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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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`__________
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`APPLE INC.,
`PETITIONER,
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`V.
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`IMMERSION CORPORATION,
`PATENT OWNER.
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`___________________
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`CASE IPR2016-01381
`PATENT NO. 8,773,356
`________________
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`IMMERSION CORPORATION’S UNOPPOSED MOTION FOR PRO HAC
`VICE ADMISSION OF RICHARD BIRNHOLZ UNDER 37 C.F.R. § 42.10(c)
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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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`10212641
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`Case IPR2016-01381
`Patent 8,773,356
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`I.
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`RELIEF REQUESTED
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`Pursuant to 37 C.F.R. § 42.10(c) and with the Board’s authorization (Paper
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`No. 3, dated July 12, 2016), Patent Owner, Immersion Corporation (“Immersion”),
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`by and through its attorneys, respectfully requests the pro hac vice admission of
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`Richard Birnholz in this proceeding.
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`II. GOVERNING LAW, RULES AND PRECEDENT
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`Section 42.10(c) states:
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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 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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`Further, motions for pro hac vice admission must comply with the “Order --
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`Authorizing Motion for Pro Hac Vice Admission” in Case IPR2013-00639,
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`Paper 7 (“Representative Order”). The Representative Order explains that the
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`motion must “[c]ontain a statement of facts showing there is good cause for the
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`Board to recognize counsel pro hac vice during the proceeding” and “[b]e
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`Case IPR2016-01381
`Patent 8,773,356
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`accompanied by an affidavit or declaration of the individual seeking to appear
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`attesting to the following:
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`i. Membership in good standing of the Bar of at least
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`one State or the District of Columbia;
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`ii. No suspensions or disbarments from practice
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`before any court or administrative body;
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`iii. No application for admission to practice before
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`any court or administrative body ever denied;
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`iv. No sanctions or contempt citations imposed by any
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`court or administrative body;
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`v. The individual seeking to appear has read and will
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`comply with the Office Patent Trial Practice Guide
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`and the Board’s Rules of Practice for Trials set
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`forth in part 42 of 37 C.F.R.;
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`vi. The individual will be subject to the USPTO Code
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`of Professional Responsibility set forth in
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`37 C.F.R. §§ 11.101 et seq. and disciplinary
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`jurisdiction under 37 C.F.R. § 11.19(a);
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`vii. All other proceedings before the Office for which
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`the individual has applied to appear pro hac vice in
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`the last three (3) years; and
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`viii. Familiarity with the subject matter at issue in the
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`proceeding.”
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`III. STATEMENT OF FACTS SHOWING GOOD CAUSE
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`Based on the following statement of facts, and supported by the Declaration
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`of Richard Birnholz (Exhibit 2010), Immersion submits that a showing of good
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`cause has been made and respectfully requests the pro hac vice admission of
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`Richard Birnholz in this proceeding:
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`1.
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`Lead counsel, Michael R. Fleming, is a registered practitioner (Reg.
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`No. 67,933).
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`2. Mr. Birnholz is an experienced litigation attorney and has been
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`litigating patent cases in the United States District Courts and United States Court
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`of Appeals for over 20 years. Mr. Birnholz has not appeared pro hac vice before
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`the Patent Trial and Appeal Board in the past three years. On even date herewith,
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`Mr. Birnholz is applying to appear pro hac vice in IPR2016-01372, involving the
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`’571 patent.
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`3. Mr. Birnholz is counsel for Immersion in the following co-pending
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`litigation: Immersion Corp. v. Apple Inc., et al., Nos. 1-16-cv-00077 and 1:16-cv-
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`00325 (D. Del.) (stayed); In the Matter of: Certain Mobile and Portable Electronic
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`Devices Incorporating Haptics (Including Smartphones and Laptops) and
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`Components Thereof, ITC Investigation Nos. 337-TA-990 and -1004
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`(consolidated). These cases involve litigation concerning Immersion’s U.S. Patent
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`Nos. 8,773,356 (the “’356 patent”), 8,659,571 (the “’571 patent”), 7,808,488 (the
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`“’488 patent”), 8,619,051 (the “’051 patent”), 8,581,710 (the “’710 patent”),
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`8,749,507 (the “’507 patent”) and 7,336,260 (the “’260 patent”) . The
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`aforementioned patents relate to haptic feedback technology in electronic devices.
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`4. Mr. Birnholz has been deeply involved in the co-pending cases and
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`has an established familiarity with the subject matter at issue in those proceedings,
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`including the ’356 patent. Mr. Birnholz has been involved in reviewing prior art
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`and forming claim construction positions with respect to the ’356 patent. This
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`gives Mr. Birnholz a substantial and established understanding of the underlying
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`legal and technological issues at stake in this proceeding. Immersion has expended
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`significant time and resources with Mr. Birnholz as counsel in the co-pending
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`litigation, and wishes to continue using him as counsel in this proceeding.
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`5.
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`Further, counsel for Petitioner does not oppose Mr. Birnholz
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`appearing pro had vice in this proceeding.
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`IV. DECLARATION OF INDIVIDUAL SEEKING TO APPEAR
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`This Motion for pro hac vice admission is accompanied by a Declaration of
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`Richard Birnholz (Exhibit 2010), as the Representative Order requires. In this
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`Declaration, Mr. Birnholz states his compliance with the general requirements for
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`pro hac vice admission, including that: he is a member in good standing of the
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`State Bar of California; he has never been suspended or disbarred from practice
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`before any court or administrative body; no application he has made for admission
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`to practice before any court or administrative body has ever been denied; no
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`sanctions or contempt citations have been imposed against him by any court or
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`administrative body; he has read and agrees to comply with the Office Patent Trial
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`Practice Guide and the Board’s Rules of Practice for Trials set forth in 37 C.F.R.
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`part 42; he understands he will be subject to the USPTO Rules of Professional
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`Conduct 37 C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction under 37 C.F.R.
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`§ 11.19(a); and he has particular familiarity with the subject matter at issue in this
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`proceeding involving the ’356 patent.
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`Mr. Birnholz has not applied to appear pro hac vice in any other proceedings
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`before the United States Patent and Trademark Office in the last three (3) years.
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`On even date herewith, Mr. Birnholz is applying to appear pro hac vice in
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`IPR2016-01372, involving the ’571 patent.
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`V. GOOD CAUSE EXISTS FOR PRO HAC VICE ADMISSION OF
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`RICHARD BIRNHOLZ
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`The facts outlined above and contained in the Declaration of Richard
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`Birnholz establish good cause to admit Mr. Birnholz pro hac vice in this
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`proceeding. Counsel for Petitioner does not oppose Mr. Birnholz appearing pro
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`hac vice in this proceeding.
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`IV. CONCLUSION
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`In light of the foregoing, Immersion respectfully requests that the Board
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`admit Richard Birnholz pro hac vice in this proceeding.
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`Dated: August 11, 2017
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`10212641
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`Respectfully submitted,
` /s/ Michael R. Fleming
`Michael R. Fleming, Reg. No. 67,933
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`Michael R. Fleming, Esq., Reg. 67,933
`Babak Redjaian, Esq., Reg. 42,096
`Irell & Manella LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067-4276
`Telephone: (310) 277-1010
`Fax: (310) 203-7199
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`Attorneys for Patent Owner
`Immersion Corporation
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`Patent 8,773,356
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. 42.6, the undersigned certifies that on August 11,
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`2017, a copy of the IMMERSION CORPORATION’S UNOPPOSED
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`MOTION FOR PRO HAC VICE ADMISSION OF RICHARD BIRNHOLZ
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`UNDER 37 C.F.R. § 42.10(c) and Exhibit 2010 are being served via electronic
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`service to:
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`James M. Heintz, Reg. No. 41,828
`DLA Piper LLP (US)
`11911 Freedom Drive, Suite 300
`Reston, VA 20190
`703-773-4148 (phone)
`703-773-5200 (fax)
`Apple-Immersion-IPRs@dlapiper.com
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`Brian Erickson, Reg. No. 48,895
`DLA Piper LLP (US)
`401 Congress Avenue, Ste. 2500
`Austin, TX 78701
`512-457-7059 (phone)
`brian.erickson@dlapiper.com
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`/s/ Susan M. Langworthy
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`10212641
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