UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GOOGLE LLC,
`Petitioner
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`v.
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`AGIS SOFTWARE DEVELOPMENT, LLC.
`Patent Owner
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`Case IPR2018-01079
`Patent No. 8,213,970 B2
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`PETITIONER GOOGLE LLC’S
`MOTION FOR PRO HAC VICE ADMISSION
`UNDER 37 C.F.R. § 42.10(c)
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GOOGLE LLC,
`Petitioner
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`v.
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`AGIS SOFTWARE DEVELOPMENT, LLC.
`Patent Owner
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`Case IPR2018-01079
`Patent No. 8,213,970 B2
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`PETITIONER GOOGLE LLC’S
`MOTION FOR PRO HAC VICE ADMISSION
`UNDER 37 C.F.R. § 42.10(c)
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`IPR2018-01079
`U.S. Patent No. 8,213,970
`PETITIONER’S UPDATED EXHIBIT LIST
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`1003
`1004
`1005
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`1006
`1007
`1008
`1009
`1010
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`1011
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`1012
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`1013
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`1014
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`1015
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`1016
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`1017
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`1018
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`Exhibit No. Description
`1001
`U.S. Patent No. 8,213,970 B2 to Beyer (“ʼ970 patent”)
`1002
`Prosecution History of U.S. Patent No. 8,213,970 (Application No.
`12/324,122) (“’970 Pros. Hist.”)
`Declaration of David H. Williams
`Curriculum Vitae of David H. Williams
`U.S. Patent Application Publication No. 2006/0218232 to Kubala
`et al. (“Kubala”)
`U.S. Patent No. 6,854,007 to Hammond (“Hammond”).
`U.S. Patent No. 5,325,310 to Johnson et al. (“Johnson”)
`U.S. Patent No. 5,742,905 to Pepe et al. (“Pepe”)
`U.S. Publication No. 2003/0128195 to Banerjee et al. (“Banerjee”)
`Simon Says “Here’s How!” Simon™ Mobile Communications
`Made Simple, Simon Users Manual, IBM Corp., 1994. (“Simon”)
`Prosecution History of U.S. Patent Application No. 10/711,490
`(“’490 application”)
`Prosecution History of U.S. Application No. 11/308,648 (“’648
`application”)
`Prosecution History of U.S. Application No. 11/612,830 (“’830
`application”)
`McKinsey & Company, The McKinsey Report : FDNY 9/11
`Response (2002) (“The McKinsey Report”)
`History of Mobile Phones, Wikipedia.com,
`https://en.wikipedia.org/wiki/History_of_mobile_phones (last
`visited May 10, 2018) (“Hist. Mobile Phones”)
`Apple Newton, Wikipedia.com,
`https://en.wikipedia.org/wiki/Apple_Newton (last visited May 10,
`2018) (“Apple”)
`Email, Wikipedia.com, https://en.wikipedia.org/wiki/Email (last
`visited May 10, 2018) (“Email”)
`From touch displays to the Surface: A brief history of touchscreen
`technology, Arstechnica.com
`https://arstechnica.com/gadgets/2013/04/from-touch-displays-to-
`the-surface-a-brief-history-of-touchscreen-technology/ (last visited
`May 10, 2018) (“Arstechnica”)
`Palm VII,Wikipedia.com, https://en.wikipedia.org/wiki/Palm_VII
`(last visited May 10, 2018) (“Palm”)
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`1019
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`- i -
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`IPR2018-01079
`U.S. Patent No. 8,213,970
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`Exhibit No. Description
`Declaration of Michael A. Berta in support of Motion for Pro Hac
`1021
`Vice Admission
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`SUPPLEMENTAL EXHIBITS SERVED (NOT FILED)
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`Exhibit No. Description
`1020
`Supplemental Declaration of David H. Williams
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`- ii -
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`IPR2018-01079
`U.S. Patent No. 8,213,970
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`I.
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`INTRODUCTION
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`Pursuant to 37 C.F.R. § 42.10(c), Petitioner Google LLC (“Google”)
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`respectfully requests that the Board recognize Michael A. Berta as counsel pro hac
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`vice in this proceeding. Where the lead counsel is a registered practitioner, a non-
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`registered practitioner may be permitted to appear pro hac vice “upon a showing
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`that counsel is an experienced litigating attorney and has established familiarity
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`with the subject matter at issue in the proceeding.” 37 C.F.R. § 42.10(c); Unified
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`Patents, Inc. v. Parallel Iron, LLC, Case IPR2013-00639 (PTAB Oct. 15, 2013)
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`(Paper 7) (setting forth requirements for pro hac vice admission). As set forth in
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`his Declaration submitted herewith (GOOGLE1021), Mr. Berta is a Partner at
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`Arnold & Porter Kaye Scholer LLP and a patent litigation attorney with significant
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`experience advising clients regarding patent matters, including as counsel in
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`multiple litigations involving the Petitioner and similar technology such as
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`electronic messaging and mapping systems. Mr. Berta also represents a real party
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`in interest, LG Electronics Inc., to the instant IPR proceeding in connection with
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`the underlying district court litigation on the patent at issue in this proceeding, i.e.,
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`U.S. Patent No. 8,213,970 (“the ’970 patent). Based on this underlying litigation
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`and the other facts detailed below and in his declaration, Mr. Berta has significant
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`familiarity with the particular subject matter in this IPR proceeding. This motion
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`- 1 -
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`IPR2018-01079
`U.S. Patent No. 8,213,970
`is authorized by the Notice of Filing Date Accorded that was mailed on May 23,
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`2018 (Paper No. 3).
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`Mr. Berta has previously requested pro hac vice admission before the PTAB
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`in IPR proceedings, and the Board has never denied Mr. Berta permission to
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`appear pro hac vice based on any of those applications. (See, e.g., IPR2016-01535,
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`Paper 16; IPR2016-01536, Paper 12 ; PR2016-01537, Paper 12.)
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`II.
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`STATEMENT OF FACTS
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`As detailed in his declaration, Mr. Berta practices litigation, primarily patent
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`infringement litigation, and has done so throughout his career as an attorney. He
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`has litigated dozens of patent cases across the country, including in California,
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`Delaware, Washington D.C., and Texas.
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`Petitioner requests that the Board recognize Mr. Berta as counsel pro hac
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`vice because Mr. Berta serves a unique and critical role for Petitioner regarding
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`this and other IPR proceedings. Mr. Berta has substantial experience and expertise
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`representing Petitioner, and Petitioner’s real party in interest in the instant IPR
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`proceeding, regarding patents involving the applicable messaging and alert system,
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`related application technologies, and computer systems, which are relevant
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`technologies at issue in this proceeding.
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`Mr. Berta represents one of Petitioner’s identified real party in interest in
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`this IPR proceeding in the concurrent litigations involving the ’970 Patent (AGIS
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`- 2 -
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`IPR2018-01079
`U.S. Patent No. 8,213,970
`Software Development, LLC v. LG Electronics Inc., 17-cv-515-JRG (E.D. Tex.)).
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`Given the posture of the court litigation, significant financial resources in the
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`underlying district court litigation have been expended. Mr. Berta’s knowledge of
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`these litigation matters is important for purposes of this proceeding for several
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`reasons, including ensuring consistency between Petitioner’s real party in interest’s
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`position in those matters and in this proceeding. Mr. Berta has extensively
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`reviewed the ’970 Patent and gained significant familiarity with the claim
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`construction issues in the concurrent litigation, which significantly overlap with the
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`corresponding issues in this IPR proceeding involving the ’970 Patent, as well as
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`the related proceedings involving related patents to the ’970 Patent on which the
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`Board has instituted IPR proceedings: U.S. Patent No. 9,408,055, Case No.
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`IPR2018-01080; U.S. Patent No. 9,467,838, Case No. IPR2018-00819 and
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`IPR2019-00403, for which Petitioner is also seeking Mr. Berta’s admission pro
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`hac vice. Additionally, the IPR proceeding and the related proceedings have
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`already implicated contentions and statements from the concurrent litigation based
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`on at least Patent Owner’s arguments to the Board, particularly as related to the
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`scope and interpretation of certain terms of the ’970 patent. (See, e.g., Papers 6-8.)
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`Mr. Berta has significant familiarity with these contentions and other submissions
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`from the concurrent litigation that are critical to this IPR proceeding, including
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`Patent Owner’s positions in this regard.
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`- 3 -
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`IPR2018-01079
`U.S. Patent No. 8,213,970
`Moreover, Mr. Berta’s work has included a detailed review of the Petition
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`for IPR in this case (including the proposed invalidity grounds therein, the cited
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`references, and exhibits), the Declaration of David Hilliard Williams, Patent
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`Owner’s Preliminary Response, and the Board’s Decision instituting Inter Partes
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`Review of the ʼ970 Patent. Mr. Berta was actively involved in assessing the prior
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`art references relied upon in the Petition, as many of these references were
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`additionally used in the invalidity contentions for the concurrent litigation matter.
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`Additionally, Mr. Berta has served an essential role in all areas of this IPR
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`proceeding, including: analyzing each of the prior art references and the intrinsic
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`record; advising Petitioner on strategy regarding their affirmative arguments and
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`their counterarguments to the Patent Owner’s positions; and working with the Lead
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`and Backup Counsel in this IPR proceeding to draft the Petition and other
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`submissions. Mr. Berta thus has a detailed understanding of the ’970 Patent and
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`the substantive and technical issues involved in this proceeding.
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`Finally, Mr. Berta’s substantial experience and expertise with the relevant
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`messaging and alert system, related application technologies, and computer
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`systems makes him uniquely positioned to represent Petitioner in this IPR
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`proceeding. Mr. Berta’s expertise with the technical subject matter of this IPR
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`proceeding extends beyond his involvement with the Petition and other
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`submissions in this IPR proceeding and the concurrent litigation matter. Indeed,
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`IPR2018-01079
`U.S. Patent No. 8,213,970
`Mr. Berta represents, or has represented, Petitioner in connection with multiple
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`prior litigations regarding application and computer technologies, including, for
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`instance, related to messaging systems or mapping/guidance systems. He
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`describes these proceedings in paragraph 7 of his declaration. As explained in Mr.
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`Berta’s declaration, Mr. Berta has previously requested to appear pro hac vice
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`before the Office, and each of those requests have been granted.
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`Based on this substantial experience described in the previous paragraph and
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`detailed in his accompanying declaration, Mr. Berta has developed an in-depth
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`knowledge of the issues and technology within messaging and alert systems and
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`technologies. This knowledge includes his analysis of a significant number of
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`patents, articles, books, software programs, products, industry conference
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`proceedings, and other materials related to such technologies. He has used this
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`knowledge on behalf of one of Petitioner’s real party in interest to help prepare
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`invalidity contentions, expert reports on invalidity, and IPR petitions. Mr. Berta’s
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`pertinent experience also includes knowledge gained from working closely with
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`experts related to such systems and technologies, from academia and industry, both
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`as expert witnesses in litigation and as an expert declarant in these IPR
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`proceedings. He has taken and defended many expert depositions in litigation
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`related to messaging, mobile application, and mapping technologies. Mr. Berta has
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`also taken and defended numerous factual depositions regarding these
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`- 5 -
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`IPR2018-01079
`U.S. Patent No. 8,213,970
`technologies, including taking depositions of named inventors and defending
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`engineers.
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`If the Board denies the present Motion, not only is Petitioner denied its
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`choice of counsel, but they would also be prejudiced by having to undertake the
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`burdensome task—at great cost—to prepare another attorney to replace Mr. Berta’s
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`specific combination of familiarity with the concurrent litigation, the ’970 patent,
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`the asserted prior art references, and the relevant messaging, application, and
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`mapping technologies.
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`Petitioner has repeatedly retained Mr. Berta and his colleagues regarding
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`disputes involving patents in this field of technology in order to provide continuity
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`across cases involving related technologies, and thus Petitioner would be
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`prejudiced if Mr. Berta could not fully represent its interests here. Accordingly,
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`Petitioner respectfully request that the Board avoid that prejudice and grant this
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`Motion.
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`III. DECLARATION OF INDIVIDUAL SEEKING TO APPEAR
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`This Motion for Pro Hac Vice Admission is accompanied by the Declaration
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`of Michael A. Berta (GOOGLE1021), as required by the “Order Authorizing
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`Motion for Pro Hac Vice Admission” in Case IPR2013-00639, Paper 7, a copy of
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`which is available on the Board Web site under “Representative Orders, Decisions,
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`and Notices.”
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`- 6 -
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`IPR2018-01079
`U.S. Patent No. 8,213,970
`As Mr. Berta stated in his accompanying Declaration, he has read, will
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`comply with, and agrees to be subject to the Office Patent Trial Practice Guide and
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`the Board’s Rules of Practice for Trials set forth in part 42 of the Code of Federal
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`Regulations. He is very familiar with these rules as part of his preparation and
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`work in preparing the petition in this IPR proceeding. As also set forth in his
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`Declaration, Mr. Berta is a member in good standing of the Bar of the State of
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`California and is admitted to practice in numerous federal courts, including the
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`U.S. District Court for each of the districts in California, the District of Columbia,
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`the U.S. Court of Appeals for the Federal Circuit, and the International Trade
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`Commission. He has litigated dozens of patent cases across the country. He
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`frequently publishes and presents on issues concerning patent law. Mr. Berta’s
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`complete biography is attached to his Declaration (GOOGLE1021) as Appendix A.
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`Petitioner submits that there is good cause under 37 C.F.R. § 42.10(c) for the
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`Board to recognize Michael A. Berta as counsel pro hac vice during this
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`proceeding.
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`- 7 -
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`IPR2018-01079
`U.S. Patent No. 8,213,970
`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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`/Jonathan Tuminaro/
`Jonathan Tuminaro
`Registration No. 61,327
`Attorney for Petitioner Google LLC
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`Date: March 14, 2019
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`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
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`- 8 -
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`IPR2018-01079
`U.S. Patent No. 8,213,970
`CERTIFICATION OF SERVICE (37 C.F.R. § 42.6(e))
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`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq. and 42.105(b), the undersigned
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`certifies that on March 14, 2019, a complete and entire copy of the above-
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`captioned PETITIONER GOOGLE’S MOTION FOR PRO HAC VICE
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`ADMISSION UNDER 37 C.F.R. § 42.10(c), Petitioner’s Updated Power of
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`Attorney, and Exhibit 1021 were provided, via electronic service, to the Patent
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`Owner by serving the correspondence address of record as follows:
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`Vincent J. Rubino, III (Lead Counsel)
`Afred R. Fabricant (Back-up Counsel)
`Peter Lambrianakos (Back-up Counsel)
`Enrique W. Iturralde (Back-up Counsel)
`BROWN RUDNICK LLP
`vrubino@brownrudnick.com
`afabricant@brownrudnick.com
`plambrianakos@brownrudnick.com
`eiturralde@brownrudnick.com
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`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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`/Jonathan Tuminaro/
`Jonathan Tuminaro
`Registration No. 61,327
`Attorney for Petitioner Google LLC
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`Date: March 14, 2019
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`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
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