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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`REACTIVE SURFACES LTD. LLP,
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`Petitioner,
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`v.
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`TOYOTA MOTOR CORPORATION,
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`Patent Owner.
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`Case IPR2016-01914
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`Patent No. 8,394,618 B2
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`PATENT OWNER’S MOTION FOR PRO HAC VICE ADMISSION OF
`JOHN D. LUKEN PURSUANT TO 37 C.F.R. § 42.10
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`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
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`I.
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`RELIEF REQUESTED
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`Pursuant to 37 C.F.R. § 42.10(c), Patent Owner Toyota Motor Corporation
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`(“Patent Owner”) respectfully requests the pro hac vice admission of John D.
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`Luken in this proceeding. The Board has authorized Patent Owner’s pro hac vice
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`motion in the Notice of Filing Date Accorded to Petition and Time for Filing
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`Patent Owner Preliminary Response. See Paper 3. As explained further below,
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`Mr. Luken is an experienced patent litigation attorney who has an established
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`familiarity with the subject matter at issue in this inter partes review. Accordingly,
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`Patent Owner requests that Mr. Luken be admitted pro hac vice, such that he may
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`be appointed additional back-up counsel for Patent Owner.
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`Petitioner Reactive Surfaces Ltd. LLP (“Petitioner”) does not oppose the
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`motion.
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`II. GOVERNING LAW
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`37 C.F.R. § 42.10(c) provides that “a motion to appear pro hac vice by
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`counsel who is not a registered practitioner may be granted upon showing that
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`counsel is an experienced litigating attorney and has an established familiarity with
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`the subject matter at issue in the proceeding.” A motion for pro hac vice
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`admission must contain a statement of facts showing there is good cause for the
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`Board to recognize counsel pro hac vice during the proceeding and must be
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`accompanied by an affidavit or declaration of the individual seeking to appear
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`1
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`attesting to the following:
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`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
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`1. Membership in good standing of the Bar of at least one State or the
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`District of Columbia;
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`2.
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`No suspensions or disbarments from practice before any court or
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`administrative body;
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`3.
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`No application for admission to practice before any court or
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`administrative body ever denied;
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`4.
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`No sanctions or contempt citations imposed by any court or
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`administrative body;
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`5.
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`The individual seeking to appear has read and will comply with the
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`Office Patent Trial Practice Guide and the Board’s Rules of Practice
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`for Trials set forth in part 42 of the C.F.R.;
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`6.
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`The individual will be subject to the Office’s Code of Professional
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`Responsibility set forth in 37 C.F.R. §§ 10.20 et seq. and disciplinary
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`jurisdiction under 37 C.F.R. § 11.19(a);
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`7.
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`All other proceedings before the Office for which the individual has
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`applied to appear pro hac vice in the last three (3) years; and
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`8.
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`Familiarity with the subject matter at issue in the proceeding.
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`See Unified Patents, Inc. v. Parallel Iron, LLC, IPR2013-00639, Paper 7 at 3-4
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`(P.T.A.B. Oct. 15, 2013).
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`2
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`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
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`III. STATEMENT OF MATERIAL FACTS
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`Based on the following facts, which are supported by the Declaration of
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`John D. Luken (Exhibit 2001) filed concurrently with this motion, Patent Owner
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`requests that Mr. Luken be admitted pro hac vice in this proceeding:
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`1. Mr. Luken is a member in good standing of the State Bar of Ohio, and
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`has practiced patent litigation since 2000. Mr. Luken has been
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`litigating patent cases during this entire time period and has been
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`involved in numerous cases involving patent validity and infringement
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`in federal district courts across the country. Mr. Luken has significant
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`trial experience in patent and non-patent cases and has argued
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`multiple appeals before the United States Court of Appeals for the
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`Federal Circuit. Ex. 2001 (Luken Decl.) ¶¶ 4, 5.
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`2. Mr. Luken has never been suspended or disbarred from practice
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`before any court or administrative body. Id. ¶ 6.
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`3. Mr. Luken has never had any application for admission to practice
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`before any court or administrative body denied. Id. ¶ 7.
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`4.
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`No sanctions or contempt citations have ever been imposed against
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`Mr. Luken by any court or administrative body. Id. ¶ 8.
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`5. Mr. Luken has read and will comply with the Office Patent Trial
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`3
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`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
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`Practice Guide and the Board’s Rules of Practice for Trials set forth in
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`part 42 of 37 C.F.R. Id. ¶ 9.
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`6. Mr. Luken will be subject to the Office’s Code of Professional
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`Responsibility. Id. ¶ 10.
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`7.
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`In the last three (3) years, Mr. Luken has applied to appear pro hac
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`vice in the following proceedings before the Office: IPR2015-01128,
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`IPR2015-01129, IPR2015-01131, and IPR2016-01462. Id. ¶ 11. Mr.
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`Luken’s application was granted in each proceeding.
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`8. Mr. Luken has an established familiarity with the subject matter at
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`issue in this inter partes review. Id. ¶ 12. Mr. Luken has studied the
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`subject patent, the Petition, and the accompanying exhibits, including
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`the prior art references relied upon by Petitioner. Id. In addition, Mr.
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`Luken has engaged in extensive strategic and substantive discussions
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`regarding this proceeding with Patent Owner’s lead and back-up
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`counsel. Id.
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`IV. CONCLUSION
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`Mr. Luken has an established familiarity with the subject matter at issue in
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`this proceeding as well as significant litigation experience and expertise. For these
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`reasons, good cause exists to admit Mr. Luken pro hac vice in this proceeding.
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`4
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`Dated: February 14, 2017
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`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
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`Respectfully submitted,
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` /s/ Joshua A. Lorentz
`Joshua A. Lorentz
`Reg. No. 52,406
`Dinsmore & Shohl LLP
`255 E. Fifth St.
`Cincinnati, OH 45202
`T: (513) 977-8200
`Attorney for Patent Owner
`Toyota Motor Corporation
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`5
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`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of the foregoing PATENT
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`OWNER’S MOTION FOR PRO HAC VICE ADMISSION OF JOHN D. LUKEN
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`PURSUANT TO 37 C.F.R. § 42.10 was served on February 14, 2017 by email on
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`the following counsel of record for Petitioner:
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`David O. Simmons (dsimmons@ivcpatentagency.com)
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`Jonathan D. Hurt (jhurt@technologylitigators.com)
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`Dated: February 14, 2017
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`Respectfully submitted,
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` /s/ Joshua A. Lorentz
`Joshua A. Lorentz
`Reg. No. 52,406
`Attorney for Patent Owner
`Toyota Motor Corporation
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