Paper No. ____
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`
`
`SAMSUNG ELECTRONICS CO., LTD.;
`MICRON TECHNOLOGY, INC.; and
`SK HYNIX INC.
`Petitioner
`
`v.
`
`ELM 3DS INNOVATIONS, LLC
`Patent Owner
`
`____________________
`
`Case No. IPR2016-00387
`U.S. Patent No. 8,841,778
`____________________
`
`PETITIONER’S MOTION FOR ADMISSION
`PRO HAC VICE OF ANDREW B. GROSSMAN
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`
`
`SAMSUNG ELECTRONICS CO., LTD.;
`MICRON TECHNOLOGY, INC.; and
`SK HYNIX INC.
`Petitioner
`
`v.
`
`ELM 3DS INNOVATIONS, LLC
`Patent Owner
`
`____________________
`
`Case No. IPR2016-00387
`U.S. Patent No. 8,841,778
`____________________
`
`PETITIONER’S MOTION FOR ADMISSION
`PRO HAC VICE OF ANDREW B. GROSSMAN
`
`
`
`Case No. IPR2016-00387
`Patent No. 8,841,778
`
`Petitioner Samsung Electronics Co., Ltd.; Micron Technology, Inc.; and SK
`
`hynix Inc. (collectively, “Petitioner”) requests that the Board recognize Andrew B.
`
`Grossman as counsel pro hac vice in this proceeding. Patent Owner Elm 3DS
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`Innovations, LLC (“Patent Owner”) has indicated that it does not oppose this
`
`motion. A Declaration of Andrew B. Grossman (“Grossman Decl.”) in support of
`
`this motion is provided herewith. Because this motion meets all of the Board’s
`
`requirements for admission pro hac vice, Petitioner requests that the Board grant
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`this motion.
`
`I.
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`TIME FOR FILING
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`This motion is being filed in accordance with 37 C.F.R. § 42.10(c) and the
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`Notice of Filing Date Accorded to Petition and Time for Filing Patent Owner
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`Preliminary Response entered on January 6, 2016 (Paper 5). This motion is being
`
`filed no sooner than 21 days after December 28, 2015, the date of service of the
`
`Petition (Paper 1).
`
`II.
`
`STATEMENT OF FACTS SHOWING GOOD CAUSE
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`As demonstrated below, there is good cause for the Board to recognize Mr.
`
`Grossman pro hac vice.
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`First, Petitioner’s lead counsel, Jason Engel (Reg. No. 51,654), is a
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`registered practitioner.
`
`
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`1
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`
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`Case No. IPR2016-00387
`Patent No. 8,841,778
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`Second, Mr. Grossman is a partner at Paul Hastings LLP and has more than
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`fourteen years of experience as a patent litigator in District Courts across the
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`country, before the International Trade Commission, and at the Court of Appeals
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`for the Federal Circuit. (Grossman Decl., ¶ 2.)
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`Third, Mr. Grossman has established familiarity with the subject matter at
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`issue in this proceeding. (Id., ¶¶ 9-11.) Patent Owner asserted the patent at issue
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`here, U.S. Patent No. 8,841,778 (“the ’778 patent”), against Petitioner Samsung
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`Electronics Co., Ltd. in a parallel litigation in the United States District Court for
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`the District of Delaware (Civil Action Nos. 14-cv-1430).1 Mr. Grossman has been
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`actively involved in all aspects of the parallel litigation, including aspects
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`concerning the invalidity of the ’778 patent. (Id., ¶¶ 10-11.)
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`Fourth, Mr. Grossman is a member in good standing of the Bar of California
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`and at least six federal courts. (Id., ¶ 1.) He has never been suspended or disbarred
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`from practice before any court or administrative body. (Id., ¶ 3.) He has never had
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`an application for admission to practice before any court or administrative body
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`denied. (Id., ¶ 4.) He has never had sanctions or contempt citations imposed by any
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`
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` 1
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` Patent Owner also asserted the ’778 patent in the United States District Court for
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`the District of Delaware against Petitioner Micron Technology, Inc. (Civil Action
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`No. 14-cv-1431) and Petitioner SK hynix Inc. (Civil Action No. 14-cv-1432).
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`
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`2
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`
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`Case No. IPR2016-00387
`Patent No. 8,841,778
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`court or administrative body. (Id., ¶ 5.) Before the Office, he was admitted pro hac
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`vice in IPR2015-00224. (Id., ¶ 8.) He has not applied to appear pro hac vice in any
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`other proceeding before the Office in the last three years. (Id.)
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`Fifth, he has 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 37 C.F.R.
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`(Id., ¶ 6.) He also agrees to be subject to the USPTO Rules of Professional
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`Conduct set forth in 37 C.F.R. §§ 11.101, et seq., and disciplinary jurisdiction
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`under 37 C.F.R. § 11.19(a). (Id., ¶ 7.)
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`Sixth, given Mr. Grossman’s experience with the ’ 778 patent, admission of
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`Mr. Grossman pro hac vice will enable Petitioner to avoid unnecessary expense
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`and duplication of work between this proceeding and the parallel litigation.
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`For at least these reasons, good cause exists to admit Mr. Grossman pro hac
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`vice in this proceeding.
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`III. DECLARATION
`The required Declaration of Andrew B. Grossman in support of this motion
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`is being filed concurrently herewith as Exhibit 1077.
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`IV. CONCLUSION
`For the foregoing reasons, Petitioner submits that there is good cause for the
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`Board to recognize Mr. Grossman as counsel pro hac vice in this proceeding.
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`3
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`Case No. IPR2016-00387
`Patent No. 8,841,778
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`
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`
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`Respectfully submitted,
`
`By: /Jason A. Engel/
`Jason A. Engel
`Reg. No. 51,654
`Counsel for Petitioner
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`Dated: September 30, 2016
`
`
`
`4
`
`
`
`
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`CERTIFICATE OF SERVICE
`I hereby certify that on September 30, 2016, 2016, I caused a true and
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`correct copy of the foregoing to be served electronically on the following counsel
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`of record for Patent Owner at the following email addresses:
`
`William A. Meunier
`Michael T. Renaud
`Michael C. Newman
`MINTZ, LEVIN, COHN, FERRIS,
`GLOVSKY AND POPEO, P.C.
`One Financial Center
`Boston, MA 02111
`WAMeunier@mintz.com
`mtrenaud@mintz.com
`mcnewman@mintz.com
`ELM_3DS_IPRs@mintz.com
`
`James Carmichael
`CARMICHAEL IP, PLLC
`8000 Towers Crescent Drive, 13th Floor
`Tysons Corner, VA 22182
`jim@carmichaelip.com
`
`
`
`
`
`
`/Naveen Modi/
`Naveen Modi (Reg. No. 46,224)
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