`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`NICHIA CORPORATION,
`
`Petitioner,
`
`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.,
`
`Patent Owner.
`
`____________________
`
`CASE NO. IPR2018-01166
`
`U.S. Patent No. 7,256,486
`
`____________________
`
`
`
`PETITIONER’S UNOPPOSED MOTION FOR
`PRO HAC VICE ADMISSION OF THOMAS R. MAKIN
`PURSUANT TO 37 C.F.R. § 42.10(c)
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.10(c), Petitioner Nichia Corporation respectfully
`
`requests that the Patent Trial and Appeal Board (“the Board”) admit Thomas R.
`
`Makin pro hac vice as back-up counsel in this proceeding. Patent Owner
`
`Document Security Systems, Inc. has confirmed that it does not oppose this
`
`motion.
`
`I.
`
`Statement of Facts Showing There is a Good Cause for the Board to
`Admit Counsel Pro Hac Vice
`“The Board may recognize counsel pro hac vice in a proceeding upon a
`
`showing of good cause, subject to the condition that lead counsel be a registered
`
`practitioner and to any other conditions as the Board may impose.” 37 C.F.R. §
`
`42.10(c). “[W]here lead counsel is a registered practitioner, a motion to appear pro
`
`hac vice by counsel who is not a registered practitioner may be granted upon a
`
`showing that counsel is an experienced litigating attorney and has an established
`
`familiarity with the subject matter at issue in the proceeding.” Id. The facts here
`
`establish good cause for the Board to admit Thomas R. Makin pro hac vice during
`
`this proceeding, so that he may participate in, inter alia, oral hearings, depositions,
`
`and conferences with the Board.
`
`1.
`
`2.
`
`Lead Counsel, Patrick R. Colsher, is a registered practitioner.
`
`As set forth in the accompanying Declaration of Thomas R. Makin in
`
`Support of Petitioner’s Unopposed Motion for Admission Pro Hac Vice (“Makin
`
`Decl.”), Mr. Makin is admitted to practice law in New York, and in the United
`
`
`
`2
`
`
`
`States District Court for the Eastern District of New York, the United States
`
`District Court for the Southern District of New York, the United States District
`
`Court for the Eastern District of Michigan, and the United States Court of Appeals
`
`for the Federal Circuit. Makin Decl., ¶ 3.
`
`3. Mr. Makin has not been suspended or disbarred from practice before
`
`any court or administrative body; denied admission to practice before any court or
`
`administrative body; or sanctioned or cited for contempt by any court or
`
`administrative body. Makin Decl., ¶¶ 6–8.
`
`4. Mr. Makin is an experienced litigating attorney. More specifically, he
`
`has more than 17 years of litigation experience with a focus on patent infringement
`
`proceedings in federal court. Makin Decl., ¶ 4.
`
`5. Mr. Makin has an established familiarity with the subject matter at
`
`issue in this proceeding, having represented Petitioner as a defendant in the related
`
`case in the United States District Court for the Central District of California, Case
`
`No. 2:17-cv-08849-JVS. In this related case, Patent Owner has asserted U.S.
`
`Patent No. 7,256,486 against Petitioner. Mr. Makin’s experience representing
`
`Petitioner in the related case over the same patent against the same Patent Owner
`
`provides him with an established familiarity with the subject matter at issue in the
`
`current proceeding. Makin Decl., ¶ 5.
`
`
`
`3
`
`
`
`6. Mr. Makin has attested that he has read and will comply with the
`
`Office Patent Trial Practice Guide and the Board’s Rules of Practice for Trials set
`
`forth in Part 42 of 37 C.F.R.; and will be subject to the United States Patent and
`
`Trademark Office Code of Professional Responsibility set forth in 37 C.F.R. §§
`
`11.101 et seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and the
`
`USPTO Rules of Professional Conduct as set forth in Changes to Representation of
`
`Others Before the United States Patent and Trademark Office; Final Rule, 78 Fed.
`
`Reg. 20180 (Apr. 3, 2013) (effective May 3, 2013). Makin Decl., ¶¶ 9–10.
`
`7. Mr. Makin is also applying to appear pro hac vice in the following
`
`inter partes review proceedings involving patents owned by Patent Owner and
`
`asserted against Petitioner in the above-referenced district court case: IPR2018-
`
`01165 and IPR2018-01167; and has been admitted pro hac vice in the following
`
`inter partes review proceedings: IPR2015-01087, IPR2016-01750, IPR2016-
`
`01751, IPR2016-01753, IPR2016-01754, and IPR2016-01755. Mr. Makin also
`
`applied to appear pro hac vice and is waiting for the motions to be decided in the
`
`following proceedings: IPR2018-00965 and IPR2018-00966. Makin Decl., ¶ 11.
`
`II. Conclusion
`The requirement for admission pro hac vice being hereby established,
`
`Petitioner respectfully requests that the Board admit Thomas R. Makin pro hac
`
`vice as backup counsel in this proceeding.
`
`
`
`4
`
`
`
`Dated: July 9, 2018
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Patrick R. Colsher/
`Patrick R. Colsher (Reg. No. 74,955)
`Shearman & Sterling LLP
`599 Lexington Ave
`New York, NY 10022
`Tel: (212) 848-7708
`Fax: (646) 848-7708
`Email: patrick.colsher@shearman.com
`
`Lead Counsel for Petitioner
`
`5
`
`
`
`Certificate of Service
`
`The undersigned hereby certifies that the foregoing Petitioner’s Unopposed
`
`Motion for Admission pro hac vice of Thomas R. Makin and Declaration in
`
`support were served on July 9, 2018, via electronic mail upon the following:
`
`Wayne M. Helge
`Email: whelge@dbjg.com
`
`James T. Wilson
`Email: jwilson@dbjg.com
`
`Aldo Noto
`Email: anoto@dbjg.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Patrick R. Colsher/
`Patrick R. Colsher (Reg. No. 74,955)
`Shearman & Sterling LLP
`599 Lexington Ave
`New York, NY 10022
`Tel: (212) 848-7708
`Fax: (646) 848-7708
`Email: patrick.colsher@shearman.com
`
`Lead Counsel for Petitioner
`
`
`
`