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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
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`RUIZ FOOD PRODUCTS, INC.,
`
`Petitioner,
`
`v.
`
`MACROPOINT LLC,
`
`Patent Owner.
`
`__________
`
`Case IPR2017-02018
`U.S. Patent No. 9,429,659
`__________
`
`
`UNOPPOSED MOTION FOR PRO HAC VICE ADMISSION OF
`KYLE B. FLEMING
`UNDER 37 C.F.R. § 42.10
`
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`
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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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`2008
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`2009
`
`UPDATED LIST OF EXHIBITS
`Description
`Expert Declaration of David Hilliard Williams
`David Hilliard Williams CV
`“What are the differences in the technical specifications in the
`1988 automatic onboard recording device (AOBRD) Rule (49
`CFR 395.15) and the Electronic Logging Device (ELD) rule?”,
`https://www.fmcsa.dot.gov/faq/what-are-differences-specs-1988-
`aobrd-rule-and-eld-rule
`“ELD MANDATE: UPDATES, VIOLATION INFORMATION
`AND DEVICE INTRODUCTION PRICING & REVIEWS
`DRIVERS NEED TO KNOW,”
`https://unitedworldtransportation.com/eld-mandate-updates-
`violation-information-device-introduction-pricing-reviews-
`drivers-need-know/
`“Automatic On-Board Recording Devices (AOBRDs) Hand-
`Held, Commercial Vehicle Safety Alliance, June 6, 2012,
`http://www.ct.gov/dmv/lib/dmv/cv_bulletins/2012-05-automatic-
`on-board-recording-devices-aobrds-hand-held-created-06-06-
`12.pdf
`“Small Hardware Device Provides GPS Fleet Tracking
`Capabilities,” Fleet Financials, October 14, 2010,
`https://www.fleetfinancials.com/72619/small-hardware-device-
`provides-gps-fleet-tracking-capabilities
`“A Look at the Geotab GO Device: Past, Present, and Future,”
`Malene Johansen & Vincent Zhu, June 22, 2015,
`https://www.geotab.com/blog/geotab-go-device-past-present-
`future/
`“Announcing Geotab GO5 Premium Vehicle Tracking Device,”
`April 5, 2011, https://www.geotab.com/press-release/u-blox/
`“FMCSA Implementation of MAP-21,” Federal Motor Carrier
`Safety Administration, September 28, 2012,
`https://www.fmcsa.dot.gov/sites/fmcsa.dot.gov/files/docs/FMCS
`
`1
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`
`
`Exhibit No.
`
`2010
`
`2011
`
`2012
`
`
`
`
`
`Description
`A%20Implementation%20of%20MAP-21-%20Overview-
`Agenda-Qs%209-28-12.pdf
`“The Future of Electronic On-board Recording Devices in the
`U.S.,” Michael Goldberg, July 3, 2011, https://www.frg-
`law.com/blog/the-future-of-electronic-on-board-recording-
`devices-in-the-u-s/
`Declaration of Kyle B Fleming, Esq.
`
`Kyle B. Fleming CV
`
`
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`2
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`
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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, IPR2017-2016.
`
`The Lead Counsel, Mark C. Johnson, is a registered practitioner (Reg. No.
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`51,854). Petitioner does not oppose this Motion.
`
`I.
`
`Timing for Filing
`
`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
`
`Authorizing Motion for Pro Hac Vice Admission, Unified Patents, Inc. v. Parallel
`
`Iron, LLC, IPR2013-00639 Paper 7 (“Pro Hac Vice Order”).
`
`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.
`
`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 2012) to the accompanying
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`Declaration of Kyle B. Fleming (Exhibit 2011). As evidenced by Mr. Fleming’s
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`3
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`
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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.
`
`FourKites, Inc., Case No. 1:15-cv-01002 (N.D. Ohio) and the subsequent
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`invalidity challenges thereto.
`
`Mr. Fleming has also been involved in evaluating and counselling the Patent
`
`Owner with respect to the subject patents. U.S. Patent Nos. 8,275,358 (IPR2017-
`
`02016) and 9,429,659 are currently being asserted by Patent Owner against
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`Petitioner in an infringement action pending in the Eastern District of Texas,
`
`MacroPoint, LLC v. Ruiz Food Products, Inc., Case. No. 6:16-cv-01133-RWS-
`
`KNM, and were also the subject of another action titled FourKites, Inc. v.
`
`MacroPoint, LLC, Case No. 1-16-cv-02703 (N.D. Ohio). Although neither Mr.
`
`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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`4
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`
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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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`Motion to Amend (in IPR2017-2016), Patent Owner’s Responses, and in the
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`discovery taken 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 2011)
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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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`5
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`
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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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`
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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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`
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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 (IPR2017-2016), Mr. Fleming states that he has not previously applied
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`6
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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,
`
`
`
`
`
`/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
`
`Attorneys for Patent Owner
`MacroPoint, LLC
`
`
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`7
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6(e)(4)
`
`The undersigned hereby certifies that the above-captioned UNOPPOSED
`
`MOTION FOR PRO HAC VICE ADMISSION OF KYLE B. FLEMING UNDER
`
`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:
`
`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,
`
`
`
`
`
`/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
`
`Attorneys for Patent Owner
`MacroPoint, LLC
`
`
`8
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