UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Patent No. 6,928,433
`IPR2016-01407
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`SONY CORPORATION, SONY MOBILE COMMUNICATIONS (USA) INC.,
`SONY MOBILE COMMUNICATIONS AB & SONY MOBILE
`COMMUNICATIONS INC.
`Petitioners
`
`v.
`
`CREATIVE TECHNOLOGY LIMITED
`Patent Owner
`
`U.S. Patent No. 6,928,433
`
`
`
`Inter Partes Review Case No. 2016-01407
`
`
`
`CREATIVE TECHNOLOGY LIMITED MOTION FOR PRO HAC VICE
`ADMISSION OF MICHAEL D. SAUNDERS UNDER 37 C.F.R. § 42.10(c)
`
`
`
`
`
`
`
`Patent No. 6,928,433
`IPR2016-01407
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`SONY CORPORATION, SONY MOBILE COMMUNICATIONS (USA) INC.,
`SONY MOBILE COMMUNICATIONS AB & SONY MOBILE
`COMMUNICATIONS INC.
`Petitioners
`
`v.
`
`CREATIVE TECHNOLOGY LIMITED
`Patent Owner
`
`U.S. Patent No. 6,928,433
`
`
`
`Inter Partes Review Case No. 2016-01407
`
`
`
`CREATIVE TECHNOLOGY LIMITED MOTION FOR PRO HAC VICE
`ADMISSION OF MICHAEL D. SAUNDERS UNDER 37 C.F.R. § 42.10(c)
`
`
`
`
`
`
`
`I.
`Pursuant to 37 C.F.R. § 42.10(c), Patent Owner respectfully requests that the
`
` RELIEF REQUESTED
`
`Patent No. 6,928,433
`IPR2016-01407
`
`
`Board admit Michael D. Saunders pro hac vice in this proceeding.
`
`II. GOVERNING LAW, RULES, AND PRECEDENT
`
`Section 42.10(c) of C.F.R. 37 provides:
`
`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.
`
`
`In the Notice of Filing Date Accorded to Petition (“Notice”) mailed on July
`
`19, 2016, the Board authorized the parties to file motions for pro hac vice
`
`admission under 37 C.F.R. § 42.10(c). The Notice requires that such motions be
`
`filed in accordance with the “Order – Authorizing Motion for Pro Hac Vice
`
`Admission” in Case IPR2013-00639, Paper No. 7 (“Order”).
`
`The Order states that the “time for filing pro hac vice motions is no sooner
`
`than twenty one (21) days after service of the petition…” The Order further states
`
`that motions for pro hac vice must “[c]ontain a statement of facts showing there is
`
`good cause for the Board to recognize counsel pro hac vice during the
`
`
`
`1
`
`
`
`Patent No. 6,928,433
`IPR2016-01407
`
`proceeding,” and “[b]e accompanied by an affidavit or 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 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 C.F.R.;
`
`vi. The individual will be subject to the USPTO Rules of Professional
`Conduct set forth in 37 C.F.R. §§ 11.01 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 three (3) years; and
`
`viii. Familiarity with the subject matter at issue in the proceeding.
`
`III. TIME FOR FILING
`
`
`
`As required by the Order, this motion for pro hac vice admission was filed
`
`no sooner than twenty-one (21) days after service of the petition.
`
`2
`
`
`
`
`
`
`
`IV. STATEMENT OF FACTS
`
`Patent No. 6,928,433
`IPR2016-01407
`
`
`Patent Owner submits that the following statement of facts, supported by the
`
`accompanying Declaration of Michael D. Saunders, shows that there is good cause
`
`for the Board to recognize Mr. Saunders pro hac vice in this proceeding:
`
`1. Patent Owner’s lead counsel, Jonathan Baker, is a registered practitioner
`
`(Reg. No. 45708);
`
`2. Patent Owner’s backup counsel, Gurtej Singh, is a registered practitioner
`
`(Reg. No. 71020);
`
`3. Mr. Saunders is an experienced litigation attorney. He has been involved
`
`in numerous litigations involving patent infringement in District Courts
`
`across the country and has experience in Markman hearings.
`
`4. U.S. Patent No. 6,928,433 was at issue in the International Trade
`
`Commission’s Investigation No. 337-TA-994, in which Patent Owner
`
`was a complainant. That investigation is currently on appeal in the U.S.
`
`Court of Appeals for the Federal Circuit, Appeal No. 16-2105. Mr.
`
`Saunders is and was counsel of record for Patent Owner in both the
`
`International Trade Commission investigation and its appeal. In those
`
`cases, Mr. Saunders has developed infringement contentions, reviewed
`
`and responded to invalidity theories, defended an expert deposition,
`
`
`
`3
`
`
`
`engaged in written discovery, and drafted several substantive briefs. Mr.
`
`Patent No. 6,928,433
`IPR2016-01407
`
`
`Saunders also participated at the evidentiary hearing in the ITC matter.
`
`5. Patent Owner has expended significant financial resources in the
`
`International Trade Commission litigation and with the Federal Circuit
`
`Court of Appeals with Mr. Saunders as counsel, and Patent Owner
`
`wishes to continue using Mr. Saunders as counsel in this proceeding.
`
`V. NO OPPOSITION TO THIS MOTION
`
`Patent Owner has conferred with Petitioners with regard to this Motion, and
`
`Petitioners have confirmed that they will not oppose it.
`
`VI. DECLARATION OF INDIVIDUAL SEEKING TO APPEAR
`
`This Motion for Pro Hac Vice Admission is accompanied by the Declaration
`
`of Michael D. Saunders, as required by the Order.
`
`VII. CONCLUSION
`
`In light of the foregoing, Patent Owner respectfully requests that the Board
`
`admit Michael D. Saunders pro hac vice in this proceeding.
`
`
`
`
`
`4
`
`
`
`Patent No. 6,928,433
`IPR2016-01407
`
`
`Respectfully submitted,
`
`
`/Jonathan D. Baker/
`Jonathan D. Baker, Reg. No. 45708
`Farney Daniels PC
`411 Borel Avenue, Suite 310
`San Mateo, California 94402
`Phone: 424-268-5210
`E-mail: jbaker@farneydaniels.com
`
`
`
`5
`
`Date: January 11, 2017
`
`
`
`
`
`
`
`DECLARATION OF MICHAEL D. SAUNDERS IN SUPPORT
`OF MOTION FOR PRO HAC VICE ADMISSION
`
`Patent No. 6,928,433
`IPR2016-01407
`
`
`I, Michael D. Saunders, do hereby declare as follows:
`
`1.
`
`I am an attorney at the law firm of Farney Daniels PC, am over
`
`
`
`eighteen years of age, and would be competent to testify as to the matters set forth
`
`herein if called upon to do so.
`
`2.
`
`I am a member in good standing of the State Bars of California and
`
`the District of Columbia, as well as of the following Federal Courts:
`
`a.
`
`b.
`
`c.
`
`d.
`
`e.
`
`U.S. Court of Appeals for the Federal Circuit;
`
`U.S. District Court for the District of Columbia;
`
`U.S. District Court for the Northern District of California;
`
`U.S. District Court for the Central District of California;
`
`U.S. District Court for the Eastern District of Wisconsin.
`
`3.
`
`I have not been suspended or disbarred from practice before any court
`
`or administrative body.
`
`4.
`
`I have never had an application for admission to practice before any
`
`court or administrative body denied.
`
`5.
`
`No sanction or contempt citation has been imposed against me by any
`
`court or administrative body.
`
`
`
`6
`
`
`
`I have read and will comply with the Office Patent Trial Practice
`
`Patent No. 6,928,433
`IPR2016-01407
`
`
`6.
`
`Guide and the Board’s Rules of Practice for Trials set forth in part 42 of 37 C.F.R.
`
`7.
`
`I 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).
`
`8.
`
`In the last three years, I have applied to appear pro hac vice before
`
`this Office in the following proceedings: IPR 2015-01811 and IPR2015-01812
`
`(consolidated after filing); and IPR2015-00158, IPR2015-00159, and IPR2015-
`
`00163 (consolidated hearing).
`
`9.
`
`I am a counsel of record for Patent Owner in Creative Technology
`
`Ltd. and Creative Labs, Inc. v. International Trade Commission, Appeal No. 16-
`
`2105 (Fed. Cir.), which is an appeal of the International Trade Commission’s final
`
`determination in In the Matter of Certain Portable Electronic Devices and
`
`Components Thereof, Investigation No. 337-TA-994, in which I was also a counsel
`
`of record for Patent Owner. U.S. Patent No. 6,928,433 was the sole asserted patent
`
`in the -994 Investigation and its appeal. As a result of my participation in those
`
`proceedings, I have acquired substantial understanding of the underlying legal and
`
`technical issues in this proceeding. In those cases, I developed infringement
`
`contentions, reviewed and responded to invalidity theories, defended an expert
`
`deposition, engaged in written discovery, and drafted several substantive briefs. I
`
`
`
`7
`
`
`
`also participated in the evidentiary hearing in the -994 Investigation by offering an
`
`Patent No. 6,928,433
`IPR2016-01407
`
`
`expert witness. I therefore have an established familiarity with the subject matter
`
`at issue in this proceeding.
`
`10.
`
`I am an experienced litigation attorney with approximately seven
`
`years of experience in patent litigation. I have had experience in all stages of
`
`patent litigation and have been counsel of record in dozens of litigations involving
`
`patent infringement in District Courts across the country. My experience includes
`
`drafting substantive briefing, taking and defending depositions, and conducting
`
`oral argument, including at Markman hearings.
`
` declare under penalty of perjury that the foregoing Declaration is true and
`
` I
`
`
`
`
`
`
`
`
`
`
`
`Michael D. Saunders
`Farney Daniels PC
`411 Borel Avenue, Suite 310
`San Mateo, California 94402
`Phone: 424-268-5210
`
`
`
`
`correct.
`
`
`
`DATED: January 11, 2017
`
`
`
`
`
`
`
`
`8
`
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Patent No. 6,928,433
`IPR2016-01407
`
`
`Under 37 C.F.R. §§ 42.6(e), this is to certify that I served a copy of the
`
`foregoing MOTION FOR PRO HAC VICE ADMISSION OF MICHAEL D.
`
`SAUNDERS UNDER 37 CFR § 42.10(c) along with the accompanying
`
`declaration via email on January 11, 2017 to Petitioner’s counsel of record at the
`
`following email addresses:
`
`Randy J. Prizker, Reg. No. 35,986
`Micahel N. Rader, Reg. No. 52,146
`Robert M. Abrahamsen, Reg. No. 40,886
`Andrew J. Tibbetts, Reg. No. 65,139
`Wolf Greenfield & Sacks, P.C.
`600 Atlantic Avenue
`Boston, MA 02210-2206
`Phone: 617-646-8000
`Fax: 617-646-8646
`E-mail:
`RPritzker-PTAB@wolfgreenfield.com
`MRader-PTAB@wolfgreenfield.com
`RAbrahamsen-PTAB@wolfgreenfield.com
`ATibbetts-PTAB@wolfgreenfield.com
`
`
`
`Dated: January 11, 2017
`
`/Jonathan D. Baker/
`
`Jonathan Baker, Reg. No. 45708
`
`
`
`9
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
