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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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`RUIZ FOOD PRODUCTS, INC.,
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`Petitioner,
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`v.
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`MACROPOINT LLC,
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`Patent Owner.
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`__________
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`Case IPR2017-02016
`U.S. Patent No. 8,275,358 B1
`__________
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`UNOPPOSED MOTION FOR PRO HAC VICE ADMISSION OF
`KYLE B. FLEMING
`UNDER 37 C.F.R. § 42.10
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`Exhibit No.
`2001
`2002
`2003
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`2004
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`2005
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`2006
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`2007
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`UPDATED LIST OF EXHIBITS
`Description
`Expert Declaration of David Hilliard Williams
`David Hilliard Williams CV
`Ruiz Food Products, Inc.’s Initial Invalidity Contentions,
`Civil Action 6:16-cv-1133
`Expert Report of Dr. Stephen B. Heppe dated January
`25, 2017, Civil Action 6:16-cv-1133
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`Ruiz Food Products, Inc.’s Final Election of Asserted
`Prior Art, Civil Action 6:16-cv-1133
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`Declaration of Kyle B Fleming, Esq.
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`Kyle B. Fleming CV
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`Patent Owner respectfully requests that the Board recognize Kyle B. Fleming as
`counsel pro hac vice for the above-captioned proceeding in accordance with 37
`C.F.R. § 42.10(c). Patent Owner is, contemporaneously, requesting the admission
`pro hac vice of Mr. Fleming in the related proceeding, IPR2017-2018.
`The Lead Counsel, Mark C. Johnson, is a registered practitioner (Reg. No.
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`51,854). Petitioner does not oppose this Motion.
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`I.
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`Timing for Filing
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`This Motion for Pro Hac Vice Admission is being filed no sooner than
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`twenty-one (21) days after service of the Petition as set forth in the Order
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`Authorizing Motion for Pro Hac Vice Admission, Unified Patents, Inc. v. Parallel
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`Iron, LLC, IPR2013-00639 Paper 7 (“Pro Hac Vice Order”).
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`II.
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`Statement of Facts
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`As required by the Pro Hac Vice Order, the following statement of facts
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`demonstrates good cause for the Board to recognize Mr. Fleming pro hac vice.
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`Mr. Fleming is an experienced litigation attorney and has been involved in
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`numerous litigations in over 24 years of practice, including numerous litigations
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`involving patent infringement in U.S. District Courts across the country, before the
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`U.S. Court for Appeals for the Federal Circuit, and the International Trade
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`Commission. Mr. Fleming’s CV is attached as (Exhibit 2007) to the accompanying
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`Declaration of Kyle B. Fleming (Exhibit 2006). As evidenced by Mr. Fleming’s
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`CV and Declaration (including a partial list of his cases), he has represented a wide
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`range of clients in a wide range of technologies in patent litigation matters.
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`With respect to the instant dispute, Mr. Fleming has been involved in
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`counselling and representing Patent Owner with respect to these and related patents
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`since 2015. Mr. Fleming was first involved in evaluating and counselling the
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`Patent Owner with respect to the related patents asserted in MacroPoint, LLC v.
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`FourKites, Inc., Case No. 1:15-cv-01002 (N.D. Ohio) and the subsequent
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`invalidity challenges thereto.
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`Mr. Fleming has also been involved in evaluating and counselling the Patent
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`Owner with respect to the subject patents. U.S. Patent Nos. 8,275,358 and
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`9,429,659 (IPR2017-2018) are currently being asserted by Patent Owner against
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`Petitioner in an infringement action pending in the Eastern District of Texas,
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`MacroPoint, LLC v. Ruiz Food Products, Inc., Case. No. 6:16-cv-01133-RWS-
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`KNM, and were also the subject of another action titled FourKites, Inc. v.
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`MacroPoint, LLC, Case No. 1-16-cv-02703 (N.D. Ohio). Although neither Mr.
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`Fleming nor his Firm made any appearances in these matters, Mr. Fleming was
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`involved in working with Patent Owner and other litigation counsel in material
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`aspects of these other actions.
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`As a result of his work in connection with the aforementioned District Court
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`litigations, Mr. Fleming is extremely familiar with the subject matter of this
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`proceeding. In addition, and specifically with respect to these proceedings, Mr.
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`Fleming has been heavily involved in analyzing the Petitions and the asserted prior
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`art and Exhibits, including Petitioner’s expert’s declaration. Further, Mr. Fleming
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`has been extensively involved in these proceedings, including meeting with Patent
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`Owner and Patent Owner’s expert, and has been materially and substantially
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`involved in preparing Patent Owner’s Preliminary Responses; Patent Owner’s
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`Responses, the Motion to Amend in this proceeding; and in the discovery taken
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`thus far.
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`Further, the Patent Owner has expended significant time and financial
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`resources in connection with Mr. Fleming’s representation in these proceedings
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`and the related District Court matters, and the Patent Owner wishes to continue
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`using Mr. Fleming as one of its counsel in these proceedings.
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`Accordingly, Mr. Fleming has a well-established familiarity with the subject
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`matters at issue in the proceeding and there is good cause for the Board to
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`recognize Mr. Fleming pro hac vice during the proceeding.
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`III. Accompanying Declaration of Mr. Fleming (Exhibit 2006)
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`This Motion is accompanied by the Declaration of Mr. Fleming as required
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`by the Pro Hac Vice Order. In this Declaration, Mr. Fleming states compliance
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`with the general requirements for pro hac vice admission and describes the
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`foregoing familiarity with the subject matter of the proceedings. Further, Mr.
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`Fleming states that he is a member is good standing of the Bar of the State of
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`California, the Bar of the State of Ohio, and the Bar of the State of New York; is
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`permanently admitted to practice before the United States Court of Appeals for the
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`Second, Sixth, Ninth, Eleventh and Federal Circuits; and, is permanently admitted
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`to practice before the United States District Court for the Districts in California
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`(Northern, Central and Southern), New York (Southern and Eastern), Ohio
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`(Northern and Southern), Michigan (Eastern), Wisconsin (Eastern), Illinois
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`(Northern and Central) and Colorado.
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`Mr. Fleming also states that he has never been suspended or disbarred from
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`practice before any court or administrative body; never been denied an application
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`for admission to practice before any court or administrative body; and never had
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`imposed against him sanctions or contempt citations by any court or administrative
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`body.
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`Mr. Fleming further states that he has read and will comply with the
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`Office Patent Trial Practice Guide and the Board’s Rules of Practice for Trials set
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`forth in part 42 of 37 C.F.R., and agrees that he will be subject to the USPTO
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`Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et. seq. and
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`disciplinary jurisdiction under 37 C.F.R. § 11.19(a). Further, other than the
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`contemporaneously filed Motion for Pro Hac Vice Admission in the related
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`proceeding (IPR2017-2018), Mr. Fleming states that he has not previously applied
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`to appear pro hac vice in any proceedings before the PTAB in the last three (3)
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`years.
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`Lastly, Mr. Fleming states that he has familiarity with the subject matter at
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`issue in this proceeding.
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`Date: September 4, 2018
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`Respectfully submitted,
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` /Mark C. Johnson/
`Mark C. Johnson, Reg. No. 51,854
`Kyle B. Fleming (seeking pro hac vice)
`Luis A. Carrion, Reg. No. 61,255
`Renner Otto
`1621 Euclid Avenue, Floor 19
`Cleveland, Ohio 44115
`t: +1.216.621.1113
`f: +1.216.621.6165
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`Attorneys for Patent Owner
`MacroPoint, LLC
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6(e)(4)
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`The undersigned hereby certifies that the above-captioned UNOPPOSED
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`MOTION FOR PRO HAC VICE ADMISSION OF KYLE B. FLEMING UNDER
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`37 C.F.R. § 42.10 is being served in its entirety on this date by filing this document
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`through the Patent Review Processing System as well as delivering a copy via
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`electronic mail upon the following at:
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`James P. Murphy jpmurphy@polsinelli.com
`Matt Frontz mfrontz@polsinelli.com
`Ryan Murphy rmurphy@polsinelli.com
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`Date: September 4, 2018
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`Respectfully submitted,
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`/Mark C. Johnson/
`Mark C. Johnson, Reg. No. 51,854
`Renner Otto
`1621 Euclid Avenue, Floor 19
`Cleveland, Ohio 44115
`t: +1.216.621.1113
`f: +1.216.621.6165
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`Attorneys for Patent Owner
`MacroPoint, LLC
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