`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`MICROSOFT CORPORATION,
`
`Petitioner,
`
`v.
`
`BRADIUM TECHNOLOGIES LLC,
`
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`Case: IPR2016-00449
`
`Patent No. 8,924,506 B2
`
`
`
`
`
`
`
`PETITIONER'S MOTION FOR PRO HAC VICE ADMISSION
`OF EVAN S. DAY UNDER 37 C.F.R. § 42.10(c)
`
`
`
`
`
`
`PTAB Case No. IPR2016-00449
`Petitioner's Motion for Pro Hac Vice Admission
`
`Petitioner Microsoft Corporation (“Petitioner”) respectfully requests that the
`
`
`
`
`Board admit Evan S. Day as back-up counsel pro hac vice in this proceeding.
`
`
`
`Mr. Day is litigation counsel for Petitioner in the district court litigation
`
`involving U.S. Patent No. 8,924,506, and three other related patents U.S. Patent
`
`Nos. 7,139,794, 7,908,343 and 9,253,239, and has substantial knowledge in the
`
`substantive issues of the invalidity of the challenged claims of the ‘506 Patent in
`
`this proceeding. In addition, Mr. Day has experience in IPR and CBM proceedings
`
`before the Board and is familiar with the rules and procedures for IPR and CBM
`
`proceedings. Therefore, Mr. Day meets the requirements of “an experienced
`
`litigating attorney and has an established familiarity with the subject matter at issue
`
`in the proceeding” under 37 C.F.R. §42.10(c).
`
`1. Time For Filing
`
`
`
`This Motion for Pro Hac Vice Admission has been authorized by the Notice
`
`of Filing Date Accorded to Petition and Time for Filing Patent Owner Preliminary
`
`Response that was mailed on January 28, 2016 (Paper 3). This Motion is filed no
`
`sooner than twenty one (21) days after service of the petition.
`
`
`
`1
`
`
`
`PTAB Case No. IPR2016-00449
`Petitioner's Motion for Pro Hac Vice Admission
`
`Statement of Facts
`
`In this proceeding, lead counsel for Petitioner is Bing Ai, a registered
`
`
`2.
`
`
`
`practitioner. The following statement of facts show that there is good cause for the
`
`Board to admit Mr. Day pro hac vice.
`
`
`
`Mr. Day is a patent litigation attorney with more than 4 years of experience
`
`representing clients in cases involving computer hardware and software, Internet
`
`and e-commerce, hand held computers and other mobile devices, optics, displays,
`
`user interfaces, mapping services, audio applications, image processing, and digital
`
`graphics. (Affidavit of Evan S. Day (“Day Affidavit”), ¶ 8 in Exhibit 1013.)
`
`
`
`Mr. Day regularly litigates patent cases in various forums including various
`
`federal district courts, and the International Trade Commission (Id.) He has
`
`experience representing clients in many phases of litigation including discovery,
`
`Markman hearings, and trial. (Id.) Mr. Day ’s biography is attached to the Day
`
`Affidavit (Exhibit 1013) as Appendix A.
`
`
`
`U.S. Patent No. 8,924,506, and three other related patents, U.S. Patent Nos.
`
`7,139,794, 7,908,343 and 9,253,239, are currently asserted against Petitioner in a
`
`co-pending litigation, Bradium Techs. LLC v. Microsoft Corp., 1:15-cv-00031-
`
`RGA, filed in the U.S. District Court for the District of Delaware on January 9,
`
`2015 (“the co-pending litigation”). That litigation led to the inter partes review
`
`proceeding under PTAB Case No. IPR2016-00449. (Id. at ¶ 9.)
`
`2
`
`
`
`PTAB Case No. IPR2016-00449
`Petitioner's Motion for Pro Hac Vice Admission
`
`Mr. Day is counsel for Petitioner in the co-pending litigation and, as such,
`
`
`
`
`oversees and handles all phases of the litigation from discovery through trial. (Id.
`
`at ¶ 10.) Mr. Day is familiar with the technologies and issued claims in Patent No.
`
`8,924,506, prior art references and invalidity grounds based on the prior art. (Id.)
`
`
`
`In addition, Mr. Day has handled multiple IPR proceedings before the Board
`
`and is familiar with the rules and procedures for IPR and CBM proceedings in
`
`general. Notably, Mr. Day has significant knowledge on the specific issues raised
`
`in this IPR proceeding.
`
`
`
`Petitioner has invested significant financial resources in the related matter in
`
`which Mr. Day serves as counsel. Petitioner therefore respectfully submits that
`
`there is good cause for the Board to recognize Mr. Day as counsel pro hac vice
`
`during this proceeding.
`
`3. Affidavit or Declaration of Individual Seeking to Appear
`
`
`
`This Motion for Pro Hac Vice Admission is accompanied by an Affidavit of
`
`Mr. Day (Exhibit 1013), which attests to the requirements for pro hac vice
`
`admission set forth in the PTAB decision in the IPR proceeding of Unified Patent
`
`v. Parallel Iron, IPR2013-00639, Paper 7, dated Oct. 15, 2013.
`
`
`
`3
`
`
`
`
`4. Conclusion
`
`PTAB Case No. IPR2016-00449
`Petitioner's Motion for Pro Hac Vice Admission
`
`
`
`Accordingly, Petitioner submits that there is good cause under 37 C.F.R.
`
`§ 42.10(c) for the Board to admit Evan S. Day as counsel pro hac vice and to
`
`authorize Mr. Day to represent Petitioner as back-up counsel in this proceeding.
`
`
`
`Respectfully submitted,
`
`/Bing Ai/
`Lead Counsel
`Bing Ai, Reg. No. 43,312
`
`Back-up Counsel
`Matthew Bernstein, Pro Hac Vice
`Vinay Sathe, Reg. No. 55,595
`Patrick J. McKeever, Reg. No. 66,019
`
`Attorneys for Microsoft Corporation
`
`
`4
`
`Dated: December 20, 2016
`
`
`
`PERKINS COIE LLP
`11988 El Camino Real, Suite 350
`San Diego, CA 92130
`(858) 720-5700
`
`
`
`
`
`
`
`PTAB Case No. IPR2016-00449
`Petitioner's Motion for Pro Hac Vice Admission
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true copy of the foregoing
`
`PETITIONER’S MOTION FOR PRO HAC VICE ADMISSION UNDER 37
`
`C.F.R. § 42.10(c) and Exhibit 1013 were served in their entirety this 20th day of
`
`December 2016 by electronic mail on the Patent Owner via its attorneys of record:
`
`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
`
`
`
`Dated: December 20, 2016
`
`Respectfully submitted,
`
`/Bing Ai/
`Lead Counsel
`Bing Ai, Reg. No. 43,312
`
`Back-up Counsel
`Matthew Bernstein, Pro Hac Vice
`Vinay Sathe, Reg. No. 55,595
`Patrick J. McKeever, Reg. No. 66,019
`
`Attorneys for Microsoft Corporation
`
`
`1
`
`
`
`PERKINS COIE LLP
`11988 El Camino Real, Suite 350
`San Diego, CA 92130
`(858) 720-5700