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 HAROLD H. DAVIS, JR.
`
`
`
`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 HAROLD H. DAVIS, JR.
`
`
`
`Case No. IPR2016-00387
`Patent No. 8,841,778
`
`Petitioner SK hynix Inc.; Samsung Electronics Co., Ltd.; and Micron
`
`Technology, Inc. (collectively, “Petitioner”) requests that the Board recognize
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`Harold H. Davis, Jr. as counsel pro hac vice in this proceeding. Patent Owner Elm
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`3DS Innovations, LLC (“Patent Owner”) has indicated that it does not oppose this
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`motion. A Declaration of Harold H. Davis, Jr. (“Davis Decl.”) in support of this
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`motion is provided herewith as Exhibit 1078. Because this motion meets all of the
`
`Board’s requirements for admission pro hac vice, Petitioner requests that the Board
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`grant this motion.
`
`I.
`
`TIME FOR FILING
`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 December 28, 2015 (Paper 5). This motion is
`
`being filed more than 21 days after the date of service of the Petition (Paper 1).
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`II.
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`STATEMENT OF FACTS SHOWING GOOD CAUSE
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`There is good cause for the Board to recognize Mr. Davis pro hac vice.
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`First, Petitioner’s lead counsel, Jason A. Engel (Reg. No. 51,654), is a
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`registered practitioner.
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`Second, Mr. Davis is a partner at K&L Gates LLP and has more than sixteen
`
`years of experience as a patent litigator in District Courts across the country,
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`before the International Trade Commission, and at the Court of Appeals for the
`
`
`
`1
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`
`
`Case No. IPR2016-00387
`Patent No. 8,841,778
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`Federal Circuit. (Davis Decl., ¶ 2.)
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`Third, Mr. Davis has established familiarity with the subject matter at issue
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`in this proceeding. (Id., ¶¶ 9-11.) Patent Owner asserted the patent at issue here,
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`U.S. Patent No. 8,841,778 (“the ’778 patent”), against Petitioner SK hynix Inc. in a
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`parallel litigation in the United States District Court for the District of Delaware
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`(Civil Action Nos. 14-cv-1432).1 Mr. Davis has been actively involved in all
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`aspects of the parallel litigation, including aspects concerning the invalidity of the
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`’778 patent. (Id., ¶¶ 10-11.)
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`Fourth, Mr. Davis is a member in good standing of the Bar of California, the
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`Bar of Florida, the Bar of Maryland, the Bar of the District of Colombia, the Bar of
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`Illinois, the Bar of Tennessee, and at least ten federal courts. (Id., ¶ 1.) He has
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`never been suspended or disbarred from practice before any court or administrative
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`body. (Id., ¶ 3.) He has never had an application for admission to practice before
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`any court or administrative body denied. (Id., ¶ 4.) He has never had sanctions or
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`contempt citations imposed by any court or administrative body. (Id., ¶ 5.) He has
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`
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` 1
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` Patent Owner has also asserted the ’778 patent in the United States District Court
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`for the District of Delaware against Petitioner Micron Technology, Inc. (Civil
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`Action No. 14-cv-1431) and Petitioner Samsung Electronics Co., Ltd. (Civil
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`Action No. 14-cv-1430).
`
`
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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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`not previously applied to appear pro hac vice before the Board. (Id., ¶ 8.)
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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. Davis’ experience with the ’778 patent, admission of Mr.
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`Davis pro hac vice will enable Petitioner to avoid unnecessary expense and
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`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. Davis pro hac vice
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`in this proceeding.
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`III. DECLARATION
`The required Declaration of Harold H. Davis, Jr. in support of this motion is
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`provided herewith as Exhibit 1078.
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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. Davis as counsel pro hac vice in this proceeding.
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`Dated: September 30, 2016
`
`
`
`Respectfully submitted,
`
`By: /s/ Jason A. Engel
`Jason A. Engel
`(Reg. No. 51,654)
`Counsel for Petitioner
`3
`
`
`
`
`
`
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`CERTIFICATE OF SERVICE
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`I hereby certify that on September 30, 2016, I caused a true and correct copy
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`of the foregoing to be served electronically on the following counsel of record for
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`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
`
`
`
`
`
`
`/s/ Naveen Modi
`Naveen Modi (Reg. No. 46,224)
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