`
`Filed on behalf of:
`One-E-Way
`By: Daphne Burton (Reg. No. 45,323)
`BURTON IP LAW GROUP
`2029 Century Park East, Suite 400N
`Los Angeles, CA 90067
`Tel: +1.310.867.2754
`Fax: +1.888.972.1879
`dburton@burtoniplaw.com
`
`Douglas G. Muehlhauser (Reg. No. 42,018)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Telephone: 949-760-0404
`Facsimile: 949-760-9502
`Email: 2dgm@knobbe.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`SONY CORPORATION,
`Petitioner,
`v.
`
`ONE-E-WAY, INC.
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2016-01639
`Patent 9,282,396
`
`
`
`
`
`
`
`UNNOPPOSED MOTION FOR PAYSON LEMEILLEUR TO
`APPEAR PRO HAC VICE ON BEHALF OF PATENT OWNER
`
`
`
`
`
`Case IPR2016-01639
`Patent 9,282,396
`
`
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`Pursuant to the Board’s September 30, 2014 Notice of Filing Date (Paper 3)
`
`and 37 C.F.R. §§ 42.10(c) and 42.22, Patent owner ONE-E-WAY, INC. and
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`SONY CORPORATION hereby move for an Order allowing Payson LeMeilleur
`
`of Knobbe, Martens, Olson & Bear, LLP to appear pro hac vice on behalf of One-
`
`E-Way, Inc. in the above-captioned case.
`
`
`
`Counsel for One-E-Way, Inc. has conferred with counsel for Petitioner Sony
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`Corporation (“SONY”) regarding this motion, and counsel for Sony stated that
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`they do not oppose the motion.
`
`II. LIST OF EXHIBITS RELIED UPON FOR THIS MOTION
`
`
`
`One-E-Way, Inc. Ex. 2008 - Declaration of Payson LeMeilleur in
`
`Support of Motion to Appear Pro Hac Vice on Behalf of Patent
`
`Owner.
`
`III. REASONS THE REQUESTED RELIEF SHOULD BE GRANTED
`
`As set forth below in the Statement of Material Facts, One-E-Way, Inc. has
`
`made all of the showings required under 37 C.F.R. § 42.10(c) for recognizing Mr.
`
`LeMeilleur pro hac vice. In particular, Mr. LeMeilleur is an experienced litigating
`
`attorney who has represented clients in numerous patent litigation cases in various
`
`United States District Courts and the United States Court of Appeals for the
`
`Federal Circuit, including technically and legally complex matters such as will be
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`Case IPR2016-01639
`Patent 9,282,396
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`present in this proceeding. Accordingly, allowing Mr. LeMeilleur to appear pro
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`hac vice on behalf of One-E-Way, Inc. is appropriate in this proceeding.
`
`IV. STATEMENT OF MATERIAL FACTS
`
`1.
`
`37 C.F.R. § 42.10(c) provides that “[t]he Board may recognize
`
`counsel pro hac vice during a proceeding upon a showing of good cause, subject
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`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
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`matter at issue in the proceeding.”
`
`2.
`
`Lead counsel in this inter partes review proceeding is Daphne
`
`Burton. Mrs. Burton is registered to practice before the United States Patent and
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`Trademark Office and holds Registration No. 39,592.
`
`3.
`
`As set forth in One-E-Way, Inc. Ex. 2008 (the “LeMeilleur
`
`Declaration”), Mr. LeMeilleur is an experienced litigating attorney and has an
`
`established familiarity with the subject matter at issue in this proceeding.
`
`LeMeilleur Decl. ¶¶ 1, 3.
`
`4.
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`In particular, Mr. LeMeilleur has 18 years of experience as a patent
`
`litigator and has represented clients in numerous patent litigation cases in various
`
`
`
`2
`
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`Case IPR2016-01639
`Patent 9,282,396
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`United States District Courts and in the United States Court of Appeals for the
`
`Federal Circuit. Id. ¶ 2.
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`5.
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`Further, Mr. LeMeilleur holds a Bachelor of Science degree in
`
`Physics from the University of Southern California. Id. ¶ 2.
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`6. Mr. LeMeilleur has not previously appeared pro hac vice in any
`
`matter before the United States Patent and Trademark Office. Id. ¶ 4.
`
`7. Moreover, Mr. LeMeilleur is experienced with the technical and legal
`
`matters in the field of wireless communications and has represented One-E-Way,
`
`Inc. in patent infringement actions involving subject matter related to U.S. Patent
`
`No. 9,282,396 (“the ’396 patent”), which is the subject of this proceeding. Id. ¶ 3.
`
`Accordingly, Mr. LeMeilleur is familiar with the ’396 patent, and with the legal
`
`and technical subject matter discussed in One-E-Way’s Response to Petition for
`
`inter partes review of the ’396 patent. Id. In view of his legal experience,
`
`technical background, and familiarity with the issues in the present matter, One-E-
`
`Way, Inc. has requested Mr. LeMeilleur’s services in the present matter. Id.
`
`8. Mr. LeMeilleur has read and will comply with the Office Patent Trial
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`Practice Guide and the Board’s Rules of Practice for Trials set forth in Part 42 of
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`37 C.F.R. Id. ¶ 8. Mr. LeMeilleur also agrees to be subject to the United States
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`Patent and Trademark Office Rules of Professional Conduct set forth in 37 C.F.R.
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`§§ 11.101 et seq., and disciplinary jurisdiction under 37 C.F.R. § 11.19(a). Id. ¶ 9.
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`Case IPR2016-01639
`Patent 9,282,396
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`9.
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`Finally, Mr. LeMeilleur has attested to the remaining elements of
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`Paragraph 2(b) of the representative “Order – Authorizing Motion for Pro Hac
`
`Vice Admission” in Case IPR2013-00639, Paper 7 Id. ¶¶ 1-10; see Notice of Filing
`
`Date Accorded to Petition and Time for Filing Patent Owner Preliminary Response
`
`(Paper 3) at 2.
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`V. CONCLUSION
`
`In view of the foregoing, and having satisfied the requirements of 37 C.F.R.
`
`§ 42.10(c), Petitioners hereby move for an Order allowing Payson LeMeilleur of
`
`Knobbe, Martens, Olson, & Bear, LLP to appear pro hac vice on behalf of Patent
`
`Owner in the above-captioned case.
`
`Dated: October 20, 2017
`
`
`
`
`
`Respectfully submitted,
`
`/ Douglas G. Muehlhauser/
`Douglas G. Muehlhauser (Reg. No. 179,495)
`Attorney for Patent Owner
`ONE-E-WAY, INC.
`
`
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`Case IPR2016-01639
`Patent 9,282,396
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`CERTIFICATE OF SERVICE
`
`I certify that, pursuant to 37 C.F.R. § 42.6(e), a true and correct copy of
`
`UNNOPPSED MOTION FOR PAYSON LEMEILLEUR TO APPEAR PRO HAC
`
`VICE ON BEHALF OF PATENT OWNER [WITH EXHIBIT 2008] is being
`
`served on October 20, 2017, via electronic mail under 37 C.F.R. § 42.6(e) per
`
`agreement of the parties, on counsel for Petitioner Sony Corporation at the
`
`address(es) below:
`
`John Flock
`ANDREWS KURTH KENYNON LLP
`One Broadway,
`New York, NY 10004
`Telephone: (212) 425-7200
`johnflock@andrewskurthkenyon.com
`
`Paul T. Qualey
`ANDREWS KURTH KENYNON LLP
`1350 I Street NW, Ste. 1100
`Washington, DC 20005
`Telephone: (202) 662-2700
`paulqualey@andrewskurthkenyon.com
`
`
`/ Douglas G. Muehlhauser/
`Douglas G. Muehlhauser (Reg. No. 179,495)
`Attorney for Patent Owner
`ONE-E-WAY, INC.
`
`
`
`
`
`5
`
`
`Dated: October 20, 2017
`
`
`
`053117
`26905451
`
`
`
`