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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AXIS COMMUNICATIONS AB, CANON, INC., AND CANON U.S.A., INC.,
`Petitioners,
`
`v.
`
`AVIGILON FORTRESS CORPORATION
`Patent Owner.
`
`Case No. IPR2019-00235
`Patent No. 7,868,912
`
`PATENT OWNER’S UNOPPOSED MOTION FOR THE PRO HAC VICE
`ADMISSION OF MICHAEL W. DE VRIES, ADAM R. ALPER AND
`AKSHAY S. DEORAS
`
`
`
`
`
`IPR2019-00235
`Patent Owner’s Motion For Pro Hac Vice Admission
`
`
`RELIEF REQUESTED
`Pursuant to 37 C.F.R. § 42.10(c), Patent Owner Avigilon Fortress Corporation
`
`I.
`
`(“Avigilon”) respectfully moves the Patent Trial & Appeal Board (“Board”) for the
`
`pro hac vice admission of Michael W. De Vries, Adam R. Alper and Akshay S.
`
`Deoras in this proceeding.
`
`II. GOVERNING LAW, RULES, AND PRECEDENT
`The Board is authorized to recognize counsel pro hac vice pursuant to 37
`
`C.F.R. § 42.10(c), which provides that:
`
`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 has stated that a motion for admission pro hac vice should include
`
`a “statement of facts showing there is good cause for the Board to recognize
`
`counsel pro hac vice during the proceeding” and “[b]e 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
`
`1
`
`
`
`IPR2019-00235
`Patent Owner’s Motion For Pro Hac Vice Admission
`
`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 37 C.F.R.;
`vi. The individual 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); vii. All other proceedings
`before the Office for which the individual 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.”
`
`Unified Patents, Inc. v. Parallel Iron, LLC, IPR 2013-00639 (MPT) (Paper 7 at 3-
`
`4).
`
`III. STATEMENT OF FACTS
`Based on the following facts, supported by their declarations, Avigilon
`
`requests that Mr. De Vries, Mr. Alper and Mr. Deoras be admitted pro hac vice in
`
`this proceeding. As an initial matter, Avigilon’s lead and first back-up counsel in
`
`this matter, Eugene Goryunov (No. 61,579) and Reza Dokhanchy, (Reg. No.
`
`62,795), are both registered practitioners.
`
`A. Mr. De Vries Meets The Requirements For Admission Pro Hac
`Vice
`
`2
`
`
`
`IPR2019-00235
`Patent Owner’s Motion For Pro Hac Vice Admission
`
`1. Mr. De Vries has more than 17 years of experience as a litigation attorney
`
`specializing in patent litigation, representing clients in patent litigation matters in
`
`various United States District Courts and before the International Trade
`
`Commission.
`
`2. Mr. De Vries is very familiar with U.S. Patent No. 7,868,912, and with the
`
`legal subject matter, technical subject matter, and prior art discussed in Petitioner’s
`
`Request for Inter Partes Review of U.S. Patent No. 7,868,912 which forms the
`
`basis for this proceeding.
`
`3. Mr. De Vries is a member in good standing of the Bar of the State of
`
`California. He is admitted to practice before before the United States District
`
`Court for the Eastern District of Texas, the United States District Court for the
`
`Eastern District of California, the United States District Court for the Eastern
`
`District of California, the United States District Court for the Northern District of
`
`California, the United States District Court for the Central District of California, the
`
`United States District Court for the Southern District of California, the United States
`
`District Court of Colorado, the United States District Court for the Eastern District of
`
`Michigan, the United States Court of Appeals for the Federal Circuit, and the
`
`United States Court of Appeals for the Eleventh Circuit.
`
`4. Mr. De Vries has never been suspended or disbarred from practice before
`
`any court or administrative body.
`
`3
`
`
`
`IPR2019-00235
`Patent Owner’s Motion For Pro Hac Vice Admission
`
`5. Mr. De Vries has never had a court or administrative body deny an
`
`application for admission to practice.
`
`6. Mr. De Vries has never been sanctioned or cited for contempt by any court
`
`or administrative body.
`
`7. Mr. De Vries 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.
`
`8. Mr. De Vries agrees to 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).
`
`9.
`
`In the past 3 years, Mr. De Vries was admitted pro hac vice as counsel
`
`before the PTAB in the following actions.
`
`•
`
`•
`
`•
`
`•
`
`Inter Partes Reviews IPR2014-01457, IPR2014-01458, IPR2014-01459,
`IPR2015-01052, IPR2015-01053, and IPR2015-01054 as counsel for
`Biscotti concerning a Real Time Video Communications System.
`
`Inter Partes Reviews IPR2015-00999 and IPR2015-01001 as counsel for
`Cisco Systems, Inc. concerning Admissions Control In A Connectionless
`Communications Network, and Providing Media Communication Across
`Firewalls, respectively.
`
`Inter Partes Reviews IPR2016-01398, IPR2016-01401, and IPR2016-
`01402 as counsel for Intel Corp. concerning Security Processor With Bus
`Configuration, Performance Based Packet Ordering In A PCI Express Bus,
`and Method For Effecting The Controlled Shutdown Of Data Processing
`Units, respectively.
`
`Inter Partes Review IPR2016-01434 as counsel for Oracle Corporation
`concerning an Apparatus For Distributing Content Objects To A
`
`4
`
`
`
`IPR2019-00235
`Patent Owner’s Motion For Pro Hac Vice Admission
`
`Personalized Access Point Of A User Over A Network-Based Environment
`And Method.
`
`Inter Partes Review IPR2017-00609, IPR2017-00610, and IPR2017-00616
`as counsel for LivePerson, Inc. concerning Integrated Chat Client With
`Calling Party Choice; Interaction Management; And Method and Apparatus
`for Intelligent Routing of Incoming Calls to Representatives in a Call
`Center, respectively.
`
`Inter Partes Review IPR2018-00320 as counsel for Sierra Wireless, Inc.
`concerning Method and Devices for the Transmission of Data with
`Transmission Error Checking.
`
`Inter Partes Reviews IPR2017-02183, IPR2018-00128, IPR2018-00176 as
`counsel for Motorola Solutions, Inc. concerning a Method of Efficiently
`Synchronizing to a Desired Timeslot in a Time Division Multiple Access
`Communication System.
`
`•
`
`•
`
`•
`
`•
`
`Inter Partes Review IPR2018-01268 as counsel for Avigilon Patent
`Holding 1 Corp. concerning a Method and System for Programmable
`Camera for Configurable Security and Surveillance Systems.
`B. Mr. Alper Meets The Requirements For Admission Pro Hac Vice
`1. Mr. Alper has more than 18 years of experience as a litigation attorney
`
`specializing in patent litigation, representing clients in patent litigation matters in
`
`various United States District Courts, the Court of Appeals for the Federal Circuit,
`
`and before the International Trade Commission.
`
`2. Mr. Alper is very familiar with U.S. Patent No. 7,868,912, and with the legal
`
`subject matter, technical subject matter, and prior art discussed in Petitioner’s
`
`Request for Inter Partes Review of U.S. Patent No.7,868,912, which forms the
`
`basis for this proceeding.
`
`5
`
`
`
`IPR2019-00235
`Patent Owner’s Motion For Pro Hac Vice Admission
`
`3. Mr. Alper is a member in good standing of the Bar of the State of California.
`
`He is admitted to practice before the U.S. District Court for the Northern District of
`
`California, the U.S. Court of Appeals for the Ninth Circuit, the U.S. Court of
`
`Appeals for the Federal Circuit, the U.S. District Court for the Central District of
`
`California, the U.S. District Court for the Western District of Wisconsin, the U.S.
`
`Court Of Appeals For The Third Circuit, and the U.S. District Court for the Eastern
`
`District Of Texas (Pro Hac Vice).
`
`4. Mr. Alper has never been suspended or disbarred from practice before any
`
`court or administrative body.
`
`5. Mr. Alper has never had a court or administrative body deny an application
`
`for admission to practice.
`
`6. Mr. Alper has never been sanctioned or cited for contempt by any court or
`
`administrative body.
`
`7. Mr. Alper 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.
`
`8. Mr. Alper agrees to 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).
`
`9.
`
`In the past four years, Mr. Alper was admitted pro hac vice as counsel before
`
`the PTAB in the following actions:
`
`6
`
`
`
`IPR2019-00235
`Patent Owner’s Motion For Pro Hac Vice Admission
`
`• Inter Partes Reviews IPR2014-01457, IPR2014-01458, IPR2014-01459,
`IPR2015-01052, IPR2015-01053, and IPR2015-01054 as counsel for
`Biscotti concerning a Real Time Video Communications System.
`• Inter Partes Reviews IPR2015-00999 and IPR2015-01001 as counsel for
`Cisco Systems, Inc. concerning Admissions Control In A Connectionless
`Communications Network, and Providing Media Communication Across
`Firewalls, respectively.
`• Inter Partes Reviews IPR2016-00589, IPR2016-00590, IPR2016-00591,
`and IPR2016-00592 as counsel for Eagle View Technologies, Inc.
`concerning Concurrent Display Systems And Methods For Aerial Roof
`Estimation, Pitch Determination Systems And Methods For Aerial Roof
`Estimation, and Concurrent Display Systems And Methods For Aerial Roof
`Estimation, respectively.
`• Inter Partes Reviews IPR2016-00593 and IPR2016-00594 as counsel for
`Pictometry International Corp. concerning Systems And Methods For
`Processing Images With Edge Detection And Snap-To Feature And System
`and Process For Roof Measurement Using Aerial Imagery, respectively.
`• Inter Partes Review IPR2016-01402 as counsel for Intel Corp. concerning a
`Method For Effecting The Controlled Shutdown Of Data Processing Units.
`• Inter Partes Review IPR2017-00609; IPR2017-00610; and IPR2017-00616
`as counsel for LivePerson, Inc. concerning Integrated Chat Client With
`Calling Party Choice; Interaction Management; And Method and Apparatus
`for Intelligent Routing of Incoming Calls to Representatives in a Call
`Center, respectively.
`• Inter Partes Review IPR2018-00320 as counsel for Sierra Wireless, Inc.
`concerning Method and Devices for the Transmission of Data with
`Transmission Error Checking
`• Inter Partes Reviews IPR2017-02183, IPR2018-00128, IPR2018-00176 as
`counsel for Motorola Solutions, Inc. concerning a Method of Efficiently
`Synchronizing to a Desired Timeslot in a Time Division Multiple Access
`Communication System.
`
`7
`
`
`
`IPR2019-00235
`Patent Owner’s Motion For Pro Hac Vice Admission
`
`• Inter Partes Review IPR2018-01268 as counsel for Avigilon Patent Holding
`1 Corp. concerning a Method and System for Programmable Camera for
`Configurable Security and Surveillance Systems.
`C. Mr. Deoras Meets The Requirements For Admission Pro Hac Vice
`1. Mr. Deoras has more than 9 years of experience as a litigation attorney
`
`specializing in patent litigation, representing clients in patent litigation matters in
`
`various United States District Courts, the Court of Appeals for the Federal Circuit,
`
`and before the International Trade Commission.
`
`2. Mr. Deoras is very familiar with U.S. Patent No. 7,868,912, and with the
`
`legal subject matter, technical subject matter, and prior art discussed in Petitioner’s
`
`Request for Inter Partes Review of U.S. Patent No. 7,868,912, which forms the
`
`basis for this proceeding.
`
`3. Mr. Deoras is a member in good standing of the Bar of the State of
`
`California and the State of New York. He is admitted to practice before the U.S.
`
`District Court for the Northern District of California and the U.S. Court of Appeals
`
`for the Federal Circuit.
`
`4. Mr. Deoras has never been suspended or disbarred from practice before any
`
`court or administrative body.
`
`5. Mr. Deoras has never had a court or administrative body deny an application
`
`for admission to practice.
`
`8
`
`
`
`IPR2019-00235
`Patent Owner’s Motion For Pro Hac Vice Admission
`
`6. Mr. Deoras has never been sanctioned or cited for contempt by any court or
`
`administrative body.
`
`7. Mr. Deoras 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.
`
`8. Mr. Deoras agrees to 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).
`
`9.
`
`In the past four years, Mr. Deoras was admitted pro hac vice as counsel
`
`before the PTAB in the following actions:
`
`• Inter Partes Review IPR2016-01402 as counsel for Intel Corporation
`concerning a Method For Effecting The Controlled Shutdown Of Data
`Processing Units.
`• Inter Partes Review IPR2017-02183, IPR2018-00128, IPR2018-00176 as
`counsel for Motorola Solutions, Inc. concerning a Method of Efficiently
`Synchronizing to a Desired Timeslot in a Time Division Multiple Access
`Communication System.
`• Inter Partes Review IPR2018-01268 as counsel for Avigilon Patent Holding
`1 Corp. concerning a Method and System for Programmable Camera for
`Configurable Security and Surveillance Systems.
`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION OF
`MR. DE VRIES, MR. ALPER AND MR. DEORAS 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 any other conditions the Board may impose. 37 C.F.R. § 42.10(c).
`
`9
`
`
`
`IPR2019-00235
`Patent Owner’s Motion For Pro Hac Vice Admission
`
`Avigilon’s lead counsel in this Patent Trial and Appeal Board matter, Eugene
`
`Goryunov, is a registered practitioner before the Board. Based on the facts
`
`contained herein, good cause exists to admit Mr. De Vries, Mr. Alper and Mr.
`
`Deoras pro hac vice.
`
`Mr. De Vries is an experienced litigator with more than 17 years of patent
`
`litigation experience. Mr. De Vries has represented clients in matters related to
`
`computer systems and networked communications technologies, among others,
`
`and has significant experience in patent litigation matters. Mr. De Vries is actively
`
`involved with the strategy and fact development in the matter. In view of Mr. De
`
`Vries’ extensive knowledge of the subject matter of this proceeding Avigilon has a
`
`substantial need for Mr. De Vries’ pro hac vice admission and his involvement in
`
`the continued defense of this proceeding.
`
`
`
`Mr. Alper is an experienced litigator with more than 18 years of patent
`
`litigation experience. Mr. Alper has represented clients in matters related to
`
`computer systems and networked communications technologies, among others, and
`
`has significant experience in patent litigation matters. Mr. Alper is actively
`
`involved with the strategy and fact development in the matter. In view of Mr.
`
`Alper’s extensive knowledge of the subject matter of this proceeding, Avigilon has
`
`a substantial need for Mr. Alper’s pro hac vice admission and his involvement in
`
`the continued defense of this proceeding.
`
`10
`
`
`
`IPR2019-00235
`Patent Owner’s Motion For Pro Hac Vice Admission
`
`Mr. Deoras is an experienced litigator with more than 9 years of patent
`
`
`
`litigation experience. Mr. Deoras has represented clients in matters related to
`
`computer systems and networked communications technologies, among others, and
`
`has significant experience in patent litigation matters. Mr. Deoras is actively
`
`involved with the strategy and fact development in the matter. In view of Mr.
`
`Deoras’s extensive knowledge of the subject matter of this proceeding, Avigilon
`
`has a substantial need for Mr. Deoras’s pro hac vice admission and his
`
`involvement in the continued defense of this proceeding.
`
`V. CONCLUSION
`For the foregoing reasons, Avigilon respectfully requests that Michael W.
`
`De Vries, Adam R. Alper and Akshay S. Deoras be admitted pro hac vice.
`
`Date: January 9, 2019
`
`
`
`
`
`
`
`Respectfully submitted,
`
` /s/ Eugene Goryunov
`Eugene Goryunov (Reg. No. 61,579)
`KIRKLAND & ELLIS LLP
`300 North LaSalle
`Chicago, IL 60654
`Telephone: 312-862-2000
`Facsimile: 312-862-2200
`eugene.goryunov@kirkland.com
`
`Attorneys For Patent Owner Avigilon
`Fortress Corporation
`
`
`11
`
`
`
`
`
`
`
`
`
`
`IPR2019-00235
`Patent Owner’s Motion For Pro Hac Vice Admission
`
`PATENT OWNER’S EXHIBIT LIST
`
`Description
`
`Exhibit
`No.
`2001 Declaration of Michael W. De Vries in Support of Unopposed Motion
`to Appear Pro Hac Vice on Behalf of Patent Owner Avigilon Fortress
`Corporation
`2002 Declaration of Adam R. Alper in Support of Unopposed Motion to
`Appear Pro Hac Vice on Behalf of Patent Owner Avigilon Fortress
`Corporation
`2003 Declaration of Akshay S. Deoras in Support of Unopposed Motion to
`Appear Pro Hac Vice on Behalf of Patent Owner Avigilon Fortress
`Corporation
`
`
`
`
`
`12
`
`
`
`IPR2019-00235
`Patent Owner’s Motion For Pro Hac Vice Admission
`
`CERTIFICATE OF SERVICE
`
`I certify that a copy of the Patent Owner’s Motion is being served by
`
`electronic mail on the following counsel for the Petitioners:
`
`Axis Communications AB
`Lead Counsel
`
`C. Gregory Gramenopoulos (Reg. No.
`36,532)
`Finnegan, Henderson, Farabow,
`Garrett & Dunner LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Telephone: 202-408-4263
`Fax: 202-408-4400
`Email: gramenoc@finnegan.com
`
`Cannon Inc. and Canon U.S.A., Inc.
`Lead Counsel
`
`Joseph A. Calvaruso (Reg. No. 28,287)
`Orrick, Herrington, & Sutcliffe LLP
`2050 Main Street, Suite 1110
`Irvine, CA 92614-8255
`Telephone: 212-506-5140
`Facsimile: 949-567-6710
`Email: ipprosecution@orrick.com
`
`
`Dated: January 9, 2019
`
`
`
`13
`
`Axis Communications AB
`Backup Counsel
`
`Jessica L.A. Marks (Reg. No. 67,451)
`Finnegan, Henderson, Farabow,
`Garrett & Dunner LLP
`Two Freedom Square
`11955 Freedom Drive
`Reston, VA 20190-5675
`Telephone: 571-203-2791
`Fax: 202-408-4400
`Email: jessica.marks@finnegan.com
`
`Cannon Inc. and Canon U.S.A., Inc.
`Back-Up Counsel
`
`Richard F. Martinell (Reg. No. 52,003)
`Orrick, Herrington, & Sutcliffe LLP
`2050 Main Street, Suite 1110
`Irvine, CA 92614-8255
`Telephone: 212-506-5140
`Facsimile: 949-567-6710
`Email: ipprosecution@orrick.com
`
`
` /s/ Eugene Goryunov
`
`Eugene Goryunov (Reg. No. 61,579)
`KIRKLAND & ELLIS LLP
`300 North LaSalle
`Chicago, IL 60654
`Telephone: 312-862-2000
`Facsimile: 312-862-2200
`eugene.goryunov@kirkland.com
`
`
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