Case No. IPR2016-01256
`U.S. Patent No. 8,155,298
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`YMAX CORPORATION
`Petitioner
`
`v.
`
`FOCAL IP, LLC
`Patent Owner
`
`Case: IPR2016-01256
`U.S. Patent No. 8,155,298
`
`YMAX CORPORATION’S UNOPPOSED MOTION FOR
`PRO HAC VICE ADMISSION OF ALEXANDER WALDEN
`
`
`U.S. Patent No. 8,155,298
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`YMAX CORPORATION
`Petitioner
`
`v.
`
`FOCAL IP, LLC
`Patent Owner
`
`Case: IPR2016-01256
`U.S. Patent No. 8,155,298
`
`YMAX CORPORATION’S UNOPPOSED MOTION FOR
`PRO HAC VICE ADMISSION OF ALEXANDER WALDEN
`
`
`
`Case No. IPR2016-01256
`U.S. Patent No. 8,155,298
`
`I.
`
`RELIEF REQUESTED
`
`Pursuant
`
`to 37 C.F.R. § 42.10(c), Petitioner YMax Corporation
`
`(“YMax”) respectfully requests the expedited pro hac vice admission of Alexander
`
`Walden in this proceeding. YMax has conferred with Patent Owner Focal IP LLC
`
`(“Focal IP”) and Focal IP does not have any objections to YMax’s request and will
`
`not oppose this motion.
`
`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.
`
`The Board has stated that motions for pro hac vice admission under 37
`
`C.F.R. § 42.10(c) must be filed in accordance with the “Order - Authorizing
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`Motion for Pro Hac Vice Admission” entered in Case IPR2013-000639 (“Unified
`
`
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`Case No. IPR2016-01256
`U.S. Patent No. 8,155,298
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`Patents Order”).
`
`In accordance with the Unified Patents Order, this motion is
`
`being filed no sooner than twenty-one (21) days after service of the petition.
`
`The Unified Patents Order requires that such motions (1) “[c]ontain a
`
`statement of facts showing there is good cause for the Board to recognize counsel
`
`pro hac vice during the proceeding; and (2) [b]e accompanied by an affidavit or
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`declaration of the 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
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`court or administrative body ever denied;
`
`iv.
`
`No sanctions or contempt citations imposed by any
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`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.;
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`2
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`Case No. IPR2016-01256
`U.S. Patent No. 8,155,298
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`vi.
`
`The individual 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);
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`vii. All other proceedings before the Office for which the
`
`individual has applied to appear pro hac vice in the last three
`
`(3) years; and
`
`viii. Familiarity with the subject matter at issue in the proceeding.
`
`III.
`
`STATEMENT OF FACTS
`
`Based on the following facts, and supported by the Affidavit of Alexander
`
`Walden (YMax 1028) submitted herewith, YMax requests the expedited pro hac
`
`vice admission of Alexander Walden in this proceeding:
`
`1.
`
`YMax’s lead counsel, Joseph J. Richetti,
`
`is a registered
`
`practitioner (Reg. No. 47,024).
`
`2.
`
`Mr. Walden is an associate at the law firm Bryan Cave LLP.
`
`(YMax 1028, ¶ 3).
`
`3.
`
`Mr. Walden is an experienced litigating attorney and has
`
`been a litigating attorney for more than seven years.
`
`(Id.). Mr.
`
`Walden has been litigating patent cases for over six years. (Id.).
`
`4.
`
`Mr. Walden has an established familiarity with the subject
`
`matter at issue in this proceeding. (Id., ¶ 8). Mr. Walden has litigated
`
`3
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`Case No. IPR2016-01256
`U.S. Patent No. 8,155,298
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`patent cases in the area of electrical engineering, computer science,
`
`and electronic devices since 2009. (Id.). He began representing and
`
`advising YMax in matters relating to patent strategy in early 2017.
`
`(Id.). Since that time he has become very familiar with U.S. Patent
`
`No. 8,155,298 and with its prosecution file history.
`
`(Id.).
`
`In
`
`particular, Mr. Walden has assisted YMax in preparing its reply to the
`
`patent owner’s response and other submissions in this proceeding
`
`(Id.).
`
`5.
`
`Mr. Walden is a member in good standing of the State Bar of
`
`New York. (Id., ¶ 4).
`
`6.
`
`Mr. Walden has never been suspended or disbarred from
`
`practice before any court or administrative body. (Id.).
`
`7.
`
`No application of Mr. Walden’s for admission to practice
`
`before any court or administrative body has ever been denied. (Id.).
`
`8.
`
`No sanctions or contempt citations have ever been imposed
`
`against Mr. Walden by any court or administrative body. (Id.).
`
`9.
`
`Mr. Walden 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 Code of Federal Regulators. (Id., ¶ 5).
`
`4
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`Case No. IPR2016-01256
`U.S. Patent No. 8,155,298
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`10. Mr. Walden understands that he 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). (Id., ¶ 6).
`
`11. Mr. Walden was admitted pro hac vice in Case No. IPR2016-
`
`01433 on June 19, 2017 (Paper No. 15), in Case No. IPR2015-01892
`
`on May 10, 2016 (Paper No. 18), and in Case IPR2014-00090 on
`
`October 30, 2014 (Paper No. 28). Mr. Walden also applied for pro
`
`hac vice admission in Case IPR2014-00088 and, while the Board
`
`stated on a telephone conference it had no objection to the requested
`
`pro hac vice admission, no written Order issued in that proceeding.
`
`Mr. Walden is also, concurrently herewith, applying for pro hac vice
`
`admission in two related IPR proceedings, Case Nos. IPR2016-01258
`
`and IPR2016-01260, involving the same parties. Mr. Walden has not
`
`otherwise applied to appear in any proceedings before the Office in
`
`the last three (3) years. (Id., ¶ 7).
`
`IV. GOOD CAUSE EXISTS FOR THE EXPEDITED PRO HAC VICE
`ADMISSION OF MR. WALDEN IN THIS PROCEEDING
`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. 37
`
`5
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`
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`Case No. IPR2016-01256
`U.S. Patent No. 8,155,298
`
`C.F.R. § 42.10(c). YMax’s lead counsel, Joseph J. Richetti, is a registered
`
`practitioner. Based on the facts contained herein, as supported by Mr. Walden’s
`
`Affidavit, good cause exists to expeditiously admit Mr. Walden pro hac vice in
`
`this proceeding.
`
`As supported by his Affidavit, Mr. Walden is an experienced litigating
`
`attorney with over six years of patent litigation experience. Mr. Walden also has
`
`an established familiarity with the subject matter at issue in this proceeding, as he
`
`has been representing and advising YMax in matters related to patent strategy
`
`since early 2017, including in connection with YMax’s Reply to Patent Owner’s
`
`Response submitted in this proceeding.
`
`In view of Mr. Walden’s extensive knowledge of the precise subject matter
`
`at issue in this proceeding, and in view of his involvement in advising YMax in
`
`connection with this and other related proceedings, YMax has a substantial need
`
`for Mr. Walden’s pro hac vice admission and involvement in this proceeding. In
`
`addition, the admission of Mr. Walden pro hac vice will enable YMax to avoid
`
`unnecessary expense and duplication of work in connection with the upcoming
`
`depositions in this proceeding, including a deposition that is currently scheduled
`
`for July 13, 2017. See 77 Fed. Reg. 157 (Aug. 14, 2012), at 48661 (Office’s
`
`comment on final rule discussing concerns about efficiency and costs and
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`6
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`Case No. IPR2016-01256
`U.S. Patent No. 8,155,298
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`indicating that
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`the economic impact on the party should be considered in
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`determining whether to allow counsel to appear pro hac vice).
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`Given Mr. Walden’s extensive experience with the involved patent and
`
`parties, and YMax’s desire to be represented by the counsel of its choice, the need
`
`for admission of Mr. Walden substantially outweighs any potential prejudice to
`
`Patent Owner. Moreover, YMax has conferred with Patent Owner concerning its
`
`request, and Patent Owner has indicated that it does not have any objections to the
`
`pro hac vice admission of Mr. Walden in this proceeding.
`
`V.
`
`CONCLUSION
`
`For the foregoing reasons, YMax respectfully requests that Mr. Walden be
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`expeditiously admitted pro hac vice in this proceeding.
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`The Patent Trial and Appeal Board is hereby authorized to charge any fees
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`associated with this filing to Deposit Account 02-4467.
`
`Date: July 7, 2017
`
`Respectfully submitted,
`
`By: /Joseph J. Richetti/
`Joseph J. Richetti (Reg. No. 47,024)
`BRYAN CAVE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`Direct Tel: (212) 541-1092
`Email: joe.richetti@bryancave.com
`
`Attorney for Petitioner– YMax Corporation
`
`7
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`Case No. IPR2016-01256
`U.S. Patent No. 8,155,298
`
`CERTIFICATE OF SERVICE
`
`The
`
`undersigned
`
`hereby
`
`certifies
`
`that
`
`the
`
`foregoing YMAX
`
`CORPORATION’S UNOPPOSED MOTION FOR PRO HAC VICE ADMISSION
`
`OF ALEXANDER WALDEN was served electronically via e-mail on July 7, 2017,
`
`in its entirety on the following:
`
`Bren N. Bumgardner
`brent@nelbum.com
`John Murphy
`murphy@nelbum.com
`PAL-IPR@nelbum.com
`NELSON BUMGARDNER P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, TX 76107
`
`Victor Siber
`VSiber@SiberLaw.com
`Hanna Madbak
`HMadbak@SiberLaw.com
`SIBER LAW LLP
`28 West 44th Street, Suite 604
`New York, NY 10036
`
`Date: July 7, 2017
`
`Respectfully submitted,
`
`By: /Joseph J. Richetti, Reg. No. 47024/
`Joseph J. Richetti (Reg. No. 47,024)
`BRYAN CAVE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`General Tel: (212) 541-2000
`Direct Tel: (212) 541-1092
`Fax: (212) 541-4630
`Email: joe.richetti@bryancave.com
`
`Attorney for Petitioner– YMax Corporation
`
`
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