`IPR2016-01213
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
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`JVC KENWOOD Corporation, et al.
`Petitioners
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`v.
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`PAPST LICENSING GMBH & CO., KG
`Patent Owner
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`_______________
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`CASE: IPR2016-01213
`Patent No. 8,504,746
`_______________
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`PETITIONER’S MOTION FOR ADMISSION
`PRO HAC VICE OF RACHEL CAPOCCIA
`PURSUANT TO 37 C.F.R. § 42.10
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`IPR2016-01213
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`I .
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`RELIEF REQUESTED
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`Pursuant to 37 C.F.R. §42.10 and the Board’s “Order Authorizing Motion
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`for Pro Hac Vice Admission – 37 C.F.R. §42.10,” entered on June 23, 2016,
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`Petitioner JVC Kenwood Corporation requests that the Board admit Rachel
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`Capoccia pro hac vice in this proceeding.
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`I I . STATEMENT OF FACTS
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`Pursuant to 37 C.F.R. §42.10(c), the Board
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`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.
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`37 C.F.R. §42.10(c). The facts, supported by the attached Declaration of Rachel
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`Capoccia in Support of Motion for Admission Pro Hac Vice (“Capoccia Decl.”),
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`establish good cause to admit Ms. Capoccia pro hac vice in this proceeding.
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`1. Lead counsel Gregory S. Cordrey is a registered practitioner and
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`is experienced in inter partes proceedings in the USPTO.
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`2. Backup counsel T. Vann Pearce, Jr. is a registered practitioner
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`and is experienced in inter partes proceedings in the USPTO.
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`IPR2016-01213
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`3. Backup counsel Christopher J. Hillgins is a registered practitioner
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`and is experienced in inter partes proceedings in the USPTO.
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`4. Backup counsel David M. Maiorana is a registered practitioner
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`and is experienced in inter partes proceedings in the USPTO.
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`5. Backup counsel Matthew W. Johnson is a registered practitioner
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`and is experienced in inter partes proceedings in the USPTO.
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`6. Backup counsel David L. Witcoff is a registered practitioner and
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`is experienced in inter partes proceedings in the USPTO.
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`7. Backup counsel Marc S. Blackman is a registered practitioner and
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`is experienced in inter partes proceedings in the USPTO.
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`8. Backup counsel Dion Bregman is a registered practitioner and is
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`experienced in inter partes proceedings in the USPTO.
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`9. Rachel Capoccia is an experienced litigation attorney. Ms.
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`Capoccia has been a litigating attorney for twenty years. (Capoccia Decl. ¶ 1.) Ms.
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`Capoccia has been litigating patent cases for approximately seventeen of those
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`years. (Id. ¶ 2.) Ms. Capoccia is a member in good standing of the California
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`State Bar, with no suspensions or disbarments from practice, nor any application
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`for admission to practice denied, nor any sanctions or contempt citations, and is
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`admitted to practice in the United States Court of Appeals for the Federal Circuit,
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`United States Court of Appeals for the Ninth Circuit, and the United States District
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`3
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`IPR2016-01213
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`Courts for the Central, Northern, Southern, and Eastern Districts of California. (Id.
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`¶¶ 3-6.)
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`10. Ms. Capoccia has familiarity with the subject matter at issue in
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`this proceeding based on her work as lead counsel in the pending district court case
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`In re: Papst Licensing Digital Camera Patent Litigation – MDL No. 1880, Case
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`No. 07-mc-00493 (D.D.C.), which involves the same patent at issue in this
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`proceeding. (Id. ¶ 7.) Ms. Capoccia has represented JVC KENWOOD Corporation
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`and Panasonic Corporation and (and related corporate entities) in this district court
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`case since its outset in 2007, and has been lead counsel for those parties since 2010.
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`She has been actively involved in all aspects of the pending district court case,
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`including proceedings related to issues of invalidity of all patents-in-suit, and
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`arguing on behalf of all defendants in claim construction proceedings with respect
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`to other related patents-in-suit in 2008, and with respect to this patent and other
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`related patents-in-suit in 2016. (Id. ¶¶ 7-8.) Ms. Capoccia also argued on behalf of
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`all defendants at the Federal Circuit regarding Papst’s appeal of the District
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`Court’s non-infringement summary judgment rulings with respect to the related
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`patents at issue in the District Court case.
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`11. Ms. Capoccia has read and will comply with the Office Patent
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`Trial Practice Guide and the Board’s Rules for Practice for Trials set forth in part
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`42 of 37 C.F.R, and he agrees to be subject to the USPTO Code of Professional
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`IPR2016-01213
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`Responsibility set forth in 37 C.F.R. §§10.20 et seq., and to disciplinary
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`jurisdiction under 37 C.F.R. §11.19(a). (Id. ¶¶ 9-10.) Ms. Capoccia has applied to
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`appear pro hac vice in other proceedings before the Office in the last three (3)
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`years as indicated in the attached declaration. (Id. ¶¶11-12.)
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`12. Patent Owner Papst Licensing GMBH & Co., KG has indicated
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`that this Motion will not be opposed.
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`I I I . ANALYSIS
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`The facts contained in the Statement of Facts above, and contained in the
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`Capoccia Declaration, establish that there is good cause to admit Ms. Capoccia pro
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`hac vice in this proceeding under 37 C.F.R. §42.10. Lead counsel are registered
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`practitioners, Ms. Capoccia is an experienced patent litigation attorney, and Ms.
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`Capoccia has an established familiarity with the subject matter at issue in the
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`proceeding.
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`I V . CONCLUSION
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`For the foregoing reasons, Petitioner respectfully request that the
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`Board admit Rachel Capoccia pro hac vice in this proceeding.
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`Dated: March 23, 2017
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`/s/ Gregory S. Cordrey
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`Respectfully submitted,
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`Gregory S. Cordrey (Reg. No. 44,089)
`Lead Counsel for Petitioner
`Jeffer Mangels Butler & Mitchell LLP
`3 Park Plaza, Suite 1100
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`5
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`IPR2016-01213
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`Irvine, CA 92614
`Tel: (949) 623-7236
`Fax: (888) 712-3345
`gxc@jmbm.com
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`T. Vann Pearce, Jr. (Reg. No. 58,945)
`Back Up Counsel for Petitioner
`Orrick, Herrington & Sutcliffe
`1152 15th St. NW
`Washington, DC 20005
`Tel: (202) 339-8400
`TVPPTABDocket@orrick.com
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`Christopher J. Higgins (Reg. No.
`66,422)
`Back Up Counsel for Petitioner
`Orrick, Herrington & Sutcliffe
`1152 15th St. NW
`Washington, DC 20005
`Tel: (202) 339-8400
`0CHPTABDocket@orrick.com
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`David M. Maiorana (Reg. No. 41,449)
`Back Up Counsel for Petitioner
`Joes Day
`901 Lakeside Avenue
`Cleveland, OH 44114
`Tel: (216) 586-7499
`Fax: (216) 579-0212
`dmaiorana@jonesday.com
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`Matthew W. Johnson (Reg. No. 59,108)
`Back Up Counsel for Petitioner
`Jones Day
`500 Grant Street, Suite 4500
`Pittsburgh, PA 15219
`Tel: (412) 394-9524
`Fax: (412) 394-7959
`mwjohnson@jonesday.com
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`IPR2016-01213
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`David L. Witcoff (Reg. No. 31,443)
`Back Up Counsel for Petitioner
`Jones Day
`77 West Wacker
`Chicago, IL 60601
`Tel: (312) 269-4259
`Fax: (312) 782-8585
`dlwitcoff@jonesday.com
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`Marc S. Blackman (Reg. No. 43,501)
`Back Up Counsel for Petitioner
`Jones Day
`77 West Wacker
`Chicago, IL 60601
`Tel: (312) 269-269-4369
`Fax: (312) 782-8585
`msblackman@jonesday.com
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`Dion Bregman (Reg. No. 45,645)
`Back Up Counsel for Petitioner
`Morgan, Lewis & Bockius LLP
`1400 Page Mill Rd.
`Palo Alto, CA 94304
`Tel: (650) 843-4000
`Fax: (650) 843-4001
`dion.bregman@morganlewis.com
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`IPR2016-01213
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on March 23,
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`2017, a copy of the foregoing PETITIONER’S MOTION FOR ADMISSION
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`PRO HAC VICE OF RACHEL CAPOCCIA PURSUANT TO 37 C.F.R.
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`§ 42.10 has been served in its entirety by e-mail on the following addresses of
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`record for Petitioner:
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`ntpete@fitcheven.com
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`phenkelmann@fitcheven.com
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`jmarinelli@fitcheven.com
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`nlittle@fitcheven.com
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`ameola@themeolafirm.com
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`PapstIPR@fitcheven.com
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` /s/ Gregory S. Cordrey
`Gregory S. Cordrey
`Attorney for Petitioner
`Registration No. 44,089
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