UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICROSOFT CORPORATION,
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`Petitioner,
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`v.
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`BRADIUM TECHNOLOGIES LLC,
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`Patent Owner.
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`Case: IPR2016-00449
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`Patent No. 8,924,506 B2
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`PETITIONER'S MOTION FOR PRO HAC VICE ADMISSION
`OF MATTHEW C. BERNSTEIN UNDER 37 C.F.R. § 42.10(c)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICROSOFT CORPORATION,
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`Petitioner,
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`v.
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`BRADIUM TECHNOLOGIES LLC,
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`Patent Owner.
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`Case: IPR2016-00449
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`Patent No. 8,924,506 B2
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`PETITIONER'S MOTION FOR PRO HAC VICE ADMISSION
`OF MATTHEW C. BERNSTEIN UNDER 37 C.F.R. § 42.10(c)
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`PTAB Case No. IPR2016-00449
`Petitioner's Motion for Pro Hac Vice Admission
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`Petitioner Microsoft Corporation (“Petitioner”) respectfully requests that the
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`Board admit Matthew C. Bernstein as backup counsel pro hac vice in this
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`proceeding.
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`Mr. Bernstein is the lead litigation counsel for Petitioner in the district court
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`litigation involving U.S. Patent No. 8,924,506, and three other related patents U.S.
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`Patent Nos. 7,139,794, 7,908,343 and 9,253,239, and has substantial knowledge in
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`the substantive issues of the invalidity of the challenged claims of the ‘506 Patent
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`in this proceeding. In addition, Mr. Bernstein has experience in IPR and CBM
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`proceedings before the Board and is familiar with the rules and procedures for IPR
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`and CBM proceedings. Therefore, Mr. Bernstein meets the requirements of “an
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`experienced litigating attorney and has an established familiarity with the subject
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`matter at issue in the proceeding” under 37 C.F.R. §42.10(c).
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`1. Time For Filing
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`This Motion for Pro Hac Vice Admission has been authorized by the Notice
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`of Filing Date Accorded to Petition and Time for Filing Patent Owner Preliminary
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`Response that was mailed on January 28, 2016 (Paper 3). This Motion is filed no
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`sooner than twenty one (21) days after service of the petition.
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`1
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`PTAB Case No. IPR2016-00449
`Petitioner's Motion for Pro Hac Vice Admission
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`2.
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`Statement of Facts
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`In this proceeding, lead counsel for Petitioner is Bing Ai, a registered
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`practitioner. The following statement of facts show that there is good cause for the
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`Board to admit Mr. Bernstein pro hac vice.
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`Mr. Bernstein is a patent litigation attorney with more than 18 years of
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`experience representing clients in cases involving computer hardware and
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`software, semiconductors, Internet and e-commerce, hand held computers and
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`other mobile devices. (Affidavit of Matthew C. Bernstein (“Bernstein
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`Affidavit”), ¶ 8 in Exhibit 1012.)
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`Mr. Bernstein regularly litigates patent cases in various forums including the
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`United States Court of Appeals for the Federal Circuit, various federal district
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`courts, and the International Trade Commission (Id.) He has experience
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`representing clients in many phases of litigation including discovery, Markman
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`hearings, jury trials, and appeals. (Id.) Mr. Bernstein ’s biography is attached to
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`the Bernstein Affidavit (Exhibit 1012) as Appendix A.
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`U.S. Patent No. 8,924,506, and three other related patents, U.S. Patent Nos.
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`7,139,794, 7,908,343 and 9,253,239, are currently asserted against Petitioner in a
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`co-pending litigation, Bradium Techs. LLC v. Microsoft Corp., 1:15-cv-00031-
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`RGA, filed in the U.S. District Court for the District of Delaware on January 9,
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`2
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`PTAB Case No. IPR2016-00449
`Petitioner's Motion for Pro Hac Vice Admission
`2015 (“the co-pending litigation”). That litigation led to the inter partes review
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`proceeding under PTAB Case No. IPR2016-00449. (Id. at ¶ 9.)
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`Mr. Bernstein is lead counsel for Petitioner in the co-pending litigation and,
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`as such, oversees and handles all phases of the litigation from discovery through
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`trial. (Id. at ¶ 10.) Mr. Bernstein is familiar with the technologies and issued
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`claims in Patent No. 8,924,506, prior art references and invalidity grounds based
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`on the prior art. (Id.)
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`In addition, Mr. Bernstein has handled or has been handling more than 20
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`IPR and CBM proceedings before the Board and is familiar with the rules and
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`procedures for IPR and CBM proceedings in general. Notably, Mr. Bernstein has
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`significant knowledge on the specific issues raised in this IPR proceeding.
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`Petitioner has invested significant financial resources in the related matter in
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`which Mr. Bernstein serves as lead counsel. Petitioner therefore respectfully
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`submits that there is good cause for the Board to recognize Mr. Bernstein as
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`counsel pro hac vice during this proceeding.
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`3. Affidavit or Declaration of Individual Seeking to Appear
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`This Motion for Pro Hac Vice Admission is accompanied by an Affidavit of
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`Mr. Bernstein (Exhibit 1012), which attests to the requirements for pro hac vice
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`admission set forth in the PTAB decision in the IPR proceeding of Unified Patent
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`v. Parallel Iron, IPR2013-00639, Paper 7, dated Oct. 15, 2013.
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`3
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`PTAB Case No. IPR2016-00449
`Petitioner's Motion for Pro Hac Vice Admission
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`4. Conclusion
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`Accordingly, Petitioner submits that there is good cause under 37 C.F.R.
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`§ 42.10(c) for the Board to admit Matthew C. Bernstein as counsel pro hac vice
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`and to authorize Mr. Bernstein to represent Petitioners as back-up counsel in this
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`proceeding.
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`Respectfully submitted,
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`/Bing Ai/
`Lead Counsel
`Bing Ai, Reg. No. 43,312
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`Back-up Counsel
`Matthew Bernstein, Pro Hac Vice
`Vinay Sathe, Reg. No. 55,595
`Patrick J. McKeever, Reg. No. 66,019
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`Attorneys for Microsoft Corporation
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`4
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`Dated: December 20, 2016
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`PERKINS COIE LLP
`11988 El Camino Real, Suite 350
`San Diego, CA 92130
`(858) 720-5700
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`PTAB Case No. IPR2016-00449
`Petitioner's Motion for Pro Hac Vice Admission
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true copy of the foregoing
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`PETITIONER’S MOTION FOR PRO HAC VICE ADMISSION UNDER 37
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`C.F.R. § 42.10(c) and Exhibit 1012 was served in its entirety this 20th day of
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`December 2016 by electronic mail on the Patent Owner via its attorneys of record:
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`Chris Coulson (ccoulson@kenyon.com)
`Michael Zachary (mzachary@kenyon.com)
`Clifford Ulrich (culrich@kenyon.com)
`Bradiumiprservice@kenyon.com
`ANDREWS KURTH KENYON LLP
`One Broadway
`New York, NY 10004
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`Dated: December 20, 2016
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`Respectfully submitted,
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`/Bing Ai/
`Lead Counsel
`Bing Ai, Reg. No. 43,312
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`Back-up Counsel
`Matthew Bernstein, Pro Hac Vice
`Vinay Sathe, Reg. No. 55,595
`Patrick J. McKeever, Reg. No. 66,019
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`Attorneys for Microsoft Corporation
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`1
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`PERKINS COIE LLP
`11988 El Camino Real, Suite 350
`San Diego, CA 92130
`(858) 720-5700
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