UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`PRIME FOCUS CREATIVE SERVICES CANADA INC.
`Petitioner
`v.
`LEGEND3D, INC.
`Patent Owner
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`CASE IPR2016-01243
`Patent No. 7,907,793
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`PATENT OWNER’S MOTION FOR ADMISSION PRO HAC VICE OF
`DANNA J. COTMAN UNDER 37 CFR § 42.10
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`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`__________________
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`PRIME FOCUS CREATIVE SERVICES CANADA INC.
`Petitioner
`v.
`LEGEND3D, INC.
`Patent Owner
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`__________________
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`CASE IPR2016-01243
`Patent No. 7,907,793
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`__________________
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`PATENT OWNER’S MOTION FOR ADMISSION PRO HAC VICE OF
`DANNA J. COTMAN UNDER 37 CFR § 42.10
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`Case No.: IPR2016-01243
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`Docket No.: LF-L0015
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`I. RELIEF REQUESTED
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`Pursuant to 37 Code of Federal Regulations (“CFR”) § 42.10, and the
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`Board’s prior authorization for this Motion for Pro Hac Vice Admission dated June
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`30, 2016 (Paper 3), Patent Owner Legend3D, Inc. (“Patent Owner”) respectfully
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`requests that the Board admit Danna J. Cotman pro hac vice in this proceeding.
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`II. GOVERNING AUTHORITY
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`37 CFR § 42.10(c) states as follows:
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`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 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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`Further, the Board requires that pro hac vice admission be filed in
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`accordance with a representative order reflected by Unified Patents, Inc. v.
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`Parallel Iron, LLC, Case IPR2013-00639 (PTAB October 15, 2013) (Paper 7)
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`(“Representative Order”). The Representative Order states that the motion for pro
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`had vice admission must “[c]ontain a statement of facts showing there is good
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`cause for the Board to recognize counsel pro hac vice during the proceeding,” and
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`that the motion “[b]e accompanied by an affidavit or declaration of the
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`Docket No.: LF-L0015
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` individual seeking to appear attesting to the following:”
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`i. Membership in good standing of the Bar of at least one
`State or the District of Columbia;
`ii. No suspensions or disbarments from practice before any
`court or administrative body;
`iii. No application for admission to practice before any court
`or administrative body ever denied;
`iv. No sanctions or contempt citations imposed by any court
`or administrative body;
`v.
`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.;
`vi. The individual will be subject to the USPTO Code of
`Professional Responsibility set forth in 37 C.F.R. §§ 10.20 et seq. and
`disciplinary jurisdiction under 37 C.F.R. § 11.19(a);
`vii. All other proceedings before the Office for which the
`individual has applied to appear pro hac vice in the last (3) years; and
`viii. Familiarity with the subject matter at issue in the
`proceeding.
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`III. STATEMENT OF FACTS
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`As a preliminary matter, lead counsel for this proceeding is a registered
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`practitioner: Mr. Joseph J. Mayo, Reg. No. 53288. With that said, the following
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`facts, supported by the Declaration of Danna J. Cotman (“Cotman Dec.”)
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`(LEGEND3D Ex.1016), establish good cause to admit Ms. Cotman pro hac vice in
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`this proceeding (and the ensuing paragraph numbers correspond with both the
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`Representative Order numbers referenced above and the paragraph numbers set
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`forth in the Cotman Dec. with the addition of one final paragraph).
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`1. Ms. Cotman is a member in good standing of the Bar of the State of
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`California (State Bar Number 188245) admitted in June 1997.
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`2. Ms. Cotman has not been suspended or disbarred from practice before
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`any court or administrative body.
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`3. Ms. Cotman has never had an application for admission to practice
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`before any court or administrative body denied.
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`4. No sanctions or contempt citations have been imposed against Ms.
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`Cotman by any court or administrative body.
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`5. Ms. Cotman 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 set forth in part 42 of
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`37 C.F.R.
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`6. Ms. Cotman will be subject to the USPTO Rules of Professional
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`Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction under
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`37 C.F.R. § 11.19(a).
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`7. Ms. Cotman previously applied and was granted pro hac vice status
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`before this office in Legend3D, Inc. v. Prime Focus VFX Services II Inc. Inter
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`Partes Review petition (IPR2015-01350) and in Legend3D, Inc. v. Prime Focus
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`VFX Services II Inc. Inter Partes Review petition (IPR2016-00806).
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`8. Ms. Cotman is an experienced litigation attorney, with ten (10) years
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`of experience litigating patent cases in federal courts. Her experience includes
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`representing clients in other intellectual property related litigation as well. She has
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`appeared as counsel for Legend3D in a number of litigation matters (including
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`patent litigation) over the span of her career. Further, she is currently lead counsel
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`for the defense in the related patent infringement lawsuit entitled Prime Focus
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`Creative Services Canada, Inc. v. Legend3D, Inc., United States District Court,
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`Central District of California, Case No. 2:15-cv-02340-MWF-PLA, and she
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`therefore knows the issues involved in that case which overlap with numerous
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`issues involved in this proceeding.
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`9. Ms. Cotman has worked with lead counsel and from her experience,
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`she is familiar with the established practices of the Board.
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`10. This motion is unopposed as the parties have further agreed in the
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`attached email correspondence dated July 6, 2016, to a mutual non-opposition for
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`pro hac vice admission of Jonathan Kagan, for petitioner, and Danna J. Cotman,
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`for patent owner. (LEGEND3D Ex. 1017)
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`IV. GOOD CAUSE EXISTS FOR PRO HAC VICE ADMISSION
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`The facts contained in the Statement of Facts above, and contained in the
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`Cotman declaration, establish that there is good cause to admit Ms. Cotman pro
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`hac vice in this proceeding under 37 CFR § 42.10(c). Lead counsel is a registered
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`practitioner, Ms. Cotman is an experienced litigating attorney, and Ms. Cotman has
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`an established familiarity with the subject matter at issue in the proceeding as lead
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`trial counsel in the co-pending district court litigation involving the same patent
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`and concomitantly a number of the same issues.
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`V. CONCLUSION
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`For the foregoing reasons, Petitioner Legend3D, Inc. respectfully requests
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`that the Board admit Ms. Cotman pro hac vice in this proceeding.
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`Dated: July 12, 2016
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`Respectfully submitted,
`By: /Joseph J. Mayo/
`Joseph J. Mayo, Reg. No.: 53288
`ARC IP Law, PC
`7744 Herschel Avenue
`La Jolla, CA 92037
`P. (858) 442-5877
`F. (858) 777-5425
`Counsel for Petitioner
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`Docket No.: LF-L0015
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`CERTIFICATE OF SERVICE
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`Case No.: IPR2016-01243
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`Pursuant to 37 Code of Federal Regulations § 42.6, the undersigned certifies
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`that on July 12, 2016, a copy of the foregoing document was served via Express
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`Mail on counsel of record identified below, and a courtesy copy was sent
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`electronically, and that this document was filed with the Patent Trial and Appeal
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`Board via the PTAB End-to-End System.
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`IRELL & MANELLA LLP
`Joshua Glucoft, Esq.
`Jonathan S. Kagan
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067-4276
`PrimeFocusIPR@irell.com
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`/Marie L. Acosta/
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`6
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