Petitioner’s Motion for Pro Hac Vice Admission of Rose Cordero Prey
`Case IPR2016-01567
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`LIMESTONE MEMORY SYSTEMS LLC,
`Patent Owner.
`____________________
`
`Case IPR2016-01567
`Patent 5,894,441
`____________________
`
`APPLE INC.’S MOTION FOR PRO HAC VICE ADMISSION OF
`ROSE CORDERO PREY 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 IPR2016-01567
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`LIMESTONE MEMORY SYSTEMS LLC,
`Patent Owner.
`____________________
`
`Case IPR2016-01567
`Patent 5,894,441
`____________________
`
`APPLE INC.’S MOTION FOR PRO HAC VICE ADMISSION OF
`ROSE CORDERO PREY 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 Rose Cordero Prey
`Case IPR2016-01567
`
`
`TABLE OF EXHIBITS
`
`Exhibit #
`
`Exhibit Description
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`Declaration of Dr. Pinaki Mazumder
`
`Curriculum Vitae of Dr. Pinaki Mazumder
`
`U.S. Patent No. 5,894,441
`
`File History for U.S. Patent No. 5,894,441
`
`U.S. Patent No. 5,265,055 to Horiguchi
`
`U.S. Patent No. 5,126,973 to Gallia
`
`Inter Partes Review No. IPR2016-00094, Petition for Inter Partes
`Review filed October 27, 2015 (without exhibits)
`
`U.S. Patent No. 5,270,975 to McAdams
`
`Japanese Patent Appl. No. H06-052696 to Minami
`
`Inter Partes Review No. IPR2016-00094, Patent Owner’s
`Preliminary Response filed January 27, 2016
`
`Inter Partes Review No. IPR2016-00094, Decision Denying
`Institution filed April 12, 2016
`
`1012
`
`U.S. Patent No. 5,956,285 to Watanabe
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`Masashi Horiguchi et al., A Flexible Redundancy Technique for High-
`Density DRAMs, IEEE JOURNAL OF SOLID-STATE CIRCUITS, Vol. 26,
`No. 1, Jan. 1991, at 12-17
`
`U.S. Patent No. 5,267,214 to Fujishima
`
`U.S. Patent No. 5,349,556 to Lee
`
`U.S. Patent No. 5,355,339 to Oh
`
`U.S. Patent No. 5,359,560 to Suh
`
`i
`
`
`
`Petitioner’s Motion for Pro Hac Vice Admission of Rose Cordero Prey
`Case IPR2016-01567
`
`
`1018
`
`1019
`
`U.S. Patent No. 5,798,974 to Yamagata
`
`U.S. Patent No. 5,808,948 to Kim
`
`1020
`
`Masashi Horiguchi, Redundancy Techniques for High-Density
`DRAMs, INNOVATIVE SYSTEMS IN SILICON CONFERENCE, Oct. 1997, at
`22-29
`1021 Masashi Horiguchi et al., NANOSCALE MEMORY REPAIR (Springer
`2011)
`
`1022
`
`1023
`
`1024
`
`Robert T. Smith et al., Laser Programmable Redundancy and Yield
`Improvement in a 64 K DRAM, IEEE JOURNAL OF SOLID-STATE
`CIRCUITS, VOL. SC-16, NO. 5, Oct. 1981, at 506-14
`
`Affidavit of Michael N. Zachary in support of Motion for Pro Hac
`Vice Admission
`
`Affidavit of Rose Cordero Prey in support of Motion for Pro Hac
`Vice Admission
`
`
`
`ii
`
`
`
`
`
`I.
`
`RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. § 42.10(c), and as authorized in the Board’s Notice of
`
`Filing Date Accorded to Petition issued September 1, 2016 (Paper 3), Petitioner
`
`Apple Inc. respectfully requests the pro hac vice admission of Rose Cordero Prey
`
`to serve as back-up counsel for Petitioner in this proceeding.
`
`II. GOVERNING LAWS, RULES, AND PRECEDENT
`Section 42.10(c) of 37 C.F.R. 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
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`any other conditions as the Board may impose. For example,
`
`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
`
`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.
`
`Pursuant to the Board’s September 1, 2016 Notice of Filing Date Accorded
`
`to Petition (Paper 3), the parties 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. According to that guidance, pro hac vice motions can
`
`be filed “no sooner than twenty one (21) days after service of the petition.”
`
`IPR2013-000639, Paper 7 at 2.
`
`III. STATEMENT OF FACTS
`Based on the following facts, and supported by the affidavit of Ms. Prey (Ex.
`
`1024) submitted herewith, Petitioner requests the pro hac vice admission of Rose
`
`Cordero Prey in this proceeding.
`
`1. Petitioner’s lead counsel, John R. Hutchins, is a registered
`
`practitioner (Reg. No. 43,686), and a partner at the law firm of
`
`Andrews Kurth Kenyon LLP.
`
`2. Ms. Prey is a partner at the law firm of Andrews Kurth Kenyon LLP.
`
`Ex. 1024, ¶ 3.
`
`3. Ms. Prey is an experienced litigation attorney. Ms. Prey has been
`
`litigating patent cases for over 10 years, and has experience
`
`litigating patent infringement cases in many district courts and
`
`before the U.S. International Trade Commission. Id. at ¶ 4. Among
`
`her experience in patent litigation matters, Ms. Prey has been
`
`counsel at trial, hearings, and with respect to patent-related summary
`
`judgment proceedings and other patent-related hearings and
`
`
`
`
`
`
`
`pleadings concerning, inter alia, patent validity, claim construction,
`
`and infringement issues. Id.
`
`4. Ms. Prey received a Bachelor’s of Science degree in Mathematics,
`
`with a minor in Physics, in 2001, and she has several years of
`
`experience litigating patents specifically directed to semiconductor
`
`device technology (the design, fabrication and use thereof).
`
`5. Ms. Prey has an established familiarity with the subject matter at
`
`issue in this proceeding. Id. at ¶¶ 6-8. Ms. Prey is trial counsel for
`
`Petitioner 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, filed 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. 5,894,441 or
`
`“the ’441 patent”). Id. at ¶ 6.
`
`6. Ms. Prey 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
`
`other positions regarding the claims of the ’441 patent that are the
`
`subject matter of this proceeding. Id. at ¶ 7.
`
`7. Ms. Prey is a member in good standing of the State Bar of New
`
`
`
`
`
`
`
`York as well as the United States District Court for the Eastern
`
`District of New York, the United States District Court for the
`
`Southern District of New York, and the United States Court of
`
`Appeals for the Federal Circuit. Id. at ¶ 9.
`
`8. Ms. Prey has never been suspended or disbarred from practice
`
`before any court or administrative body. Id. at ¶ 10.
`
`9. No application of Ms. Prey for admission to practice before any
`
`court or administrative body has ever been denied. Id. at ¶ 11.
`
`10. No sanctions or contempt citations have been imposed against Ms.
`
`Prey by any court or administrative body. Id. at ¶ 12.
`
`11. Ms. Prey 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 ¶ 13.
`
`12. Ms. Prey understands that she 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 ¶ 14.
`
`13. Ms. Prey has applied to appear pro hac vice in one proceeding
`
`before the United States Patent and Trademark Office in the last
`
`three (3) years, Micron Technology, Inc. and Micron Memory Japan,
`
`
`
`
`
`
`
`Inc. v. Massachusetts Institute of Technology, IPR2015-01087. Id.
`
`at ¶ 15.
`
`14. This motion is filed no sooner than twenty-one (21) days after
`
`service of the Petition in this proceeding, which occurred on August
`
`12, 2016.
`
`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 other conditions as the Board may impose. 37 C.F.R. §
`
`42.10(c). Petitioner’s lead counsel, John R. Hutchins, is a registered practitioner.
`
`Based on the facts contained herein, as supported by Ms. Prey’s affidavit (Ex.
`
`1024), good cause exists to admit Ms. Prey pro hac vice in this proceeding.
`
`As supported by her affidavit, Ms. Prey is an experienced litigating attorney
`
`with over ten (10) years of patent litigation experience. Ms. Prey has several years
`
`of experience litigating patents directed to semiconductor circuitry and device
`
`technology, the field to which the ’441 patent is directed. Ms. Prey also has a deep
`
`and established familiarity with the subject matter at issue in this proceeding as she
`
`is one of Petitioner’s trial counsel in the co-pending district court litigation against
`
`the Patent Owner, Limestone Memory Systems LLC v. Apple Inc., Civil Action No.
`
`8:15-cv-01274, filed on August 10, 2015, in the U.S. District Court for the Central
`
`
`
`
`
`
`
`District of California. This IPR proceeding involves a patent—U.S. Patent No.
`
`5,894,441—that is at issue in that co-pending litigation.
`
`As trial counsel for Petitioner, Ms. Prey 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 ’441 patent
`
`being challenged in this proceeding.
`
`In view of Ms. Prey’s extensive 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, Petitioner has a substantial need for Ms.
`
`Prey’s pro hac vice admission and her involvement in depositions and the
`
`continued prosecution of this proceeding.
`
`Ms. Prey has been involved in this IPR, including the preparation of the
`
`petition, and has stayed up-to-date regarding the documents filed and actions taken
`
`to date (Ex. 1024, ¶ 8). There is a need for Ms. Prey to appear as back-up counsel
`
`to this IPR, and admission of Ms. Prey pro hac vice will enable Petitioner to avoid
`
`unnecessary expense and duplication of work between this proceeding and the
`
`district court litigation. See 77 Fed. Reg. 157 (Aug. 14, 2012), at 48661 (Office’s
`
`comment on final rule discussing concerns about efficiency and costs where an
`
`entity has already engaged counsel for parallel district court litigation). Admission
`
`
`
`
`
`
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`of Ms. Prey 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.
`
`V. CONCLUSION
`For the foregoing reasons as well as the reasons contained in the attached
`
`affidavit, Petitioner respectfully requests the pro hac vice admission of Rose
`
`Cordero Prey to serve as back-up counsel for Petitioner in this proceeding.
`
`The Patent Trial and Appeal Board is hereby authorized to charge any fees
`
`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 hereby confirms that the foregoing Motion for Pro Hac
`
`Vice Admission of Rose Cordero Prey, Affidavit of Rose Cordero Prey in Support
`
`of Motion for Pro Hac Vice Admission, and Updated Exhibit List, was served on
`
`October 18, 2016, via email upon the following:
`
`Nicholas T. Peters (53,456)
`David A. Gosse (61,511)
`Paul B. Henkelmann (65,891)
`FITCH EVEN TABIN & FLANNERY LLP
`120 South LaSalle Street, Suite 1600
`Chicago, Illinois 60603
`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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