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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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`MERRILL COMMUNICATIONS LLC d/b/a MERRILL CORPORATION,
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`Petitioner,
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`v.
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`E-NUMERATE SOLUTIONS, INC.,
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`Patent Owner.
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`Patent No. 8,185,816
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`Issue Date: May 22, 2012
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`Case: IPR2018-01392
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`Title:
`COMBINING REUSABLE DATA MARKUP LANGUAGE DOCUMENTS
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`MOTION FOR PRO HAC VICE ADMISSION
`37 C.F.R. § 42.10
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`This Motion for Pro Hac Vice Admission is being filed by Merrill
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`Communications LLC d/b/a Merrill Corporation (“Merrill”) in the IPR proceeding
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`captioned in the title page of this submission. Petitioner requests the admission of
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`Adam R. Steinert pro hac vice in the IPR proceeding captioned above. Petitioner
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`submits herewith a Declaration of Adam R. Steinert in Support of this Motion for
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`Pro Hac Vice Admission.
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`Mr. Steinert is well-versed in the technical and legal issues raised in the IPR
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`Petition, and is especially qualified to serve as backup counsel for Merrill in this
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`matter. As explained in the attached declaration, Mr. Steinert has an undergraduate
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`degree in physics from Harvard University, and has specialized in patent litigation
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`for the past 14 years. (See Steinert Decl. ¶¶ 9-10.) Mr. Steinert has experience
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`with a wide range of technologies relevant to this IPR proceeding, including
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`computer software and hardware, markup languages, and data manipulation
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`programs. (See id. ¶¶ 11-12.)
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`Mr. Steinert is also particularly well versed in the subject matter and
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`procedural history of the challenged ʼ816 patent. He is counsel of record for
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`Merrill in the pending district court patent litigation over the ʼ816 patent. (See id.
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`¶¶ 12-13.) Mr. Steinert was intimately involved in the drafting of the Petitions for
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`IPR in this proceeding and the companion proceedings challenging U.S. Patent No.
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`7,650,355 (case no. IPR2018-01394), U.S. Patent No. 9,262,383 (case no. IPR
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`2
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`2018-01391), and U.S. Patent No. 9,268,748 (case no. IPR2018-01389). (See id.
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`¶ 14.)
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`In the course of his representation of Merrill, Mr. Steinert has reviewed and
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`analyzed the ʼ816 patent and its prosecution history in detail. (See id. ¶¶ 13-15.)
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`He has also reviewed and analyzed the referenced prior art, all of the papers filed
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`in the district court lawsuit, all of the exhibits to the IPR Petition, and, of course,
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`the Petition itself. (See id.) Mr. Steinert has a particularly high level of knowledge
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`regarding Merrill’s prior art contentions raised in this Petition, the companion
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`IPR2018-01394, IPR2018-01391, and IPR2018-01389 petitions, and the district
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`court litigation, because Mr. Steinert assisted in drafting Merrill’s submissions.
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`(See id.)
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`Pursuant to 37 C.F.R. § 42.10(c) and IPR2013-00639, Paper No. 7, Merrill
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`further notes that Mr. Steinert is a member in good standing of the state bars of
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`Minnesota and New York, and is admitted to practice before multiple federal
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`courts. (See Steinert Decl. ¶ 2.) No court or administrative body has ever
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`(a) suspended or disbarred him from practice; (b) denied his application to
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`practice; or (c) sanctioned him or cited him for contempt. (See id. ¶¶ 3-5.) Mr.
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`Steinert has read and will comply with the Office Patent Trial Practice Guide and
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`the Board’s Rules of Practice for Trials. (See id. ¶ 6.) He has also acknowledged
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`that he will be subject to the USPTO Rules of Professional Conduct set forth in 37
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`3
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`C.F.R. § 11.101 et seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
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`(See id. ¶ 7.) Mr. Steinert has previously applied to appear pro hac vice before the
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`Board in five cases within the last three (3) years, IPR2015-00482, IPR2015-
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`00491, IPR2016-01460, IPR2016-01463, and IPR2017-00202. (See id. ¶ 8.) The
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`Board granted all of those applications, and Mr. Steinert argued on behalf of the
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`petitioner at the oral hearing in all five cases. (See id.)
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`For the foregoing reasons, Petitioner Merrill respectfully requests that this
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`Motion for Pro Hac Vice Admission be granted, and that Adam R. Steinert be
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`admitted to appear pro hac vice in the IPR proceeding captioned above.
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`Respectfully submitted,
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`/ Katherine J. Rahlin /
`Katherine J. Rahlin
`krahlin@fredlaw.com
`Attorney for the Petitioner
`Registration No. 75,181
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`Fredrikson & Byron, P.A.
`200 South Sixth Street, Suite 4000
`Minneapolis, MN 55402-1425
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`Dated: August 14, 2018
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`4
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`Declaration of Adam R. Steinert in Support of
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`Motion for Pro Hac Vice Admission
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`I, Adam R. Steinert, declare as follows:
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`1.
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`I am a shareholder with Fredrikson & Byron, P.A., and am one of the
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`lawyers representing Petitioner Merrill Communications LLC d/b/a Merrill
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`Corporation (“Merrill”) in connection with the IPR Proceeding captioned on the
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`title page of this submission and related proceedings in federal district court.
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`2.
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`I am a member in good standing of the following Bars: State of
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`Minnesota, State of New York, U.S. Court of Appeals for the Federal Circuit, U.S.
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`Court of Appeals for the Eighth Circuit, U.S. District Court for the District of
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`Minnesota, U.S. District Court for the Northern District of Illinois, and U.S.
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`District Courts for the Southern and Eastern Districts of New York.
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`3.
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`I have never received a suspension or disbarment from practice before
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`any court or administrative body.
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`4.
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`I have never been denied any application or admission to practice
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`before any court or administrative body.
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`5.
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`I have never been sanctioned by or received contempt citations from
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`any court or administrative body.
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`6.
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`I have read and will comply with the Office Patent Trial Practice
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`Guide and the Board’s Rules of Practice for Trials set forth in part 42 of 37 C.F.R.
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`7.
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`I will be subject to the USPTO Rules of Professional Conduct set
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`forth in 37 C.F.R. § 11.101 et seq. and disciplinary jurisdiction under 37 C.F.R.
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`§ 11.19(a).
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`8.
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`I have previously applied to appear pro hac vice before the Board in
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`five cases within the last three (3) years, IPR2015-00482, IPR2015-00491,
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`IPR2016-01460, IPR2016-01463, and IPR2017-00202. The Board granted all of
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`those applications, and I argued on behalf of the petitioner at the oral hearing in all
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`five cases.
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`9.
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`Although I am not registered to practice with the USPTO, I earned the
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`degree of A.B., cum laude in Physics, from Harvard University in 2001.
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`10. Since my graduation from New York University School of Law in
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`2004, I have specialized in intellectual property litigation, and the vast majority of
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`my practice is patent and technology trade secret litigation and counselling. I have
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`appeared in patent litigation cases across the country, including appearances before
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`the U.S. Court of Appeals for the Federal Circuit, the U.S. District Courts for the
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`Southern and Eastern Districts of New York, the District of Minnesota, the
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`Northern and Eastern Districts of Texas, the District of Delaware, the Northern and
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`Southern Districts of California, the Northern District of Illinois, the Western
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`District of Washington, the Eastern District of Virginia, the Western District of
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`2
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`Oklahoma, the District of New Jersey, and before the U.S. International Trade
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`Commission.
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`11. Through my undergraduate education and intellectual property
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`litigation practice, I have experience with a wide range of electrical, mechanical,
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`and software technologies. Particularly relevant to this IPR, I have experience
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`with computer software and hardware, markup languages, and data manipulation
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`programs.
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`12. The following is an exemplary – but not exclusive – list of patent
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`cases in which I have made appearances:
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`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
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`Baxter Healthcare Corp. and Baxter Corp. Englewood, v. Becton, Dickinson
`and Co., S.D. Ca. Case No. 3:17-cv-02186 JLS-RBB
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`Baxter Int’l, Inc., v. Becton, Dickinson and Co., N.D. Ill. Case No. 1:17-cv-
`07576
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`Baxter Int’l, Inc., v. CareFusion Corp., N.D. Ill. Case No. 1:15-cv-09986
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`3M Co. v. XPEL Technologies Corp., D. Minn. Case No. 15-cv-04576
`(WMW/SER)
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`3M Co. v. HM Electronics, Inc., D. Minn. Case No. 14-cv-1000 (SRN/JSM)
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`3M Co. v. HM Electronics, Inc., D. Minn. Case No. 12-cv-553 (SRN/JSM)
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`MasterMine Software, Inc. v. Microsoft Corp., D. Minn. Case No. 13-cv-971
`(PJS/TNL)
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`IOENGINE, LLC v. Imation Corp., et al., D. Del. Case No. 1:14-cv-1572
`(GMS)
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`3
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`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)
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`Humanscale Corp. v. Mass Engineered Design, Inc., E.D. Va. Case No.
`1:13-cv-535 (CMH/IDD)
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`Ferrellgas Real Estate, Inc. v. Unique Value Marketing LLC, E.D.N.Y. Case
`No. 2:13-cv-3496 (JG/SIL)
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`3M Innovative Properties Co. v. NPV Group LLC, D. Minn. Case No. 12-cv-
`1470 (JRT/JJK)
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`Silver Screen Tele-Reality, Inc. v. Dealer Impact Systems, L.L.C., N.D. Tex.
`Case No. 3:11-cv-2351-K
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`Schwendimann v. Arkwright Advanced Coating, Inc., D. Minn. Case No. 11-
`cv-820 (ADM/JSM)
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`Illinois Tool Works Inc. v. Inpro/Seal Co., N.D. Ill. Case No. 1:10-cv-3978
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`Mass Engineered Design, Inc. v. 9X Media, Inc., E.D. Tex. Case No. 2:09-
`cv-358 (JRG)
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`Cardiac Science Corp. v. Koninklijke Philips Electronics N.V., D. Minn.
`Case No. 03-cv-1064 (DWF/RLE)
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`Voda v. Cordis Corp., W.D. Okla. Case No. 5:03-cv-01512-L
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`13.
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`I am very familiar with the subject matter at issue in this IPR
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`proceeding. As indicated in the preceding paragraph, I am counsel of record in the
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`pending patent lawsuit in the District of Delaware between e-Numerate Solutions,
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`Inc., and Petitioner Merrill over both the challenged ʼ816 patent and e-Numerate’s
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`U.S. Patent No. 7,650,355 (challenged in case no. IPR2018-01394), U.S. Patent
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`No. 9,262,383 (challenged in case no. IPR 2018-01391), and U.S. Patent No.
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`9,268,748 (challenged in case no. IPR2018-01389). I have reviewed and analyzed
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`4
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`those patents and their prosecution histories in detail, and I have participated in
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`every aspect of the lawsuit.
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`14.
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`In addition to my involvement in the district court case, I was
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`intimately involved in drafting the Petitions for IPR filed in this proceeding and the
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`companion proceedings challenging U.S. Patent No. 7,650,355 (case no. IPR2018-
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`01394), U.S. Patent No. 9,262,383 (case no. IPR 2018-01391), and U.S. Patent No.
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`9,268,748 (case no. IPR2018-01389).
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`15.
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`In conjunction with my work on the district court lawsuit and drafting
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`the Petition for the present IPR, I closely reviewed the subject ʼ816 patent, e-
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`Numerate’s 7,650,355 patent, 9,262,383 patent, and 9,268,748 patent, as well as
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`their prosecution file histories, the referenced prior art, all of the exhibits to the
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`IPR Petition, and, of course, the Petition I assisted in drafting.
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`I declare under penalty of perjury of the laws of the United States that the
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`foregoing is true and correct to the best of my present knowledge and recollection.
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`Dated: August 14, 2018
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`/Adam R. Steinert/
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` 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
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`5
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Motion for
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`Pro Hac Vice Admission was filed via PTAB E2E and served pursuant to 37
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`C.F.R. § 42.6(e) via electronic mail on August 14, 2018 on the following:
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`Gregory J. Gonsalves (gonsalves@gonsalveslawfirm.com)
`2216 Beacon Lane
`Falls Church, Virginia 22043
`Telephone: 571-419-7252
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`G. Andrew Gordon (andrew@agordonlawfirm.com)
`6518 Ryeworth Dr
`Frisco, TX 75035
`Telephone: 408-390-4473
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`/Katherine J. Rahlin/
`Katherine J. Rahlin
`krahlin@fredlaw.com
`Attorney for the Petitioner
`Registration No. 75,181
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`Dated: August 14, 2018
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`
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`64602132
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