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`UNITED STATES PATENT AND TRADEMARK OFFICE
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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
`OLEG KHARITON 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 Oleg
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`Khariton in this proceeding. The Board has authorized Patent Owner’s pro hac
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`vice 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. Khariton 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. Khariton be admitted pro hac vice, such that he
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`may 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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`Oleg Khariton (Exhibit 2002) filed concurrently with this motion, Patent Owner
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`requests that Mr. Khariton be admitted pro hac vice in this proceeding:
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`1. Mr. Khariton is a member in good standing of the State Bar of Ohio,
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`and has practiced patent litigation for several years. Mr. Khariton has
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`been involved in numerous cases involving patent validity and
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`infringement in federal district courts across the country. Mr.
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`Khariton has experience in claim construction, discovery, and motion
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`practice in patent cases. In addition, Mr. Khariton has assisted in
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`briefing multiple appeals to the United States Court of Appeals for the
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`Federal Circuit. Ex. 2002 (Khariton Decl.) ¶¶ 4, 5.
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`2. Mr. Khariton 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. Khariton 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. Khariton by any court or administrative body. Id. ¶ 8.
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`5. Mr. Khariton 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. Khariton will be subject to the Office’s Code of Professional
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`Responsibility. Id. ¶ 10.
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`7. Mr. Khariton has not applied to appear pro hac vice in another
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`proceeding before the Office in the last three (3) years. Id. ¶ 11.
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`8. Mr. Khariton has an established familiarity with the subject matter at
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`issue in this inter partes review. Id. ¶ 12. Mr. Khariton has studied
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`the subject patent, the Petition, and the accompanying exhibits,
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`including the prior art references relied upon by Petitioner. Id. In
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`addition, Mr. Khariton has engaged in extensive strategic and
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`substantive discussions regarding this proceeding with Patent Owner’s
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`lead and back-up counsel. Id.
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`IV. CONCLUSION
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`Mr. Khariton has an established familiarity with the subject matter at issue in
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`this proceeding as well as substantial litigation experience. For these reasons,
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`good cause exists to admit Mr. Khariton 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 OLEG
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`KHARITON PURSUANT TO 37 C.F.R. § 42.10 was served on February 14, 2017
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`by email on 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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