`
`__________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`
`
`R.J. REYNOLDS VAPOR COMPANY,
`Petitioner,
`
`v.
`
`FONTEM HOLDINGS 1 B.V.
`Patent Owner.
`
`__________________
`
`
`
`Case IPR2016-01268
`Patent 8,365,742
`
`__________________
`
`
`PATENT OWNER FONTEM HOLDINGS 1 B.V.’S
`MOTION FOR PRO HAC VICE ADMISSION
`UNDER 37 C.F.R. § 42.10(c)
`
`
`LEGAL134766686.1
`
`
`
`Patent Owner Fontem Holdings 1 B.V. (“Fontem”) respectfully requests
`
`IPR2016-01268
`Patent 8,365,742
`
`
`that the Board recognize Mr. Nathan R. Kassebaum as counsel pro hac vice in
`
`this proceeding. Fontem is also (under a separate motion) requesting the same
`
`in a related proceeding (IPR2016-01692) on a related patent, U.S. Patent No.
`
`9,326,548. Fontem seeks the counsel of Mr. Kassebaum due to his experience
`
`in representing Fontem in other patent-related matters and particularly due to
`
`his familiarity with the substantive and technical issues involved in this
`
`proceeding.
`
`1.
`
`Time for Filing
`
`This Motion for Pro Hac Vice Admission is authorized by the Notice of
`
`Filing Date Accorded to Petition and Time for Filing Patent Owner Preliminary
`
`Response that was mailed on July 7, 2016 and is being filed no sooner than
`
`twenty one (21) days after service of the petition.
`
`2.
`
`Statement of Facts
`
`The following statement of facts shows that there is good cause for the
`
`Board to recognize Mr. Kassebaum pro hac vice.
`
`Mr. Kassebaum is a patent litigation attorney with more than three years
`
`of experience representing clients in patent disputes. He has more than two
`
`years of experience representing Patent Owner in patent cases involving
`
`electronic cigarettes.
`
`LEGAL134766686.1
`
`-1-
`
`
`
`
`
`U.S. Patent No. 8,365,742 was asserted by Patent Owner in Fontem
`
`IPR2016-01268
`Patent 8,365,742
`
`
`Ventures, B.V., et al. v. NJOY, Inc., et al., filed in the Central District of
`
`California on March 5, 2014, and consolidated cases. Mr. Kassebaum was
`
`admitted pro hac vice in the consolidated Fontem v. NJOY matter on May 19,
`
`2015.
`
`Patent Owner has invested significant financial resources in the
`
`consolidated Fontem v. NJOY matter involving the ’742 Patent in which Mr.
`
`Kassebaum served as counsel.
`
`Therefore, Patent Owner respectfully submits that there is good cause for
`
`the Board to recognize Mr. Kassebaum as counsel pro hac vice during this
`
`proceeding.
`
`3. Affidavit or Declaration of Individual Seeking to Appear
`
`This Motion for Pro Hac Vice Admission is accompanied by an Affidavit
`
`of Mr. Nathan Kassebaum, as required.
`
`Accordingly, Fontem submits that there is good cause under 37 C.F.R.
`
`§ 42.10(c) for the Board to recognize Mr. Kassebaum as counsel pro hac vice in
`
`this proceeding.
`
`
`
`
`
`
`LEGAL134766686.1
`
`-2-
`
`
`
`
`
`
`
`Date: August 25, 2017
`
`By:
`
`IPR2016-01268
`Patent 8,365,742
`
`
`Respectfully submitted,
`
`
`
`
`
`/ Joseph P. Hamilton /
`Joseph P. Hamilton, Reg. No. 51,770
`Perkins Coie LLP
`1888 Century Park East, Suite 1700
`Los Angeles, CA 90067
`Phone: 310-788-3271
`Facsimile: 310-788-3399
`JHamilton@perkinscoie.com
`Counsel for Patent Owner
`
`
`
`
`LEGAL134766686.1
`
`-3-
`
`
`
`
`
`IPR2016-01268
`Patent 8,365,742
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that service on Petitioner was made as
`
`follows, in accordance with 37 CFR 42.6(e):
`
`Date of service:
`Manner of service:
`
`Persons served:
`
`August 25, 2017
`1. Electronic submission through the USPTO Patent
`Trial and Appeal Board End-to-End System
`2. Electronic mail
`Document(s) served: PATENT OWNER FONTEM HOLDINGS 1 B.V.’S
`MOTION FOR PRO HAC VICE ADMISSION
`UNDER 37 C.F.R. § 42.10(c) and supporting materials
`(Affidavit of Mr. Nathan Kassebaum)
`Ralph J. Gabric, Lead Counsel
`Robert Mallin, Backup Counsel
`Yuezhong Feng, Backup Counsel
`Brinks Gilson & Lione
`Suite 3600 NBC Tower
`455 N. Cityfront Plaza Dr.
`Chicago, Illinois 60611
`Attorneys for Petitioner
`rgabric@brinksgilson.com
`rmallin@brinksgilson.com
`yfeng@brinksgilson.com
`
`
`
`
`
`
` /Peter Sher/
` Peter Sher
`Paralegal
`Perkins Coie LLP
`
`
`
`
`
`LEGAL134766686.1
`
`
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