UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`I.M.L. SLU,
`
`Petitioner,
`
`v.
`
`WAG ACQUISITION, LLC,
`
`Patent Owner.
`_________________________
`
`Case IPR2016-01656
`Patent 8,122,141
`_________________________
`
`PETITIONER I.M.L. SLU’S UNOPPOSED MOTION FOR PRO HAC VICE
`ADMISSION OF BETH D. JACOB UNDER 37 C.F.R. § 42.10
`
`
`
`1
`
`IPR2015-01656
`I.M.L. SLU
`
`
`
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`I.M.L. SLU,
`
`Petitioner,
`
`v.
`
`WAG ACQUISITION, LLC,
`
`Patent Owner.
`_________________________
`
`Case IPR2016-01656
`Patent 8,122,141
`_________________________
`
`PETITIONER I.M.L. SLU’S UNOPPOSED MOTION FOR PRO HAC VICE
`ADMISSION OF BETH D. JACOB UNDER 37 C.F.R. § 42.10
`
`
`
`1
`
`IPR2015-01656
`I.M.L. SLU
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.10, and pursuant to the authorization provided by
`
`the United States Patent and Trademark Office’s Patent Trial and Appeal Board
`
`(“Board”) in the Notice of Filing Date Accorded to Petition and Time for Filing
`
`Patent Owner Preliminary Response (Paper Number 3, September 1, 2016) (“the
`
`Notice”), Petitioner I.M.L. SLU submits this motion for Beth D. Jacob to appear
`
`pro hac vice. Petitioner respectfully requests the Board to recognize Ms. Jacob as
`
`counsel pro hac vice during this proceeding, and demonstrate good cause for doing
`
`so as shown below.
`
`I.
`
`TIME FOR FILING
`
`Pursuant to the authorization provided in the Notice, as well as the “Order –
`
`Authorizing Motion for Pro Hac Vice Admission” in Unified Patents, Inc. v.
`
`Parallel Iron, LLC, IPR2013-00639, Paper 7 (Oct. 15, 2013) (“the Order”), this
`
`motion for pro hac vice admission is being filed no sooner than twenty-one (21)
`
`days after service of the Petition.
`
`II.
`
`STATEMENT OF FACTS
`
`Pursuant to the Order, the following statement of facts shows that good
`
`cause exists for the Board to recognize Ms. Jacob pro hac vice.
`
`Lead counsel for this proceeding, David R. Yohannan, is a registered
`
`practitioner (Reg. No. 37,480).
`
`IPR2015-01656
`I.M.L. SLU
`
`2
`
`
`
`
`
`Ms. Jacob is an experienced litigation attorney with three decades of
`
`litigation experience. Ex. 1013 ¶ 8. She has been involved in numerous patent
`
`infringement cases in federal district courts across the country. Id. She has
`
`experience in various aspects of patent infringement matters, including trials,
`
`Markman hearings, and summary judgment hearings. Id. She has argued in
`
`multiple patent cases in federal courts. Id.
`
`Ms. Jacob is a member in good standing of the New York State Bar and is
`
`admitted to practice before the United States Supreme Court, the United States
`
`Court of Appeals for the Federal Circuit, the United States Court of Appeals for the
`
`Second Circuit, and the United States District Courts for the Southern and Eastern
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`Districts of New York. Id. ¶ 1.
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`Ms. Jacob has not been suspended or disbarred from practice, has never had
`
`any application for admission to practice denied, and has never had any sanctions
`
`or contempt citations imposed against her. Id. ¶¶ 2-4.
`
`Ms. Jacob is trial counsel for the Petitioner in the patent litigation against
`
`Patent Owner concerning the patent challenged in the Petition (WAG Acquisition,
`
`LLC v. Sobonito Investments, Ltd. et al., Case No. 2:14-cv-1661-ES-JAD (D.N.J.)).
`
`Id. ¶ 8. As a result of Ms. Jacob’s involvement as trial counsel for the Petitioner in
`
`co-pending district court litigation over the involved patent, Ms. Jacob has
`
`obtained substantial familiarity with the involved patent, the prior art, and the
`
`IPR2015-01656
`I.M.L. SLU
`
`
`3
`
`
`
`
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`various issues raised in this proceeding. Moreover, Ms. Jacob has reviewed the
`
`involved patent, the Petition, the prior art, and other cited materials. Id. Given her
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`patent litigation experience—including patent litigation on behalf of Petitioner—
`
`and her familiarity with the instant Petition, the cited materials, and the patented
`
`technology, Ms. Jacob has established familiarity with the subject matter at issue in
`
`this proceeding. Id.
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`Ms. Jacob has read and will comply with the Office Patent Trial Practice
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`Guide and the Board’s Rules for Practice for Trials set forth in part 42 of the
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`C.F.R., and she agrees to be subject to the USPTO Rules of Professional Conduct
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`set forth in 37 C.F.R. §§ 11.101 et seq., and to disciplinary jurisdiction under 37
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`C.F.R. § 11.19(a). Id. ¶¶ 5-6. Ms. Jacob has not applied to appear pro hac vice in
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`the last three years in any other matter before the Board. Id.
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`Given that Ms. Jacob is a trusted advisor to Petitioner on matters involving
`
`the litigation of patent disputes—including patent litigation concerning the patent
`
`at issue here—and her familiarity with the subject matter at issue in this
`
`proceeding, Petitioner respectfully submits that it has shown good cause for the
`
`Board to recognize Ms. Jacob as counsel pro hac vice during this proceeding.
`
`IPR2015-01656
`I.M.L. SLU
`
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`4
`
`
`
`
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`III. AFFIDAVIT OR DECLARATION OF INDIVIDUAL SEEKING TO
`APPEAR
`
`This Motion is accompanied by a Declaration of Ms. Jacob as required by
`
`the Order.
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`Dated: October 26, 2016
`
`Respectfully submitted,
`
`/David R. Yohannan/
`David R. Yohannan
`Reg. No. 37,480
`
`Lead Counsel for Petitioner
`
`
`
`KELLEY DRYE & WARREN LLP
`333 W. Wacker Drive
`3050 K Street, N.W.
`Washington, DC 20007
`Email: dyohannan@kelleydrye.com
`
`
`
`IPR2015-01656
`I.M.L. SLU
`
`
`5
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), I certify that, on October 26,
`
`2016, I caused to be served true and correct copies of the foregoing “PETITIONER
`
`I.M.L. SLU’S UNOPPOSED MOTION FOR PRO HAC VICE ADMISSION OF
`
`BETH D. JACOB UNDER 37 C.F.R. § 42.10” by mail and electronic mail on the
`
`Ronald Abramson
`David G. Liston
`Lewis Baach PLLC
`The Chrysler Building
`405 Lexington Avenue
`New York, NY 10174
`
`/David R. Yohannan/
`David R. Yohannan
`Reg. No. 37,480
`
`Lead Counsel for Petitioner
`
`
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`following attorneys:
`
`Ernest D. Buff
`Ernest D. Buff & Associates, LLC
`231 Somerville Road
`Bedminster, NJ 07921
`
`
`
`
`
`Dated: October 26, 2016
`
`
`KELLEY DRYE & WARREN LLP
`3050 K Street, N.W.
`Washington, DC 20007
`Email: dyohannan@kelleydrye.com
`
`
`IPR2015-01656
`I.M.L. SLU
`
`
`6
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