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