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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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`PAYPAL, INC.
`UPWORK GLOBAL INC.
`SHOPIFY, INC.
`SHOPIFY (USA), INC.
`STRAVA INC.
`VALASSIS COMMUNICATIONS, INC.
`RETAILMENOT, INC.
`DOLLAR SHAVE CLUB, INC.
`Petitioners
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`v.
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`PERSONALWEB TECHNOLOGIES, LLC
`LEVEL 3 COMMUNICATIONS, LLC
`Patent Owners
`_______________
`
`Case IPR2019-01111
`Patent 7,802,310
`_______________
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`PATENT OWNER’S MOTION FOR
`PRO HAC VICE ADMISSION OF LAWRENCE M. HADLEY
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`Patent Owner’s Motion for Pro Hac Vice
`Admission of Lawrence M. Hadley
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`IPR2019-01111
`Patent No. 7,802,310
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`EXHIBITS
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`EX. #
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`Exhibit Description
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`2001
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`Declaration of Lawrence M. Hadley in Support of Patent Owner’s
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`Motion for Pro Hac Vice Admission
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`- i -
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`Patent Owner’s Motion for Pro Hac Vice
`Admission of Lawrence M. Hadley
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`IPR2019-01111
`Patent No. 7,802,310
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`Patent Owner PersonalWeb Technologies, LLC (“PersonalWeb” or “Patent
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`Owner”) respectfully requests that the Board recognize and admit Lawrence M.
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`Hadley as counsel pro hac vice to represent PersonalWeb during the above-
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`captioned proceeding. This motion is authorized by the Notice of Filing Date
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`Accorded that was mailed on June 5, 2019. The bases and support for
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`PersonalWeb’s requests are as follows.
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`I.
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`TIMING OF PERSONALWEB’S REQUEST
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`PersonalWeb’s motion is being filed no sooner than twenty-one (21) days
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`after the service of the petition.
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`II. GOOD CAUSE BASIS FOR PERSONALWEB’S REQUEST
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`The Board may recognize counsel pro hac vice during a proceeding upon a
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`showing of good cause, subject to the condition that lead counsel is a registered
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`practitioner and a declaration of the party seeking admission is included with the
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`Request. 37 C.F.R. § 42.10(c). Good cause has been shown where, for example,
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`the attorney for which pro hac vice admission is sought is an experienced patent
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`litigator and has a familiarity with the subject matter at issue in the proceeding, and
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`the admission of the party’s counsel will facilitate the party’s ability to effectively
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`participate in the proceeding. PersonalWeb respectfully submits that all of these
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`conditions have been met here.
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`- 1 -
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`Patent Owner’s Motion for Pro Hac Vice
`Admission of Lawrence M. Hadley
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`IPR2019-01111
`Patent No. 7,802,310
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`PersonalWeb’s lead counsel, Joseph A. Rhoa, is a registered practitioner.
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`See Exhibit 2001, Declaration of Lawrence M. Hadley in Support of Patent
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`Owner’s Motion for Pro Hac Vice Admission (“Hadley Decl.”), at ¶ 13.
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`As demonstrated by his declaration, Mr. Hadley is an experienced litigator
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`who has litigated patent infringement cases for various parties in federal district
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`courts throughout the United States, the U.S. Court of Appeals for the Federal
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`Circuit, and the International Trade Commission. Id. at ¶¶ 4-5. His legal career
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`spans over twenty-five (25) years. See id. at ¶ 3. Mr. Hadley has extensive
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`experience in litigating patent infringement cases, and has served as lead counsel in
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`numerous patent infringement cases. Id. at ¶ 5.
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`Mr. Hadley is familiar with the subject matter of this proceeding involving
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`U.S. Patent No. 7,802,310 (“the ’310 Patent”). He currently is lead trial counsel
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`for PersonalWeb in two pending district court actions, namely, PersonalWeb
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`Techs. LLC et al. v. EMC Corporation et al., 5-13-cv-01358 (N.D. Cal.) and
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`PersonalWeb Techs. LLC et al. v. Facebook Inc., 5-13-cv-01356 (N.D. Cal.), each
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`involving ’310 Patent family members and the ’310 Patent itself. Hadley Decl. at ¶
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`6. Additionally, Mr. Hadley has been lead trial counsel for PersonalWeb in prior
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`district court actions, each of which involved one or more family member patents
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`and/or the ’310 Patent itself. Id. For example, Mr. Hadley was lead trial counsel
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`- 2 -
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`Patent Owner’s Motion for Pro Hac Vice
`Admission of Lawrence M. Hadley
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`IPR2019-01111
`Patent No. 7,802,310
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`in PersonalWeb Techs. LLC et al. v. Int’l Bus. Machs. Corp., 5-16-cv-01266 (N.D.
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`Cal.) and PersonalWeb Techs. LLC et al. v. Rackspace US, Inc. et al., 5-16-cv-
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`01267 (N.D. Cal.), both of which involved the ’310 Patent. Id. Finally, Mr.
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`Hadley was lead appellate counsel for PersonalWeb for its two appeals to the Court
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`of Appeals for the Federal Circuit in connection with IPR2013-00596 filed by
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`Apple, Inc., which involved the ’310 Patent. Id.; see also Pers. Web Techs., LLC
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`v. Apple, Inc., 848 F.3d 987 (Fed. Cir. 2017) (PersonalWeb I) (affirming the
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`Board’s claim construction, vacating the Board’s Final Written Decision regarding
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`obviousness of the appealed claims, and remanding for further proceedings);
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`PersonalWeb Techs., LLC v. Apple, Inc., 917 F.3d 1376 (Fed. Cir. 2019)
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`(PersonalWeb II) (reversing the Board’s finding of obviousness).
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`During the course of these actions, Mr. Hadley has become highly familiar
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`with the invention claimed in the ’310 Patent and its family member patents, the
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`technology relevant to the ’310 Patent and its family member patents, the
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`prosecution history of the ’310 Patent and its family member patents, the prior art
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`to the ’310 Patent and its family member patents, including prior art relied-upon in
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`the four (4) other new IPRs filed by the Petitioners on May 14, 2019, the prior
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`Apple challenge to the ’310 Patent that resulted in two published Federal Circuit
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`decisions, the arguments concerning the validity of the ’310 Patent and its family
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`- 3 -
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`Patent Owner’s Motion for Pro Hac Vice
`Admission of Lawrence M. Hadley
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`IPR2019-01111
`Patent No. 7,802,310
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`member patent made by Petitioners, certain issues affecting the Petitioners’
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`representations regarding the real parties in interest, and certain issues relating to
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`parties in privity with at least some of the Petitioners. Hadley Decl. at ¶¶ 6-7.
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`PersonalWeb submits that Mr. Hadley’s participation will assist it and its
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`lead counsel in effectively participating in this proceeding, and will facilitate
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`timely completion of the proceedings.
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`Mr. Hadley has never been suspended, disbarred, sanctioned or cited for
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`contempt by any court or administrative body, and has never had an application for
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`admission to practice before a court or agency denied. Id. at ¶¶ 8-9. Mr. Hadley is
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`a member in good standing of the Bar of California, the United States Supreme
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`Court, the Ninth and Federal Circuit Courts of Appeal, and numerous district
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`courts across the country. Id. at ¶ 4. Mr. Hadley has further agreed, as indicated in
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`his declaration, to read and to be subject to the Office Patent Trial Practice Guide,
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`the Board’s Rules of Practice for Trials set forth in part 42 of 37 C.F.R, and the
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`USPTO’s Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et. seq.,
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`and submit to disciplinary jurisdiction under 37 C.F.R. § 11.19(a). Id. at ¶¶ 10-11.
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`Mr. Hadley in the last three years has applied to appear pro hac vice in the
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`following proceedings before the USPTO: Apple, Inc. v. UUSI, LLC dba Nartron,
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`IPR2019-00355 (PTAB); Apple, Inc. v. UUSI, LLC dba Nartron, IPR2019-00356
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`- 4 -
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`Patent Owner’s Motion for Pro Hac Vice
`Admission of Lawrence M. Hadley
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`
`IPR2019-01111
`Patent No. 7,802,310
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`(PTAB); Apple, Inc. v. UUSI, LLC dba Nartron, IPR2019-00357 (PTAB); Apple,
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`Inc. v. UUSI, LLC dba Nartron, IPR2019-00358 (PTAB); Apple, Inc. v. UUSI,
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`LLC dba Nartron, IPR2019-00359 (PTAB); and Apple, Inc. v. UUSI, LLC dba
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`Nartron, IPR2019-00360 (PTAB). Id. at ¶ 12; see also Apple, Inc. v. UUSI, LLC
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`dba Nartron, IPR2019-00355 (PTAB April 3, 2019) (granting pro hac vice
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`admission of Mr. Hadley in these six IPR proceedings) (Paper 9).
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`III. CONCLUSION
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`For the foregoing reasons, PersonalWeb respectfully requests that the Board
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`recognize Lawrence M. Hadley as its counsel, pro hac vice, in this proceeding.
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`Respectfully submitted,
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`Dated: August 9, 2019
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` /Joseph A. Rhoa/
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`Joseph A. Rhoa
`Reg. No. 37,515
`Jonathan A. Roberts
`Reg. No. 68,565
`Counsel for Patent Owner PersonalWeb
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`- 5 -
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`Patent Owner’s Motion for Pro Hac Vice
`Admission of Lawrence M. Hadley
`
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`IPR2019-01111
`Patent No. 7,802,310
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true copy of the foregoing Patent
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`Owner’s Motion for Pro Hac Vice Admission of Lawrence M. Hadley and all
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`exhibits filed therewith, was served on Petitioners on August 9, 2019, by emailing
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`a copy to counsel at the email addresses listed below:
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`Brent Ray (Reg. No. 54,390)
`brent.ray@kirkland.com
`Kourtney N. Baltzer (Reg. No. 65,294)
`kourtney.baltzer@kirkland.com
`Nikhil R. Krishnan (Reg. No. 68,879)
`nikhil.krishnan@kirkland.com
`KIRKLAND & ELLIS LLP
`300 North LaSalle Street
`Chicago, Illinois 60654
`Telephone: (312) 862-2000
`Fax: (312) 862-2200
`PayPal_PWeb_PTAB@kirkland.com
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` /Jonathan A. Roberts/
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`Jonathan A. Roberts
`Reg. No. 68,565
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