Filed on behalf of Valencell, Inc.
`By:
`Justin B. Kimble (JKimble-IPR@bcpc-law.com)
`Nicholas C Kliewer (nkliewer@bcpc-law.com)
`Jonathan H. Rastegar (jrastegar@bcpc-law.com)
`Bragalone Conroy PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
`Tel: 214.785.6670
`Fax: 214.786.6680
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
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`VALENCELL, INC.,
`Patent Owner.
`
`
`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`
`PRO HAC VICE MOTION TO ADMIT ATTORNEY
`T. WILLIAM KENNEDY PURSUANT TO 37 C.F.R. § 42.10(c)
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`
`
`1
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`
`By:
`Justin B. Kimble (JKimble-IPR@bcpc-law.com)
`Nicholas C Kliewer (nkliewer@bcpc-law.com)
`Jonathan H. Rastegar (jrastegar@bcpc-law.com)
`Bragalone Conroy PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
`Tel: 214.785.6670
`Fax: 214.786.6680
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VALENCELL, INC.,
`Patent Owner.
`
`
`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`
`PRO HAC VICE MOTION TO ADMIT ATTORNEY
`T. WILLIAM KENNEDY PURSUANT TO 37 C.F.R. § 42.10(c)
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`
`
`1
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`
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`Patent Owner Valencell, Inc. (“Valencell”) hereby files this motion pursuant
`
`to 37 C.F.R. § 42.10(c) for T. William Kennedy to appear pro hac vice on its behalf
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`before the Patent Trial and Appeal Board in IPR2017-00317. This motion follows
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`the guidelines set forth in IPR2013-00639, Paper 7, entered October 15, 2013.
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`
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`This motion is filed concurrently with nearly identical motions in IPR2017-
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`00315, -00318, -00319, and -00321, all of which are set for oral argument together
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`on February 27, 2018.
`
`A. Lead Counsel is a Registered Practitioner.
`
`Valencell has already designated a registered practitioner, Justin B. Kimble
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`(Reg. No. 58,591) as lead counsel, and Valencell intends to designate Mr. Kennedy
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`as one of its back-up counsel, pending the Board granting this motion.
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`B. There is Good Cause for the Board to Recognize T. William Kennedy
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`pro hac vice during this proceeding.
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`Mr. Kennedy is a patent litigator with over ten years’ experience, including
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`significant experience in the area of patent validity. In the many patent litigations in
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`which he has been counsel, he was worked extensively on issues relating to 35
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`U.S.C. §§ 102, 103, and 112 challenges to patent validity including things such as
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`working closely with experts on validity and invalidity reports, preparing invalidity
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`arguments for trial, developing invalidity and validity arguments, and reviewing and
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`analyzing numerous prosecution histories and prior art references. Mr. Kennedy has
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`2
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`also spent significant time learning the procedure of inter partes review since its
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`inception, and has participated in many inter partes review procedures as shown in
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`the following section.
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`Mr. Kennedy currently represents the Patent Owner Valencell, Inc. in its
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`assertion of the patent at issue in this proceeding and related patents in two cases in
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`the Eastern District of North Carolina. See, e.g., Valencell, Inc. v. Apple, Inc., No.
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`5:16-cv-00001 (E.D. N.C., filed Jan. 4, 2016); see also Valencell, Inc. v. Fitbit, Inc.,
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`No. 5:16-cv-00002 (E.D. N.C., filed Jan. 4, 2016). As counsel in those actions, Mr.
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`Kennedy has become very familiar with the subject matter at issue in this
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`proceeding, e.g., physiological monitoring technology. Furthermore, in those
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`lawsuits Mr. Kennedy has developed infringement allegations that assert the patent-
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`at-issue in this petition against various products, including, for example watches
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`with heart rate monitoring functionality. Mr. Kennedy has also taken and defended
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`several depositions in those matters. In his role as counsel in those litigations, Mr.
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`Kennedy has spent significant time learning about physiological monitoring
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`technology such as that found in the patent-at-issue in this proceeding. Moreover,
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`Mr. Kennedy has analyzed the prior art involved in this petition as well as in the
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`petitions for related patents.
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`3
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`C. Mr. Kennedy has Submitted Herewith a Declaration1 Attesting the
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`Following Facts.
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`1. Mr. Kennedy is a member in good standing of the Texas State Bar.
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`2. Mr. Kennedy has never been subject to any suspensions or disbarments
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`from practice before any court or administrative body.
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`3.
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`None of Mr. Kennedy’s applications for admission to practice before
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`any court or administrative body has ever been denied.
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`4. Mr. Kennedy has never been sanctioned nor had contempt citations
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`imposed by any court or administrative body.
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`5. Mr. Kennedy 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
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`part 42 of 37 C.F.R.
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`6. Mr. Kennedy will be subject to the USPTO Rules of Professional
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`Conduct set forth in 37 C.F.R. §§ 11.101 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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`During the past three years, Mr. Kennedy has applied to appear pro hac
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`vice before the PTAB in fourteen other proceedings, six of which have
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`been granted, two of which involved IPRs that were joined with those
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`for which Mr. Kennedy’s pro hac vice motion had been already granted,
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`1 See Declaration of T. William Kennedy, attached hereto as Exhibit 2005.
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`4
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`and two remained pending throughout the life of the IPR. Each of these
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`IPRs involved patent owner Innovative Display Technologies LLC or
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`Delaware Display Group LLC. The other four remain pending and each
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`involve the patent owner Valencell, Inc.
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`i. IPR2014-01096 (granted);
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`ii. IPR2014-01097 (pending – final decision issued);
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`iii. IPR2014-01362 (pending – final decision issued);
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`iv. IPR2015-00487 (granted);
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`v. IPR2015-00506 (granted);
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`vi. IPR2015-01666 (joined with IPR2015-00506 above);
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`vii. IPR2015-01717 (joined with IPR2015-00487 above);
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`viii. IPR2015-01866 (granted);
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`ix. IPR2015-01867 (granted);
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`x. IPR2015-01868 (granted);
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`xi. IPR2017-00315 (pending, filed concurrently herewith);
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`xii. IPR2017-00318 (pending, filed concurrently herewith);
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`xiii. IPR2017-00319 (pending, filed concurrently herewith); and
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`xiv. IPR2017-00321 (pending, filed concurrently herewith).
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`Mr. Kennedy has not applied to appear pro hac vice in any other
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`proceeding before the PTAB.
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`5
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`8. Mr. Kennedy has familiarity with the subject matter at issue in the
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`proceeding as set forth in Section B above.
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`Dated: August 3, 2017
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`Respectfully submitted,
`
`________________________
`Justin B. Kimble
`Attorney for Patent Owner
`Registration No. 58,591
`Bragalone Conroy PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
`
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that document has been served via electronic
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`mail on August 3, 2017, to Petitioner at following email addresses pursuant to its
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`consent
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`in
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`its Petition at p. 3: mspecht-PTAB@skgf.com, holoubek-
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`PTAB@skgf.com, jfitzsimmons-PTAB@skgf.com, and PTAB@skgf.com.
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` ________________________
`Justin B. Kimble
`Attorney for Patent Owner
`Registration No. 58,591
`Bragalone Conroy PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
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`6
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