Filed on behalf of Valencell, Inc.
`By:
`Justin B. Kimble (JKimble-IPR@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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`
`
`FITBIT, INC.,
`Petitioner,
`
`v.
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`VALENCELL, INC.,
`Patent Owner.
`
`
`Case IPR2017-003191
`U.S. Patent No. 8,923,941
`
`
`PRO HAC VICE MOTION TO ADMIT ATTORNEY
`JEFFREY R. BRAGALONE 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
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`
`
`
`1 Case IPR2017-01555 has been joined with this proceeding.
`
`
`By:
`Justin B. Kimble (JKimble-IPR@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
`
`
`
`
`FITBIT, INC.,
`Petitioner,
`
`v.
`
`VALENCELL, INC.,
`Patent Owner.
`
`
`Case IPR2017-003191
`U.S. Patent No. 8,923,941
`
`
`PRO HAC VICE MOTION TO ADMIT ATTORNEY
`JEFFREY R. BRAGALONE 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 Case IPR2017-01555 has been joined with this proceeding.
`
`
`
`Case IPR2017-00319
`U.S. Pat. No. 8,923,941
`
`Patent Owner Valencell, Inc. (“Valencell”) hereby files this motion pursuant
`
`to 37 C.F.R. § 42.10(c) for Jeffrey R. Bragalone to appear pro hac vice on its behalf
`
`before the Patent Trial and Appeal Board in IPR2017-00319.
`
`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.
`
`B. There is Good Cause for the Board to Recognize Jeffrey R. Bragalone
`pro hac vice During This Proceeding.
`
`1. Mr. Bragalone is an Experienced Patent Litigator.
`
`Jeffrey R. Bragalone is an experienced litigator with over 31 years of
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`experience. He has argued multiple patent cases before the Federal Circuit, including
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`the case which has now been remanded to the Board: Fitbit, Inc. v. Valencell, Inc.,
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`No. 2019-1048 (Fed. Cir. July 8, 2020); see also Greenliant Sys., Inc. v. Xicor LLC,
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`692 F.3d 1261 (Fed. Cir. 2012); United Access Technologies, LLC v. Earthlink, Inc.,
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`432 F. App’x 976 (Fed. Cir. 2011); Board of Regents of the University of Texas
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`System v. BenQ America Corp., 533 F.3d 1362 (Fed. Cir. 2008); and Tegic
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`Commc’ns Corp. v. Board of Regents of the University of Texas System, 458 F.3d
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`1335 (Fed. Cir. 2006) (appeared on brief). In addition to his argument before the
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`Federal Circuit, Mr. Bragalone has represented numerous clients in patent litigation
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`and general litigation as lead counsel in district courts and state courts across the
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`Case IPR2017-00319
`U.S. Pat. No. 8,923,941
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`United States. Mr. Bragalone has also participated in several oral arguments before
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`the PTAB, including the argument in this case on February 27, 2018.
`
`2. Mr. Bragalone Has an Established Familiarity with the Subject
`Matter at Issue in this Proceeding.
`
`Mr. Bragalone has represented Valencell in previous patent litigation, through
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`which he has familiarized himself with the subject matter at issue in the proceeding,
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`i.e., physiological monitoring technology. See, e.g., Valencell, Inc. v. Apple, Inc.,
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`No. 5:16-cv-00001 (E.D. N.C., filed Jan. 4, 2016); see also Valencell, Inc. v. Fitbit,
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`Inc., No. 5:16-cv-00002 (E.D. N.C., filed Jan. 4, 2016). As counsel in those actions,
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`Mr. Bragalone 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. Bragalone has developed infringement allegations that assert the
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`patent-at-issue in this proceeding against various products, including, for example
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`watches with heart rate monitoring functionality. In his role as counsel in those
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`litigations, Mr. Bragalone has spent significant time learning about physiological
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`monitoring technology such as that found in the patent-at-issue in this proceeding.
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`Moreover, Mr. Bragalone has analyzed the prior art involved in this petition as well
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`as in the petitions for related patents.
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`In preparation for the above identified matters, Mr. Bragalone has become
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`very familiar with the patents, technology, and prior-art that cover the technology of
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`the patent at issue in this proceeding. Given Mr. Bragalone’s familiarity with the
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`Case IPR2017-00319
`U.S. Pat. No. 8,923,941
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`underlying technology, patents, and prior art, Valencell asks that the Board grant this
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`Motion to afford Valencell the benefit of having its chosen representation to be
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`authorized to practice before the PTAB in this matter.
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`C. Mr. Bragalone has Submitted a Declaration2 Herewith Attesting the
`Following Facts.
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`1. Mr. Bragalone is a member in good standing of the Texas State Bar.
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`2. Mr. Bragalone has never been subject to any suspensions or
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`disbarments from practice before any court or administrative body.
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`3.
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`None of Mr. Bragalone’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. Bragalone 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. Bragalone 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. Bragalone 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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`2 See Declaration of Jeffrey R. Bragalone, attached hereto as Exhibit 2008.
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`
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`Case IPR2017-00319
`U.S. Pat. No. 8,923,941
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`7.
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`During the past six years, Mr. Bragalone has appeared or applied to
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`appear pro hac vice before the PTAB in 31 proceedings, all of which
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`have been granted.
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`8. Mr. Bragalone has familiarity with the subject matter at issue in the
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`proceeding as set forth in Section B.2 above.
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`
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`Dated: September 14, 2020
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`Respectfully submitted,
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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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`Case IPR2017-00319
`U.S. Pat. No. 8,923,941
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`CERTIFICATE OF SERVICE
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`
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`The undersigned hereby certifies that document has been served via electronic
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`mail on September 14, 2020, to Petitioner at following email addresses pursuant to
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`its consent in its Updated Mandatory Notices p. 1: jimglass@quinnemanuel.com;
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`samstake@quinnemanuel.com; and ogizivojnovic@quinnemanuel.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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