UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`SAMSUNG ELECTRONICS CO., LTD
`MICRON TECHNOLOGY, INC.; AND
`SK HYNIX INC.,
`Petitioners,
`
`v.
`
`ELM 3DS INNOVATIONS, LLC
`Patent Owner
`
`________________
`
`Case IPR2016-00387
`Patent 8,841,778
`
`________________
`
`UNOPPOSED MOTION FOR PRO HAC VICE ADMISSION OF
`MICHAEL C. NEWMAN UNDER 37 C.F.R § 42.10
`
`
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`SAMSUNG ELECTRONICS CO., LTD
`MICRON TECHNOLOGY, INC.; AND
`SK HYNIX INC.,
`Petitioners,
`
`v.
`
`ELM 3DS INNOVATIONS, LLC
`Patent Owner
`
`________________
`
`Case IPR2016-00387
`Patent 8,841,778
`
`________________
`
`UNOPPOSED MOTION FOR PRO HAC VICE ADMISSION OF
`MICHAEL C. NEWMAN UNDER 37 C.F.R § 42.10
`
`
`
`Case IPR2016-00387
`Patent No. 8,841,778
`
`I.
`
`Relief Requested
`
`Pursuant to 37 C.F.R. § 42.10(c) and the Board’s “Notice of Filing Date
`
`Accorded to Petition and Time for Filing Patent Owner Preliminary Response,”
`
`entered in this matter, which authorized the parties to file motions for pro hac vice
`
`admission under 37 C.F.R. § 42.10(c), Patent Owner requests that the Board admit
`
`Michael C. Newman pro hac vice in this proceeding.
`
`II.
`
`Statement of Facts
`Pursuant to 37 C.F.R. § 42.10(c), the Board may recognize counsel pro hac
`
`vice during a proceeding upon a showing of good cause, subject to the condition
`
`that lead counsel be a registered practitioner and to any other conditions as the
`
`Board may impose. For example, 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. 37 C.F.R. § 42.10(c).
`
`The facts, supported by the attached Declaration of Michael C. Newman in
`
`Support of Patent Owner’s Motion for Admission Pro Hac Vice (“Newman
`
`Decl.”), establish good cause to admit Mr. Newman pro hac vice in this
`
`proceeding.
`
`Lead counsel Cyrus A. Milton is a registered practitioner before the USPTO.
`
`First backup counsel William A. Meunier is a registered practitioner and is
`1
`
`
`
`Case IPR2016-00387
`Patent No. 8,841,778
`
`experienced in proceedings before the USPTO. Backup counsel Michael T.
`
`Renaud is also a registered practitioner and is experienced in proceedings before
`
`the USPTO.
`
`Mr. Newman is an experienced litigating attorney. He has been a patent
`
`litigation attorney for ten years, and is currently a Partner at Mintz Levin Cohn
`
`Ferris Glovsky and Popeo PC. (Newman Decl. at ¶ 1.) Mr. Newman is a member
`
`in good standing of the Massachusetts State Bar, with no suspensions or
`
`disbarments from practice, nor any application for admission to practice denied,
`
`nor any sanctions or contempt citations, and is admitted to practice in the United
`
`States District Courts for the District of Massachusetts, the United States Court of
`
`Appeals for the Federal Circuit. (Id. at ¶¶ 2-5.) His mailing address is at One
`
`Financial Center, Boston MA, 02111. His email address is
`
`mcnewman@mintz.com, and his direct dial is 617-348-1626.
`
`Mr. Newman is particularly familiar with the subject matter at issue in this
`
`proceeding, as well as the parallel litigations involving U.S. Patent No. 8,841,778
`
`filed by Patent Owner in the U.S. District Court for the District of Delaware (Civil
`
`Actions Nos. 14-cv-1430-LPS, 14-cv-1431-LPS, 14-cv-1432-LPS). Mr. Newman
`
`has extensively reviewed all relevant materials for this matter, including all case
`
`pleadings, orders, and notices; U.S. Patent No. 8,841,778; the patent prosecution
`
`history; and the Petitioner’s asserted prior art. In addition, Mr. Newman has a
`
`2
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`Case IPR2016-00387
`Patent No. 8,841,778
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`thorough understanding of the grounds of unpatentability asserted in the Petition
`
`and the challenged claims instituted in this action. (Id. at ¶ 10.)
`
`Mr. Newman has read and will comply with the Office Patent Trial Practice
`
`Guide and the Board's Rules for Practice for Trials set forth in part 42 of the C.F.R,
`
`and he agrees to be subject to the USPTO Rules of Professional Conduct set forth
`
`in 37 C.F.R. §§ 11.101 et seq., and to disciplinary jurisdiction under 37 C.F.R. §
`
`11.19(a). (Id. at ¶¶ 6-7.)
`
`Mr. Newman applied and was admitted to appear pro hac vice in the
`
`following proceeding during the past three (3) years: Samsung Electronics Co.,
`
`LTD et.al. v. Straight Path IP Group, Inc. (IPR2014-01366, IPR2014-01367 &
`
`IPR2014-01368) and LG Electronics, Inc. et al. v. Straight Path IP Group, Inc.
`
`(IPR2015-00196; IPR2015-00198; & IPR2015-00209). (Id. at ¶ 8.)
`
`For these reasons Patent Owner respectfully requests that the Board admit
`
`Michael C. Newman pro hac vice in this proceeding.
`
`Dated: September 13, 2016
`
`/William Meunier/
`William A. Meunier (Reg. No. 41,193)
`Mintz, Levin, Cohn, Ferris, Glovsky
`and Popeo, P.C.
`One Financial Center
`Boston, MA 02111
`Telephone: (617) 348-1845
`Facsimile: (617) 542-2241
`ELM_3DS_IPRs@mintz.com
`
`3
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`
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`Case IPR2016-00387
`Patent No. 8,841,778
`
`CERTIFICATE OF SERVICE
`
`I certify that a copy of Patent Owner’s Unopposed Motion for Pro Hac Vice
`
`Admission of Michael Newman Under 37 C.F.R. § 42.10 and Declaration of
`
`Michael C. Newman in support of Unopposed Motion for Pro Hac Vice Admission
`
`are being served by electronic mail on the following counsel of record:
`
`Petitioners
`
`Jason A. Engel (Reg. No. 51,654)
`K&L GATES LLP
`70 West Madison Street, Suite 3100
`Chicago, IL 60602
`Telephone: (312) 807-4236
`Facsimile: (312) 827-8145
`jason.engel.PTAB@klgates.com
`
`John Kappos (Reg. No. 37,861)
`O’MELVENY & MYERS LLP
`610 Newport Center Drive, 17th Floor
`Newport Beach, CA 92660
`Telephone: (949) 823-6900
`Facsimile: (949) 823-6994
`jkappos@omm.com
`PTABMICRONELM@omm.com
`
`Patent Owner
`
`Cyrus A. Morton (Reg. No. 44,954)
`cmorton@robinskaplan.com
`Kelsey J. Thorkelson (Reg. No. 73,130)
`kthorkelson@robinskaplan.com
`Samuel L. Walling (Pro Hac Vice)
`SWalling@RobinsKaplan.com
`ROBINS KAPLAN LLP
`
`Naveen Modi (Reg. No. 46,224)
`PAUL HASTINGS LLP
`875 15th Street, N.W.
`Washington, D.C. 20005
`Telephone: (202) 551-1700
`Facsimile: (202) 551-1705
`PH-Samsung-ELM-IPR@paulhastings.com
`
`James Carmichael (Reg. No. 45,306)
`jim@carmichaelip.corn
`CARMICHAEL IP, PLLC
`8000 Towers Crescent Drive, 13th Floor
`Tysons Corner, VA 22182
`Tel.: (703) 646-9250
`
`4
`
`
`
`2800 LaSalle Plaza
`Minneapolis, MN 55402-2015
`Tel.: (612) 349-8500
`Fax: (612) 339-4181
`
`Dated: September 13, 2016
`
`Case IPR2016-00387
`Patent No. 8,841,778
`
`/William A. Meunier/
`William A. Meunier (Reg. No. 41,193)
`Mintz, Levin, Cohn, Ferris, Glovsky
`and Popeo, P.C.
`One Financial Center
`Boston, MA 02111
`Telephone: (617) 348-1615
`Facsimile: (617) 542-2241
`ELM_3DS_IPRs@mintz.com
`
`5
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