IPR2016-01159
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`U.S. Pat. No. 8,694,657
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
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`FACEBOOK INC.
`Petitioner
`v.
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`WINDY CITY INNOVATIONS, LLC
`Patent Owner
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`
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`U.S. Pat. No. 8,694,657
`Issue Date: April 8, 2014
`Title: REAL TIME COMMUNICATIONS SYSTEM
`__________________________________________________________________
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`WINDY CITY INNOVATIONS, LLC’S MOTION FOR PRO HAC VICE
`ADMISSION OF ALFRED R. FABRICANT PURSUANT TO 37 C.F.R. §
`42.10
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`Case No. IPR2016-01159
`__________________________________________________________________
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`U.S. Pat. No. 8,694,657
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
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`FACEBOOK INC.
`Petitioner
`v.
`
`WINDY CITY INNOVATIONS, LLC
`Patent Owner
`
`
`
`
`
`
`
`U.S. Pat. No. 8,694,657
`Issue Date: April 8, 2014
`Title: REAL TIME COMMUNICATIONS SYSTEM
`__________________________________________________________________
`
`WINDY CITY INNOVATIONS, LLC’S MOTION FOR PRO HAC VICE
`ADMISSION OF ALFRED R. FABRICANT PURSUANT TO 37 C.F.R. §
`42.10
`
`Case No. IPR2016-01159
`__________________________________________________________________
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`I. RELIEF REQUESTED
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`IPR2016-01159
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`U.S. Pat. No. 8,694,657
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`Pursuant to 37 C.F.R. § 42.10 and Patent Owner’s Request for Authorization
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`to file for Pro Hac Vice admission filed concurrently herewith and dated January
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`17, 2017, Patent Owner, Windy City Innovations, LLC, requests that the Board
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`admit Alfred R. Fabricant pro hac vice in this proceeding.
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`II. STATEMENT OF FACTS SHOWING GOOD CAUSE FOR THE
`BOARD TO RECOGNIZE COUNSEL PRO HAC VICE DURING THE
`PROCEEDING
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`In accordance with 37 C.F.R. § 42.10(c), the Board may recognize counsel
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`pro hac vice during a proceeding upon showing of good cause, subject to the
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`condition that lead counsel be a registered practitioner and to any other conditions
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`as the Board may impose. 37 C.F.R. § 42.10(c) states that, “where lead counsel is
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`a registered practitioner, a motion to appear pro hac vice may be granted upon a
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`showing that counsel is an experienced litigating attorney and has an established
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`familiarity with the subject matter at issue in the proceeding.” The facts here
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`establish good cause for the Board to recognize Alfred R. Fabricant pro hac vice
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`during this proceeding:
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`1. Lead counsel, Vincent J. Rubino, III, is a registered practitioner.
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`2. Counsel, Alfred R. Fabricant, is an experienced patent litigator and
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`has an established familiarity with the subject matter at issue in the proceeding.
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`Accompanying this motion is the Declaration of Alfred R. Fabricant in Support of
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`1
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`IPR2016-01159
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`U.S. Pat. No. 8,694,657
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`this Motion for Admission Pro Hac Vice of Alfred R. Fabricant (“Fabricant
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`Decl.”) In his declaration, Mr. Fabricant attests that he is a member in good
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`standing of the Bar of the States of New York and Arizona, and is also admitted to
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`practice in the United States District Courts for the Southern District of New York,
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`the Eastern District of New York, the District of Arizona, and the Eastern District
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`of Texas; the United States Courts of Appeal for the Federal Circuit, the Second
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`Circuit, and the Fourth Circuit; and the United States Supreme Court. Fabricant
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`Decl. ¶2.
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`3. Mr. Fabricant is an experienced litigating attorney. He has over 20
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`year of patent litigation experience. Fabricant Decl. ¶1. Mr. Fabricant has been a
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`first-chair litigator in over 30 patent infringement cases. Fabricant Decl. ¶1.
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`4. Mr. Fabricant also attests that he is familiar with the subject matter
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`and patent-at-issue in this proceeding. He has spent a substantial amount of time
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`becoming familiar with the subject matter of the patent-at-issue, including
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`reviewing the patent itself, the patent’s file history, the pertinent prior art, the
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`Petition, and the accompanying exhibits. He has spent a substantial amount of
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`time becoming similarly familiar with the subject matter of the patents-at-issue in
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`related IPR proceedings. Mr. Fabricant has spent a substantial amount of time
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`becoming familiar with the papers and exhibits filed in the instant proceeding and
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`the related proceedings involving Windy City Innovations, LLC, which include:
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`2
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`IPR2016-01159
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`U.S. Pat. No. 8,694,657
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`IPR2016-01067 (U.S. Pat. No. 8,407,356), IPR2016-01137 (U.S. Pat. No.
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`8,473,552), IPR2016-01138 (U.S. Pat. No. 8,473,552), IPR2016-01141 (U.S. Pat.
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`No. 8,458,245), IPR2016-01146 (U.S. Pat. No. 8,473,552), IPR2016-01147 (U.S.
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`Pat. No. 8,473,552), IPR2016-01155 (U.S. Pat. No. 8,694,657), IPR2016-01156
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`(U.S. Pat. No. 8,458,245), IPR2016-01157 (U.S. Pat. No. 8,407,356), IPR2016-
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`01158 (U.S. Pat. No. 8,473,552), and IPR2016-01159 (U.S. Pat. No. 8,694,657).
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`Fabricant Decl. ¶7.
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`5. Mr. Fabricant attests to each of the pro hac vice declaration
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`requirements listed in the Board’s Order in Case No. IPR2013-00639 (Paper 7).
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`Fabricant Decl., ¶¶ 1–10.
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`6. Mr. Fabricant has read and will comply with the Office Patent Trial
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`Practice Guide and the Board’s Rules of Practice for Trials, as set forth in Part 42
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`of 37 C.F.R. Fabricant Decl., ¶ 5.
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`7. Mr. Fabricant agrees to be subject to the USPTO Rules of
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`Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary
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`jurisdiction under 37 C.F.R. § 11.19(a) and to be subject to the USPTO Rules of
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`Professional Conduct as set forth in Changes to Representation of Others Before
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`the United States Patent and Trademark Office; Final Rule, 78 Fed. Reg. 20180
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`(Apr. 3, 2013) (effective May 3, 2013). Fabricant Decl., ¶ 6.
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`8. Mr. Fabricant attests that, in the last three years, he has applied to
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`3
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`IPR2016-01159
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`U.S. Pat. No. 8,694,657
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`appear pro hac vice in the following proceedings before the Office: IPR2016-0018
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`(granted, Paper 23 entered May 4, 2016); IPR2016-00418 (granted, Paper 11
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`entered May 3, 2016); IPR2016-00419 (granted, Paper 10 entered May 3, 2016);
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`IPR2016-00421 (granted, Paper 11 entered May 19, 2016); and IPR2016-00422
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`(granted, Paper 10 entered May 19, 2016). Fabricant Decl., ¶ 8.
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`III. CONCLUSION
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`The requirements for admission pro hac vice being hereby established,
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`Patent Owner respectfully requests that the Board admit Alfred R. Fabricant pro
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`hac vice as back-up counsel in this proceeding.
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`Respectfully submitted,
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`/Vincent J. Rubino, III /
`Lead Counsel for Petitioner
`
`Vincent J. Rubino, III (Reg. No. 68,504)
`Lead Counsel for Petitioner
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Tel: 212-209-4800
`Fax: 212-209-4801
`Email: vrubino@brownrudnick.com
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`Dated January 17, 2017
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`4
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`IPR2016-01159
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`U.S. Pat. No. 8,694,657
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6(e)(4) & 42.105(a)
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`A copy of WINDY CITY INNOVATIONS, LLC’S MOTION FOR PRO
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`HAC VICE ADMISSION OF ALFRED R. FABRICANT PURSUANT TO 37
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`C.F.R. § 42.10 has been served on Petitioner at the correspondence of the
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`Petitioner as follows:
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`By Email:
`
`Heidi L. Keefe (Reg. No. 40,673)
`hkeefe@cooley.com
`zpatdcdocketing@cooley.com
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`
`By Email:
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`Andrew C. Mace (Reg. No. 63,342)
`amace@cooley.com
`zpatdcdocketing@cooley.com
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
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`January 17, 2017
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`By:
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`By Email:
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`Phillip E. Morton (Reg. No. 57,835)
`pmorton@cooley.com
`zpatdcdocketing@cooley.com
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington D.C. 20004
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`
`
` /Vincent J. Rubino, III/
`
`
`Vincent J. Rubino, III (Reg. No. 68,504)
`Lead Counsel for Petitioner
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Tel: 212-209-4800
`Fax: 212-209-4801
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