`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`MERRILL COMMUNICATIONS LLC d/b/a MERRILL CORPORATION,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Petitioner,
`
`v.
`
`E-NUMERATE SOLUTIONS, INC.,
`
`
`
`
`
`
`
`
`
`
`
`Patent Owner.
`
`Patent No. 9,262,383
`
`Issue Date: February 16, 2016
`
`Case: IPR2018-01391
`
`Title:
`SYSTEM, METHOD, AND COMPUTER PROGRAM PRODUCT FOR
`PROCESSING A MARKUP DOCUMENT
`
`
`
`
`
`
`
`
`
`
`
`
`
`MOTION FOR PRO HAC VICE ADMISSION
`37 C.F.R. § 42.10
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`This Motion for Pro Hac Vice Admission is being filed by Merrill
`
`Communications LLC d/b/a Merrill Corporation (“Merrill”) in the IPR proceeding
`
`captioned in the title page of this submission. Petitioner requests the admission of
`
`Adam R. Steinert pro hac vice in the IPR proceeding captioned above. Petitioner
`
`submits herewith a Declaration of Adam R. Steinert in Support of this Motion for
`
`Pro Hac Vice Admission.
`
`Mr. Steinert is well-versed in the technical and legal issues raised in the IPR
`
`Petition, and is especially qualified to serve as backup counsel for Merrill in this
`
`matter. As explained in the attached declaration, Mr. Steinert has an undergraduate
`
`degree in physics from Harvard University, and has specialized in patent litigation
`
`for the past 14 years. (See Steinert Decl. ¶¶ 9-10.) Mr. Steinert has experience
`
`with a wide range of technologies relevant to this IPR proceeding, including
`
`computer software and hardware, markup languages, and data manipulation
`
`programs. (See id. ¶¶ 11-12.)
`
`Mr. Steinert is also particularly well versed in the subject matter and
`
`procedural history of the challenged ʼ383 patent. He is counsel of record for
`
`Merrill in the pending district court patent litigation over the ʼ383 patent. (See id.
`
`¶¶ 12-13.) Mr. Steinert was intimately involved in the drafting of the Petitions for
`
`IPR in this proceeding and the companion proceedings challenging U.S. Patent No.
`
`7,650,355 (case no. IPR 2018-01394), U.S. Patent No. 8,185,816 (case no.
`
`2
`
`
`
`
`
`IPR2018-01392), and U.S. Patent No. 9,268,748 (case no. IPR2018-01389). (See
`
`id. ¶ 14.)
`
`In the course of his representation of Merrill, Mr. Steinert has reviewed and
`
`analyzed the ʼ383 patent and its prosecution history in detail. (See id. ¶¶ 13-15.)
`
`He has also reviewed and analyzed the referenced prior art, all of the papers filed
`
`in the district court lawsuit, all of the exhibits to the IPR Petition, and, of course,
`
`the Petition itself. (See id.) Mr. Steinert has a particularly high level of knowledge
`
`regarding Merrill’s prior art contentions raised in this Petition, the companion
`
`IPR2018-01394, IPR2018-01392, and IPR2018-01389 petitions, and the district
`
`court litigation, because Mr. Steinert assisted in drafting Merrill’s submissions.
`
`(See id.)
`
`Pursuant to 37 C.F.R. § 42.10(c) and IPR2013-00639, Paper No. 7, Merrill
`
`further notes that Mr. Steinert is a member in good standing of the state bars of
`
`Minnesota and New York, and is admitted to practice before multiple federal
`
`courts. (See Steinert Decl. ¶ 2.) No court or administrative body has ever
`
`(a) suspended or disbarred him from practice; (b) denied his application to
`
`practice; or (c) sanctioned him or cited him for contempt. (See id. ¶¶ 3-5.) Mr.
`
`Steinert has read and will comply with the Office Patent Trial Practice Guide and
`
`the Board’s Rules of Practice for Trials. (See id. ¶ 6.) He has also acknowledged
`
`that he will be subject to the USPTO Rules of Professional Conduct set forth in 37
`
`3
`
`
`
`
`
`C.F.R. § 11.101 et seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
`
`(See id. ¶ 7.) Mr. Steinert has previously applied to appear pro hac vice before the
`
`Board in five cases within the last three (3) years, IPR2015-00482, IPR2015-
`
`00491, IPR2016-01460, IPR2016-01463, and IPR2017-00202. (See id. ¶ 8.) The
`
`Board granted all of those applications, and Mr. Steinert argued on behalf of the
`
`petitioner at the oral hearing in all five cases. (See id.)
`
`For the foregoing reasons, Petitioner Merrill respectfully requests that this
`
`Motion for Pro Hac Vice Admission be granted, and that Adam R. Steinert be
`
`admitted to appear pro hac vice in the IPR proceeding captioned above.
`
`Respectfully submitted,
`
`/ Katherine J. Rahlin /
`Katherine J. Rahlin
`krahlin@fredlaw.com
`Attorney for the Petitioner
`Registration No. 75,181
`
`Fredrikson & Byron, P.A.
`200 South Sixth Street, Suite 4000
`Minneapolis, MN 55402-1425
`
`Dated: August 14, 2018
`
`
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`
`
`Declaration of Adam R. Steinert in Support of
`
`Motion for Pro Hac Vice Admission
`
`I, Adam R. Steinert, declare as follows:
`
`1.
`
`I am a shareholder with Fredrikson & Byron, P.A., and am one of the
`
`lawyers representing Petitioner Merrill Communications LLC d/b/a Merrill
`
`Corporation (“Merrill”) in connection with the IPR Proceeding captioned on the
`
`title page of this submission and related proceedings in federal district court.
`
`2.
`
`I am a member in good standing of the following Bars: State of
`
`Minnesota, State of New York, U.S. Court of Appeals for the Federal Circuit, U.S.
`
`Court of Appeals for the Eighth Circuit, U.S. District Court for the District of
`
`Minnesota, U.S. District Court for the Northern District of Illinois, and U.S.
`
`District Courts for the Southern and Eastern Districts of New York.
`
`3.
`
`I have never received a suspension or disbarment from practice before
`
`any court or administrative body.
`
`4.
`
`I have never been denied any application or admission to practice
`
`before any court or administrative body.
`
`5.
`
`I have never been sanctioned by or received contempt citations from
`
`any court or administrative body.
`
`6.
`
`I have 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.
`
`
`
`
`
`
`
`7.
`
`I will be subject to the USPTO Rules of Professional Conduct set
`
`forth in 37 C.F.R. § 11.101 et seq. and disciplinary jurisdiction under 37 C.F.R.
`
`§ 11.19(a).
`
`8.
`
`I have previously applied to appear pro hac vice before the Board in
`
`five cases within the last three (3) years, IPR2015-00482, IPR2015-00491,
`
`IPR2016-01460, IPR2016-01463, and IPR2017-00202. The Board granted all of
`
`those applications, and I argued on behalf of the petitioner at the oral hearing in all
`
`five cases.
`
`9.
`
`Although I am not registered to practice with the USPTO, I earned the
`
`degree of A.B., cum laude in Physics, from Harvard University in 2001.
`
`10. Since my graduation from New York University School of Law in
`
`2004, I have specialized in intellectual property litigation, and the vast majority of
`
`my practice is patent and technology trade secret litigation and counselling. I have
`
`appeared in patent litigation cases across the country, including appearances before
`
`the U.S. Court of Appeals for the Federal Circuit, the U.S. District Courts for the
`
`Southern and Eastern Districts of New York, the District of Minnesota, the
`
`Northern and Eastern Districts of Texas, the District of Delaware, the Northern and
`
`Southern Districts of California, the Northern District of Illinois, the Western
`
`District of Washington, the Eastern District of Virginia, the Western District of
`
`2
`
`
`
`
`
`Oklahoma, the District of New Jersey, and before the U.S. International Trade
`
`Commission.
`
`11. Through my undergraduate education and intellectual property
`
`litigation practice, I have experience with a wide range of electrical, mechanical,
`
`and software technologies. Particularly relevant to this IPR, I have experience
`
`with computer software and hardware, markup languages, and data manipulation
`
`programs.
`
`12. The following is an exemplary – but not exclusive – list of patent
`
`cases in which I have made appearances:
`
`E-Numerate Sols., Inc. and E-Numerate, LLC v. Mattress Firm Holding
`Corp., Merrill Commc’ns LLC and Merrill Corp., D. Del. Case No. 17-933-
`RGA
`
`Baxter Healthcare Corp. and Baxter Corp. Englewood, v. Becton, Dickinson
`and Co., S.D. Ca. Case No. 3:17-cv-02186 JLS-RBB
`
`Baxter Int’l, Inc., v. Becton, Dickinson and Co., N.D. Ill. Case No. 1:17-cv-
`07576
`
`Baxter Int’l, Inc., v. CareFusion Corp., N.D. Ill. Case No. 1:15-cv-09986
`
`3M Co. v. XPEL Technologies Corp., D. Minn. Case No. 15-cv-04576
`(WMW/SER)
`
`3M Co. v. HM Electronics, Inc., D. Minn. Case No. 14-cv-1000 (SRN/JSM)
`
`3M Co. v. HM Electronics, Inc., D. Minn. Case No. 12-cv-553 (SRN/JSM)
`
`MasterMine Software, Inc. v. Microsoft Corp., D. Minn. Case No. 13-cv-971
`(PJS/TNL)
`
`IOENGINE, LLC v. Imation Corp., et al., D. Del. Case No. 1:14-cv-1572
`(GMS)
`
`3
`
`
`
`
`
`Richmond v. Import Specialties, Inc., et al., D.N.J. Case Nos. 3:14-cv-4827,
`3:14-cv-4874, 3:14-cv-4876, 3:14-cv-4885 (MLC/DEA)
`
`Humanscale Corp. v. Mass Engineered Design, Inc., E.D. Va. Case No.
`1:13-cv-535 (CMH/IDD)
`
`Ferrellgas Real Estate, Inc. v. Unique Value Marketing LLC, E.D.N.Y. Case
`No. 2:13-cv-3496 (JG/SIL)
`
`3M Innovative Properties Co. v. NPV Group LLC, D. Minn. Case No. 12-cv-
`1470 (JRT/JJK)
`
`Silver Screen Tele-Reality, Inc. v. Dealer Impact Systems, L.L.C., N.D. Tex.
`Case No. 3:11-cv-2351-K
`
`Schwendimann v. Arkwright Advanced Coating, Inc., D. Minn. Case No. 11-
`cv-820 (ADM/JSM)
`
`Illinois Tool Works Inc. v. Inpro/Seal Co., N.D. Ill. Case No. 1:10-cv-3978
`
`Mass Engineered Design, Inc. v. 9X Media, Inc., E.D. Tex. Case No. 2:09-
`cv-358 (JRG)
`
`Cardiac Science Corp. v. Koninklijke Philips Electronics N.V., D. Minn.
`Case No. 03-cv-1064 (DWF/RLE)
`
`Voda v. Cordis Corp., W.D. Okla. Case No. 5:03-cv-01512-L
`
`13.
`
`I am very familiar with the subject matter at issue in this IPR
`
`proceeding. As indicated in the preceding paragraph, I am counsel of record in the
`
`pending patent lawsuit in the District of Delaware between e-Numerate Solutions,
`
`Inc., and Petitioner Merrill over both the challenged ʼ383 patent and e-Numerate’s
`
`U.S. Patent No. 7,650,355 (challenged in case no. IPR 2018-01394), U.S. Patent
`
`No. 8,185,816 (challenged in case no. IPR2018-01392), and U.S. Patent No.
`
`9,268,748 (challenged in case no. IPR2018-01389). I have reviewed and analyzed
`
`4
`
`
`
`
`
`those patents and their prosecution histories in detail, and I have participated in
`
`every aspect of the lawsuit.
`
`14.
`
`In addition to my involvement in the district court case, I was
`
`intimately involved in drafting the Petitions for IPR filed in this proceeding and the
`
`companion proceedings challenging U.S. Patent No. 7,650,355 (case no. IPR 2018-
`
`01394), U.S. Patent No. 8,185,816 (case no. IPR2018-01392), and U.S. Patent No.
`
`9,268,748 (case no. IPR2018-01389).
`
`15.
`
`In conjunction with my work on the district court lawsuit and drafting
`
`the Petition for the present IPR, I closely reviewed the subject ʼ383 patent, e-
`
`Numerate’s 7,650,355 patent, 8,185,816 patent, and 9,268,748 patent, as well as
`
`their prosecution file histories, the referenced prior art, all of the exhibits to the
`
`IPR Petition, and, of course, the Petition I assisted in drafting.
`
`
`
`I declare under penalty of perjury of the laws of the United States that the
`
`foregoing is true and correct to the best of my present knowledge and recollection.
`
`
`
`
`
`
`
`Dated: August 14, 2018
`
`
`
`
`/Adam R. Steinert/
`
` Adam R. Steinert
`FREDRIKSON & BYRON, P.A.
`200 South Sixth Street, Suite 4000
`Minneapolis, MN 55402-1425
`Telephone: 612.492.7000
`Facsimile: 612.492.7077
`
`5
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Motion for
`
`Pro Hac Vice Admission was filed via PTAB E2E and served pursuant to 37
`
`C.F.R. § 42.6(e) via electronic mail on August 14, 2018 on the following:
`
`Gregory J. Gonsalves (gonsalves@gonsalveslawfirm.com)
`2216 Beacon Lane
`Falls Church, Virginia 22043
`Telephone: 571-419-7252
`
`G. Andrew Gordon (andrew@agordonlawfirm.com)
`6518 Ryeworth Dr
`Frisco, TX 75035
`Telephone: 408-390-4473
`
`
`
`
`/Katherine J. Rahlin/
`Katherine J. Rahlin
`krahlin@fredlaw.com
`Attorney for the Petitioner
`Registration No. 75,181
`
`
`Dated: August 14, 2018
`
`
`
`64602144
`
`
`
`