UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`Panasonic Corporation of North America et al.,
`Petitioner
`v.
`Cellspin Soft, Inc.
`Patent Owner.
`____________
`Case IPR2019-00131
`Patent 9,258,698
`
`PETITIONERS’ MOTION FOR PRO HAC VICE
`ADMISSION OF DAVID MEDINA
`
`
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`Panasonic Corporation of North America et al.,
`Petitioner
`v.
`Cellspin Soft, Inc.
`Patent Owner.
`____________
`Case IPR2019-00131
`Patent 9,258,698
`
`PETITIONERS’ MOTION FOR PRO HAC VICE
`ADMISSION OF DAVID MEDINA
`
`
`
`I.
`
`RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. § 42.10 (c), Petitioners Panasonic Corporation of North
`
`America and Panasonic Corporation (collectively “PANASONIC”) respectfully
`
`request the pro hac vice admission of David Medina in this proceeding.
`
`II.
`
`RELEVANT RULES AND ORDERS
`
`Section 42.10(c) states as follows:
`
`The Board may recognize counsel pro hac vice during 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. For
`
`example, where the 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 showing that
`
`counsel is an experienced litigating attorney and has an
`
`established familiarity with the subject matter at issue in the
`
`proceeding.
`
`The Board’s Notice of Filing Date Accorded to Petition and Time for Filing
`
`Patent Owner Preliminary Response (Paper No. 4) states that motions for pro hac
`
`vice admission under 37 C.F.R. § 42.10(c) “shall be filed in accordance with the
`
`‘Order – Authorizing Motion for Pro Hac Vice Admission’ in Case IPR2013-00639,
`
`Paper 7” (“Pro Hac Vice Order”). In accordance with the Pro Hac Vice Order, this
`
`1
`
`
`
`motion is being filed no sooner than twenty-one (21) days after service of the
`
`petition.
`
`The Pro Hac Vice Order requires motions to (1) contain a statement of facts
`
`showing there is good cause for the Board to recognize counsel pro hac vice during the
`
`proceeding, and (2) be accompanied by an affidavit or declaration of the individual
`
`seeking to appear attesting to the following:
`
`i.
`
`Membership in good standing of the Bar of at least one State or
`
`the District of Columbia;
`
`ii.
`
`No suspensions or disbarments from practice before any court
`
`or administrative body;
`
`iii.
`
`No application for admission to practice before any court or
`
`administrative body ever denied;
`
`iv.
`
`No sanctions or contempt citations imposed by any court or
`
`administrative body;
`
`v.
`
`The individual seeking to appear 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 the C.F.R.;
`
`vi.
`
`The individual will be subject to the USPTO 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);
`
`vii. All other proceedings before the Office for which the individual
`
`2
`
`
`
`has applied to appear pro hac vice in the last three (3) years;
`
`and
`
`viii. Familiarity with the subject matter at issue in the proceeding.
`
`III. STATEMENT OF FACTS
`
`Based on the following facts, supported by the Declaration of David Medina
`
`submitted herewith, Petitioners request that Mr. Medina be admitted pro hac vice in
`
`this proceeding.
`
`1.
`
`Patent Owner’s counsel has indicated that Patent Owner does not
`
`oppose this motion.
`
`2.
`
`Petitioners’ lead counsel, T. Vann Pearce, Jr., is a registered
`
`practitioner (Reg. No. 58,945) and a partner at the law firm of
`
`Orrick, Herrington & Sutcliffe LLP.
`
`3.
`
`Mr. Medina is an associate at the law firm of Orrick, Herrington &
`
`Sutcliffe LLP.
`
`4.
`
`Mr. Medina is an experienced litigating attorney. Mr. Medina has
`
`over four years of experience in intellectual property law, focusing
`
`on patent litigation matters, as an associate in Orrick’s Intellectual
`
`Property Group and as an attorney with Panasonic Corporation.
`
`5.
`
`Mr. Medina is familiar with the subject matter at issue in this
`
`proceeding. Mr. Medina assisted with the preparation of the petition
`
`for inter partes review in this matter and has continued to work on
`
`3
`
`
`
`this inter partes review proceeding since then, as well as the co-
`
`pending district court and Federal Circuit litigation involving the
`
`’698 Patent. Over the course of that period, he has become very
`
`familiar with the ’698 Patent, its file history, and the references
`
`asserted as prior art by Panasonic in this IPR proceeding.
`
`6. Mr. Medina is a member in good standing of the State Bar of California.
`
`7. Mr. Medina has never been suspended or disbarred from practice before
`
`any court or administrative body.
`
`8.
`
`No application of Mr. Medina for admission to practice before any
`
`court or administrative body has ever been denied.
`
`9.
`
`No sanctions or contempt citations have ever been imposed against
`
`Mr. Medina by any court or administrative body.
`
`10. Mr. Medina 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 Section 37 of the C.F.R.
`
`11. Mr. Medina understands that he 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).
`
`12. Mr. Medina has not applied to appear pro hac vice in any other
`
`proceeding before the Office in the last three (3) years.
`
`4
`
`
`
`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION OF
`MR. MEDINA IN THIS PROCEEDING
`
`The Board may recognize counsel pro hac vice during 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). Petitioners’ lead counsel, T. Vann Pearce, Jr., is a registered practitioner.
`
`As set forth above, and as supported by his Declaration, Mr. Medina is an
`
`experienced litigating attorney with over four years of patent litigation experience
`
`and has an established familiarity with the subject matter at issue in this
`
`proceeding.
`
`Given Mr. Medina’s experience with the involved patent and parties,
`
`Petitioners have good cause for the pro hac vice admission of Mr. Medina. In
`
`addition, Mr. Medina’s involvement will facilitate scheduling for the deposition of
`
`Petitioners’ expert witness in San Francisco, California. Further, there will be no
`
`prejudice to Patent Owner here. Counsel for Patent Owner has indicated that
`
`Patent Owner does not oppose this Motion.
`
`V. CONCLUSION
`
`For the foregoing reasons, Petitioners respectfully requests that Mr. Medina
`
`be admitted pro hac vice in this proceeding. The Patent Trial and Appeal Board is
`
`hereby authorized to charge any fees associated with this filing to Deposit Account
`
`15-0665 (Customer ID No. 34313).
`
`5
`
`
`
`Dated: November 5, 2019
`
`Respectfully submitted,
`
`By: /T. Vann Pearce, Jr./
`
`T. Vann Pearce, Jr.
`vpearce@orrick.com
`Registration No. 58,945
`ORRICK, HERRINGTON, & SUTCLIFFE LLP
`1152 15th Street NW
`Washington, DC 20005
`Tel: 202-339-8696
`
`Lead Counsel for Petitioners Panasonic
`Corporation of North America and Panasonic
`Corporation
`
`6
`
`
`
`CERTIFICATION OF SERVICE
`
`The undersigned hereby certifies that “PETITIONERS’ MOTION FOR
`
`PRO HAC VICE ADMISSION OF DAVID MEDINA” was served in its entirety
`
`on November 5, 2019, upon the following parties via electronic service:
`
`John J. Edmonds
`Edmonds & Schlather, PLLC
`355 South Grand Avenue, Suite 2450
`Los Angeles, CA 90071
`pto-edmonds@ip-lit.com
`
`Stephen F. Schlather
`Edmonds & Schlather, PLLC
`1616 South Voss Road, Suite 125
`Houston, TX 77057
`sschlather@ip-lit.com
`
`Attorneys for Patent Owner Cellspin Soft, Inc.
`
`By: /Karen Johnson/
` Karen Johnson
`
`7
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
