Petitioner’s Motion for Pro Hac Vice Admission of Michael N. Zachary
`Case No. IPR2016-01561
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`LIMESTONE MEMORY SYSTEMS LLC,
`Patent Owner.
`____________________
`
`Case IPR2016-01561
`Patent No. 6,233,181
`____________________
`
`APPLE INC’S MOTION FOR PRO HAC VICE ADMISSION OF
`MICHAEL N. ZACHARY UNDER 37 C.F.R. § 42.10 (c)
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`Submitted Electronically via PTAB E2E
`
`
`Case No. IPR2016-01561
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`LIMESTONE MEMORY SYSTEMS LLC,
`Patent Owner.
`____________________
`
`Case IPR2016-01561
`Patent No. 6,233,181
`____________________
`
`APPLE INC’S MOTION FOR PRO HAC VICE ADMISSION OF
`MICHAEL N. ZACHARY UNDER 37 C.F.R. § 42.10 (c)
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`Submitted Electronically via PTAB E2E
`
`
`
`Petitioner’s Motion for Pro Hac Vice Admission of Michael N. Zachary
`Case No. IPR2016-01561
`
`
`TABLE OF EXHIBITS
`
`Exhibit #
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`Exhibit Description
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`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
`
`1014
`
`1015
`
`1016
`
`Declaration of Dr. Pinaki Mazumder
`
`Curriculum Vitae of Dr. Pinaki Mazumder
`
`U.S. Patent No. 6,233,181
`
`File History for U.S. Patent No. 6,233,181
`
`U.S. Patent No. 5,487,040 to Sukegawa
`
`U.S. Patent No. 5,267,214 to Fujishima
`
`U.S. Patent No. 4,967,397 to Walck
`
`U.S. Patent No. 5,956,285 to Watanabe
`
`Masashi Horiguchi et al., A Flexible Redundancy Technique for High-
`Density DRAM’s, IEEE JOURNAL OF SOLID-STATE CIRCUITS, VOL.
`26, NO. 1, Jan. 1991, at 12-17
`
`Kazutami Arimoto et al., A 60-ns 3.3-V-Only 16 Mbit DRAM with
`Multipurpose Register, IEEE JOURNAL OF SOLID-STATE
`CIRCUITS, VOL. 24, NO. 5, Oct. 1989, at 1184-90
`
`U.S. Patent No. 5,687,123 to Hidaka
`
`U.S. Patent No. 5,726,946 to Yamagata
`
`U.S. Patent No. 6,003,148 to Yamauchi
`
`U.S. Patent No. 6,075,743 to Barth
`
`Inter Partes Review No. IPR2016-00096, Decision Granting
`Institution filed April 21, 2016
`
`Inter Partes Review No. IPR2016-00096, Judgment Granting
`Request for Adverse Judgment filed August 3, 2016
`
`i
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`
`
`Petitioner’s Motion for Pro Hac Vice Admission of Michael N. Zachary
`Case No. IPR2016-01561
`
`
`1017
`
`Affidavit of Michael N. Zachary in support of Motion for Pro Hac
`Vice Admission
`
`
`
`ii
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`
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`
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`I.
`
`RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. § 42.10 (c), and as authorized in the Board’s Notice of
`
`Filing Date issued August 25, 2016 (paper 3), Apple Inc. (“Apple”) respectfully
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`requests the pro hac vice admission of Michael N. Zachary to serve as back-up
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`counsel for Petitioner in this proceeding.
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`II. GOVERNING LAWS, RULES, AND PRECEDENT
`Section 42.10(c) states as follows:
`
`The Board may recognize counsel pro hac vice during a
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`proceeding upon a showing of good cause, subject to the
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`condition that lead counsel be a registered practitioner and to
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`any other conditions as the Board may impose. For example,
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`where the lead counsel is a registered practitioner, a motion to
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`appear pro hac vice by counsel who is not a registered
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`practitioner may be granted upon showing that counsel is an
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`experienced litigating attorney and has an established familiarity
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`with the subject matter at issue in the proceeding.
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`Pursuant to the Board’s August 25, 2016 Notice of Filing Date, the parties
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`are authorized to file motions for pro hac vice admission under 37 C.F.R. §
`
`42.10(c) in accordance with the guidance specified in the “Order Authorizing
`
`Motion for Pro Hac Vice Admission” entered in Case IPR2013-000639 (Paper 7)
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`
`
`
`
`
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`(“Unified Patents Order”). According to that guidance, pro hac vice motions can be
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`filed “no sooner than twenty one (21) days after service of the petition.”
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`III. STATEMENT OF FACTS
`Based on the following facts, and supported by the Affidavit of Mr. Zachary
`
`(Ex. 1017) submitted therewith, Petitioner requests the pro hac vice admission of
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`Michael N. Zachary in this proceeding.
`
`1. Petitioners’ lead counsel, John R. Hutchins, is a registered
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`practitioner (Reg. No. 43,686), and a partner at the law firm of
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`Andrews Kurth Kenyon LLP.
`
`2. Mr. Zachary is a partner at the law firm of Andrews Kurth Kenyon
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`LLP. Ex. 1017, ¶ 1.
`
`3. Mr. Zachary is an experienced litigation attorney. Mr. Zachary has
`
`been litigating patent cases for over 26 years, and has experience
`
`litigating patent infringement cases in many district courts. Id. at ¶
`
`3. Mr. Zachary’s patent litigation experience includes involvement
`
`in patent validity, claim construction, and infringement issues
`
`through pleadings, depositions and other discovery, as well as
`
`representation of clients at trial and patent related hearings, such as
`
`summary judgment and claim construction proceedings. Id.
`
`4. Mr. Zachary has an established familiarity with the subject matter at
`
`
`
`
`
`
`
`issue in this proceeding. Mr. Zachary is trial counsel for Petitioner
`
`Apple Inc. in co-pending district court litigation filed by the Patent
`
`Owner, Limestone Memory Systems LLC v. Apple Inc., Civil Action
`
`No. 8:15-cv-01274, on August 10, 2015, in the U.S. District Court
`
`for the Central District of California. That case involves the same
`
`patent at issue in this proceeding (U.S. Patent No. 6,233,181 or the
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`“’181 patent”). Id. at ¶ 4.
`
`5. Mr. Zachary has been actively involved in all aspects of the
`
`aforementioned district court litigation, including Petitioner’s factual
`
`investigation and development of its noninfringement, invalidity and
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`other positions regarding the claims of the ’181 patent that are the
`
`subject matter of this proceeding. Id. at ¶ 5.
`
`6. Mr. Zachary is admitted to practice law in California, Oregon, and
`
`Washington State, as well as U.S. District Court for the Central
`
`District of California; U.S. District Court for the Eastern District of
`
`California; U.S. District Court for the Northern District of
`
`California; U.S. District Court for the Southern District of
`
`California; U.S. District Court for the District of Colorado; U.S.
`
`District Court for the District of Oregon; U.S. District Court for the
`
`Eastern District of Texas; U.S. District Court for the Eastern District
`
`
`
`
`
`
`
`of Washington; and U.S. District Court for the Western District of
`
`Washington.
`
`7. Mr. Zachary has never been suspended or disbarred from practice
`
`before any court or administrative body. Id. at ¶ 7.
`
`8. No application of Mr. Zachary for admission to practice before any
`
`court or administrative body has ever been denied. Id. at ¶ 8.
`
`9. No sanctions or contempt citations have been imposed against Mr.
`
`Zachary by any court or administrative body. Id. at ¶ 9.
`
`10. Mr. Zachary 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 Title 37 of the Code of Federal Regulations. Id. at ¶ 10.
`
`11. Mr. Zachary 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. at ¶ 11.
`
`12. Mr. Zachary has appeared pro hac vice in six (6) proceedings before
`
`the United States Patent and Trademark Office in the last three (3)
`
`years, Microsoft Corp. v. Bradium Techs. LLC, IPR2015-01432;
`
`Microsoft Corp. v. Bradium Techs. LLC, IPR2015-01434; Microsoft
`
`Corp. v. Bradium Techs. LLC, IPR2015-01435, Microsoft Corp. v.
`
`Bradium Techs. LLC, IPR2016-00448, Microsoft Corp. v. Bradium
`
`
`
`
`
`
`
`Techs. LLC, IPR2016-00449, and Prism Pharma Co., Ltd., v.
`
`Choongwae Pharma Corp., IPR2014-00315.
`
`13. This motion was filed no sooner than twenty-one (21) days after
`
`service of the Petition in this proceeding, which occurred on August
`
`12, 2016.
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`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION OF
`ROSE CORDERO PREY 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 conditions the Board may impose. 37 C.F.R. § 42.10(c).
`
`Petitioners’ lead counsel, John R. Hutchins, is a registered practitioner. Based on
`
`the facts contained therein, as supported by Mr. Zachary’s affidavit (Ex. 1017),
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`good cause exists to admit Mr. Zachary pro hac vice in this proceeding.
`
`As supported by his affidavit, Mr. Zachary is an experienced litigating
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`attorney with twenty-six (26) years of patent litigation experience. Mr. Zachary
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`also has familiarity with the subject matter at issue in this proceeding as he is
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`Petitioners’ trial counsel in the co-pending district court litigation against the
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`Patent Owner, Limestone Memory Systems LLC v. Apple Inc., Civil Action No.
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`8:15-cv-01274, filed on August 10, 2015, in the U.S. District Court for the Central
`
`District of California. Ex. 1017, ¶ 4. This IPR proceeding involves a patent—U.S.
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`Patent No. 6,233,181—that is at issue in that co-pending litigation.
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`
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`
`
`
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`As trial counsel for Petitioners, Mr. Zachary has been actively involved in
`
`all aspects of the district court litigation, including Petitioner’s factual investigation
`
`and development of invalidity positions regarding the claims of the ’181 patent
`
`being challenged in this proceeding. Id. at ¶ 5.
`
`In view of Mr. Zachary’s knowledge of the precise subject matter at issue in
`
`this proceeding, and in view of the interrelatedness of this proceeding and the co-
`
`pending district court litigation, Petitioners have a substantial need for Mr. Zachary
`
`to appear as backup counsel.
`
`Mr. Zachary has been involved in this IPR, including the petition, and has
`
`stayed up-to-date regarding the documents filed and actions taken to date (Id. at ¶
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`5). Admission of Mr. Zachary pro hac vice will enable Petitioners to avoid
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`unnecessary expense and duplication of work between this proceeding and the
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`district court litigation. See 77 Fed. Reg. 157 (Aug. 14, 2012), at 48661 (Office’s
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`comment on final rule discussing concerns about efficiency and costs where an
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`entity has already engaged counsel for parallel district court litigation). Admission
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`of Mr. Zachary will also ease the anticipated burden on Petitioner’s existing lead
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`counsel during the discovery and oral hearing phases of this matter.
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`V. CONCLUSION
`For the foregoing reasons as well as the reasons contained in the attached
`
`affidavit, Petitioners respectfully request the pro hac vice admission of Michael N.
`
`
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`
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`Zachary to serve as back-up counsel for Petitioners in this proceeding.
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`The Patent Trial and Appeal Board is thereby authorized to charge any fees
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`associated with this filing to Deposit Account 60-0701.
`
`
`Dated: October 18, 2016
`
`Respectfully submitted,
`
`/s/ John R. Hutchins
`John R. Hutchins (Reg. No. 43,686)
`Lead Counsel for Petitioner
`
`
`John R. Hutchins (Reg. No. 43,686)
`johnhutchins@andrewskurthkenyon.com
`Andrews Kurth Kenyon LLP
`1350 I Street NW, Ste. 1100
`Washington, DC 20005
`T: 202.662.2700
`F: 202.662.2739
`
`Rose Cordero Prey (roseprey@andrewskurthkenyon.com)
`Andrews Kurth Kenyon LLP
`One Broadway
`New York, NY 10004
`T: 212.425.7200
`F: 212.425.5288
`
`Michael Zachary (michaelzachary@andrewskurthkenyon.com)
`Andrews Kurth Kenyon LLP
`1801 Page Mill Road, Suite 210
`Palo Alto, CA 94304
`T: 650.384.4700
`F: 650.384.4701
`
`
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`CERTIFICATE OF SERVICE
`
`The undersigned thereby confirms that the foregoing Motion for Pro Hac
`
`Vice Admission of Michael N. Zachary, Affidavit of Michael N. Zachary in
`
`Support of Motion for Pro Hac Vice Admission, and Updated Exhibit List, was
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`served on October 18, 2016, via email upon the following:
`
`Nicholas T. Peters (Reg. No. 53,456)
`Paul B. Henkelmann (Reg. No. 65,891)
`FITCH EVEN TABIN & FLANNERY, LLP
`120 South LaSalle Street, Suite 1600
`Chicago, Illinois 60603-3406
`Telephone: (312) 577-7000
`Facsimile: (312) 577-7007
`Email: LimestoneIPR@fitcheven.com
`
`/s/ John R. Hutchins
`John R. Hutchins (Reg. No. 43,686)
`Lead Counsel for Petitioner
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