Inc. v. B.E.
`Technology, L.L.C.
`Olympus America Inc. and Olympus Medical
`Systems Corp. v. Perfect Surgical Techniques, Inc.
`Olympus America Inc. and Olympus Medical
`Systems Corp. v. Perfect Surgical Techniques, Inc.
`STATS LLC v. Hockeyline, Inc.
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`IPR2014-00039
`IPR2014-00040
`IPR2014-00044
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`IPR2014-00052
`IPR2014-00053
`IPR2014-00698
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`IPR2014-00699
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`IPR2014-00233
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`IPR2014-00241
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`IPR2014-00510
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`Patent Owner has expended significant resources with Mr. Weinberg as
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`counsel, and Patent Owner wishes Mr. Weinberg to represent it in this proceeding.
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`IV. Affidavit or Declaration of Individual Seeking to Appear
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`This motion for pro hac vice admission is accompanied by a Declaration of
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`Mr. Weinberg as required by the Order.
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`V. Conclusion
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`The facts contained in the Statement of Facts above, and contained in the
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`Declaration of Mr. Weinberg, establish that there is good cause to admit Mr.
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`Weinberg pro hac vice in this proceeding under 37 C.F.R. § 42.10(c).
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`-4-
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`Date: February 7, 2017
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`
`
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`Respectfully submitted,
`
`/s/Jason S. Angell
`Jason S. Angell
`Reg. No. 51480
`Counsel for Patent Owner
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`-5-
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`CERTIFICATE OF SERVICE
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`It is certified that a copy of the foregoing has been served on Petitioner via
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`electronic mail transmission addressed to the person(s) at the address below:
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`Richard F. Giunta
`Daniel T. Wehner
`Randy J. Pritzker
`Elisabeth H. Hunt
`WOLF, GREENFIELD & SACKS, P.C.
`RGiunta-PTAB@wolfgreenfield.com
`DWehner-PTAB@wolfgreenfield.com
`RPritzker-PTAB@wolfgreenfield.com
`EHunt-PTAB@wolfgreenfield.com
`
`Joshua A. Griswold
`Dan Smith
`FISH & RICHARDSON P.C.
`IPR39959-0009IP1@fr.com
`PTABInbound@fr.com
`griswold@fr.com
`dsmith@fr.com
`
`
`Date: February 7, 2017
`
`/s/Jason S. Angell
`Jason S. Angell
`Reg. No. 51408
`Counsel for Patent Owner
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`-6-
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`
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