UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`
`ARRIS GROUP, INC.,
`Petitioner
`
`v.
`
`
`
`
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
`Patent Owner
`
`____________
`
`
`
`Case IPR2016-00766
`Patent 5,659,891
`
`____________
`
`
`
`MOTION FOR PRO HAC VICE ADMISSION
`OF
`HENNING SCHMIDT UNDER 37 C.F.R. §42.10(c)
`
`
`
`
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`
`ARRIS GROUP, INC.,
`Petitioner
`
`v.
`
`
`
`
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
`Patent Owner
`
`____________
`
`
`
`Case IPR2016-00766
`Patent 5,659,891
`
`____________
`
`
`
`MOTION FOR PRO HAC VICE ADMISSION
`OF
`HENNING SCHMIDT UNDER 37 C.F.R. §42.10(c)
`
`
`
`
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`I.
`
`RELIEF REQUESTED.
`
`Pursuant to 37 C.F.R. §42.10(c), Patent Owner Mobile Telecommunications
`
`Technologies, LLC (“MTel”), by and through its attorneys, respectfully requests
`
`that the Board admit Henning Schmidt pro hac vice in this proceeding.
`
`II. GOVERNING LAW, RULES, AND PRECEDENT.
`
`Section 42.10(c) states as follows:
`
`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.
`Further, the Board requires that a motion for pro hac vice admission be filed
`
`in accordance with the “ORDER-AUTHORIZING MOTION FOR PRO HAC
`
`VICE ADMISSION – 37 C.F.R. § 42.10” in Motorola Mobility LLC v. Patent of
`
`Michael Arnouse, Case No. IPR2013-00010 (“Representative Order”). The
`
`Representative Order states that the motion must “[c]ontain a statement of facts
`
`showing there is good cause for the Board to recognize counsel pro hac vice during
`
`the proceeding,” and “[b]e accompanied by an affidavit or declaration of the
`
`individual seeking to appear attesting to the following:”
`
`1
`
`
`
`i.
`
`ii.
`
`iii.
`
`iv.
`
`v.
`
`vi.
`
`Membership in good standing of the Bar of at least
`one State or the District of Columbia;
`No suspensions or disbarments from practice
`before any court or administrative body;
`No application for admission to practice before
`any court or administrative body ever denied;
`No sanctions or contempt citations imposed by any
`court or administrative body;
`The individual seeking to appear has read and will
`comply with the Office Patent Trial Practice Guide
`and the Board’s Rules of Practice for Trials set
`forth in part 42 of the C.F.R.;
`The individual will be subject to the USPTO Code
`of Professional Responsibility set forth in 37
`C.F.R. §§10.20
`et
`seq.1
`and disciplinary
`jurisdiction under 37 C.F.R. §11.19(a);
`All other proceedings before the Office for which
`the individual has applied to appear pro hac vice in
`the last three (3) years; and
`Familiarity with the subject matter at issue in the
`proceeding.
`III. STATEMENT OF FACTS.
`
`
`
`vii.
`
`viii.
`
`Based on the following statement of facts, as supported by the Declaration of
`
`Henning Schmidt submitted herewith, MTel submits that a showing of good cause
`
`has been made and respectfully requests the pro hac vice admission of Henning
`
`Schmidt in this proceeding:
`
`
`
`2
`
`
`
`
`
`
`
`1.
`
`2.
`
`Patent Owner’s lead counsel, John R. Kasha, is a registered
`practitioner
`(Reg. No. 53,100).
`Patent Owner’s backup counsel, Kelly L. Kasha, is a registered
`practitioner
`(Reg. No. 47,743).
`3. Mr. Schmidt is a partner at the law firm of Reed & Scardino LLP. He
`is an experienced litigating attorney with experience litigating patent
`issues. Declaration of Henning Schmidt at ¶6.
`4. Mr. Schmidt is a member in good standing of the State Bar of Texas.
`5. Mr. Schmidt has never been suspended or disbarred from practice
`before any court or administrative body. Id. at ¶3.
`No application filed by Mr. Schmidt for admission to practice before
`any court or administrative body has ever been denied. Id. at ¶4.
`No sanctions or contempt citations have been imposed against Mr.
`Schmidt by any court or administrative body. Id. at ¶5.
`8. Mr. Schmidt has read and agrees to comply with the Office Patent
`Trial Practice Guide and the Board’s Rules of Practice for Trials set
`forth in part 42 of the C.F.R. Id. at ¶7.
`9. Mr. Schmidt understands that he will be subject to the USPTO Rules
`of Professional Conduct 37 C.F.R. §§11.101 et seq. and disciplinary
`jurisdiction under 37 C.F.R. §11.19(a). Id. at ¶7.
`10. Mr. Schmidt has applied to appear pro hac vice in one other
`proceedings (IPR2013-00306) before the United States Patent and
`Trademark Office in the last three (3) years. Id. at ¶8.
`11. Mr. Schmidt has an established familiarity with the subject matter at
`issue in this proceeding. U.S. Patent No. 5,556,891 (“the ’891
`patent”). Mr. Schmidt is counsel for MTel in co-pending litigation
`involving ’891 patent and plays a central role in the litigation. As a
`result, Mr. Schmidt has acquired substantial understanding of the
`underlying legal and technological issues at stake in this proceeding.
`
`6.
`
`7.
`
`3
`
`
`
`
`
`Patent Owner has expended significant time and resources with Mr.
`Schmidt as counsel in the co-pending litigation, and wishes to
`continue using Mr. Schmidt as counsel in this proceeding. Id. at ¶9.
`IV. GOOD CAUSE EXISTS FOR PRO HAC VICE ADMISSION OF
`HENNING SCHMIDT.
`The facts outlined above in the Statement of Facts, and contained in the
`
`Declaration of Henning Schmidt, establish that there is good cause to admit Mr.
`
`Schmidt pro hac vice in this proceeding under 37 C.F.R. §42.10. Patent Owner’s
`
`lead and backup counsel are registered practitioners. As supported by Mr.
`
`Schmidt’s Declaration, Mr. Schmidt is an experienced patent litigation attorney
`
`and represents MTel on the patent at issue here in its related matters.
`
`
`
`4
`
`
`
`
`
`V. CONCLUSION.
`
`In light of the foregoing, Patent Owner respectfully requests that the Board
`
`admit Henning Schmidt pro hac vice in this proceeding.
`
`
`
`Date: October 21, 2016
`
`
`Customer No. 67050
`
`Respectfully submitted,
`
`/John R. Kasha/___________________
`John R. Kasha, Lead Counsel
`Registration No. 53,100
`Attorney for Patent Owner
`Kasha Law LLC
`14532 Dufief Mill Rd.
`North Potomac, MD 20878
`(703) 867-1886, telephone
`(301) 340-3022, facsimile
`Email: john.kasha@kashalaw.com
`
`
`
`5
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 21st day of October, 2016, a true and correct
`
`copy of Patent Owner’s Motion For Pro Hac Vice Admission and the Declaration
`
`of Henning Schmidt in Support of Motion For Pro Hac Vice Admission were
`
`served via electronic mail upon charles.griggers@thomashorstemeyer.com
`
`(Charles Griggers) and dan.gresham@thomashorstemeyer.com (Dan Gresham) -
`
`counsel of record for ARRIS Group, Inc. (“Petitioner”).
`
`
`
`
`
`Respectfully submitted,
`/John R. Kasha/
`Registration No. 53,100
`Attorney for Patent Owner
`Kasha Law LLC
`14532 Dufief Mill Rd.
`North Potomac, MD 20878
`(703) 867-1886, telephone
`(301) 340-3022, facsimile
`Email: john.kasha@kashalaw.com
`
`6
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