IPR2017-01723
`U.S. Patent No. 5,954,781
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`Paper 6
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`UNIFIED PATENTS, INC.,
`Petitioner
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`v.
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`VELOCITY PATENT, LLC,
`Patent Owner
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`____________
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`Case IPR2017-01723
`U.S. Patent 5,954,781
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`____________
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`PATENT OWNER’S MOTION FOR PRO HAC VICE ADMISSION OF
`JAMES A. SHIMOTA
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`U.S. Patent No. 5,954,781
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`Paper 6
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`UNIFIED PATENTS, INC.,
`Petitioner
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`v.
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`VELOCITY PATENT, LLC,
`Patent Owner
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`____________
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`Case IPR2017-01723
`U.S. Patent 5,954,781
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`____________
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`PATENT OWNER’S MOTION FOR PRO HAC VICE ADMISSION OF
`JAMES A. SHIMOTA
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`IPR2017-01723
`U.S. Patent No. 5,954,781
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` Pursuant to 37 C.F.R. § 42.10 and the Notice authorizing leave to file
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`this motion (Paper No. 3), Patent Owner Velocity Patent, LLC (“Patent
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`Owner”) requests that the Board admit James A. Shimota pro hac vice in this
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`proceeding.
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`Statement of Facts Showing Good Cause for the Board to
`Recognize Counsel pro hac vice During the Proceeding
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` In accordance with 37 C.F.R. § 42.10(c), the Board may recognize
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`counsel pro hac vice during a proceeding upon a showing of good cause,
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`subject to the condition that lead counsel be a registered practitioner and to any
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`other conditions as the Board may impose. Section 42.10(c) indicates that,
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`“where lead counsel is a registered practitioner, a motion to appear pro hac vice
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`may be granted upon a showing that counsel is an experienced litigating
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`attorney and has established familiarity with the subject matter at issue in the
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`proceeding.” The facts here establish good cause for the Board to recognize
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`James A. Shimota pro hac vice during this proceeding.
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`1. Lead Counsel, Howard E. Levin, is a registered practitioner.
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`2. James A. Shimota is an experienced litigator and has an established
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`familiarity with the subject matter at issue in the proceeding.
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`3. Attached to this motion as Exhibit 2001 is the Declaration of James A.
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`IPR2017-01723
`U.S. Patent No. 5,954,781
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`Shimota, where he attests, inter alia, that he is a member of good standing of
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`the Bar for the State of Illinois, the U.S. Court of Appeals for the Federal
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`Circuit, U.S. Court of Appeals for the Sixth Circuit, and U.S. District Court
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`for the Northern District of Illinois.
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`4. Mr. Shimota further attests that he has been litigating patent cases for
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`eighteen years, and has litigated patent proceedings in the Northern District
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`of Illinois, Eastern District of Texas, Eastern District of Virginia, Northern
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`and Central Districts of California, Eastern District of Wisconsin, Northern
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`District of Ohio, Eastern District of Pennsylvania, Districts of Delaware and
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`Massachusetts, and the International Trade Commission, including arguing
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`motions for summary judgment on validity issues and disputed claim terms
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`at Markman hearings.
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`5. Mr. Shimota further attests that he is familiar with the subject matter at issue
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`in this proceeding. He is lead counsel for Patent Owner in the underlying
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`district court proceedings: Velocity Patent LLC v. Mercedes-Benz USA, LLC,
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`Mercedes-Benz U.S. International, Inc., No. 1:13-cv-08413 (N.D. Ill. 2013)
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`and Velocity Patent LLC v. FCA US LLC, No. 1:13-cv-08419 (N.D. Ill.
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`2013). He was also lead counsel in three related cases involving the
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`challenged patent that have settled: Velocity Patent LLC v. Audi of America,
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`Inc., et al., No. 1:13-cv-08418 (N.D. Ill. 2013), as well as litigation in the
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`IPR2017-01723
`U.S. Patent No. 5,954,781
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`Northern District of Illinois against BMW (Case No. 1:13-cv-08416), and
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`Jaguar Land Rover (Case No. 1:13-cv-08421). Mr. Shimota attested in his
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`Declaration that he has appeared before the judges in the above-identified
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`district court proceedings for conferences and motion hearings, and in the
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`Audi, Mercedes, and FCA cases for summary judgment of invalidity and
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`claim construction hearings for U.S. Patent 5,954,781. In connection with
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`these matters, he has familiarized himself with the patent at issue, its
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`underlying file history, the background technology, and the prior art
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`references at issue.
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`6. In his Declaration, Mr. Shimota also attests to each of the listed items
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`required by 37 C.F.R. § 42.10(c).
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`Conclusion
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` For the foregoing reasons, Patent Owner respectfully requests that the Board
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`admit James A. Shimota pro hac vice in this proceeding
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`Date: August 15, 2017
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`Respectfully submitted
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`/Howard Levin/
`Howard Levin
`Registration No. 50,480
`Counsel for Patent Owner
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`IPR2017-01723
`U.S. Patent No. 5,954,781
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`CERTIFICATE OF SERVICE
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` I
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` hereby certify that on this 15th day of August, 2017, a copy of the Patent
`Owner’s Motion For Pro Hac Vice Admission of James A. Shimota, including the
`Declaration of James A. Shimota In Support Of Patent Owner’s Motion For
`Admission Pro Hac Vice attached as Exhibit 2001, has been served in its entirety
`by electronic mail on counsel of record for the Petitioner:
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`PTABInbound@fr.com
`IPR43930-0004IP1@fr.com
`axf-ptab@fr.com
`C. Eric Schulman (schulman@fr.com)
`David Holt (holt2@fr.com)
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
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`Jonathan Stroud (jonathan@unifiedpatents.com)
`Ashraf Fawzy (afawzy@unifiedpatents.com)
`Unified Patents, Inc.
`1875 Connecticut Ave., NW, Floor 10
`Washington DC, 20003
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`Date: August 15, 2017
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`Respectfully submitted
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`/Howard Levin/
`Howard Levin
`Registration No. 50,480
`Counsel for Patent Owner
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