`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG DISPLAY CO., LTD. AND DELL INC.,
`Petitioner,
`
`v.
`
`SOLAS OLED, LTD.,
`Patent Owner.
`
`Case No. IPR2020-00140
`Patent No. 6,072,450
`
`PETITIONER’S UNOPPOSED MOTION FOR ADMISSION
`PRO HAC VICE OF JEFFREY H. LERNER UNDER 37 C.F.R. § 42.10
`
`
`
`
`
`
`
`I.
`
`Relief Requested
`Pursuant to 37 C.F.R. § 42.10, and in accordance with the Board’s Order,
`
`IPR2020-00140
`
`Paper No. 7 in Case IPR2013-00639, and the Notice of Filing Date Accorded to
`
`Petition (Paper No. 4), Petitioner requests that the Board admit Jeffrey H. Lerner pro
`
`hac vice in this proceeding. Counsel for Patent Owner has informed the undersigned
`
`that Patent Owner does not oppose this motion.
`
`II.
`
`Statement of Facts
`37 C.F.R. § 42.10(c) states 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
`
`facts, supported by the attached Declaration of Jeffrey H. Lerner in Support of
`
`Petitioner’s Motion for Admission Pro Hac Vice (Ex. 1014, “Lerner Decl.”),
`
`establish good cause to admit Mr. Lerner pro hac vice in this proceeding.
`
`Lead counsel, David A. Garr, is a registered practitioner.
`
`Counsel, Jeffrey H. Lerner, is an experienced litigation attorney with sixteen
`
`years in private law practice and has substantial experience with patent litigation.
`
`- 1 -
`
`
`
`
`
`IPR2020-00140
`
`Lerner Decl. at ¶ 9. Mr. Lerner has been counsel in more than twenty patent
`
`infringement matters, including cases pending in various district courts. Id. Mr.
`
`Lerner has experience with fact and expert discovery, trials, appeals, dispositive
`
`motions, and Markman hearings. Id.
`
`Mr. Lerner is a member in good standing of the District of Columbia Bar. Id.
`
`at ¶ 2. He has no suspensions or disbarments from practice, nor any application for
`
`admission to practice denied, nor any sanctions or contempt citations. Id. at ¶¶ 3–5.
`
`Mr. Lerner has familiarity with the subject matter and patent at issue in this
`
`proceeding, U.S. Patent No. 6,072,450 (“the ’450 Patent”), including its prosecution
`
`history and the scientific field to which the ’450 Patent is addressed. Lerner Decl. at
`
`¶ 10. In particular, Mr. Lerner has been advising the Petitioner throughout the instant
`
`IPR proceeding, and has thereby developed a thorough understanding of the ’450
`
`Patent, the relevant art, and scientific field. Id. Mr. Lerner is also familiar with the
`
`U.S. Patents and subject matter at issue in related proceedings IPR2019-01668 and
`
`IPR2020-00320, id., and Petitioner is requesting that the Board admit Mr. Lerner
`
`pro hac vice in those proceedings as well.
`
`Mr. Lerner has read and will comply with the Office Patent Trial Guide and
`
`the Board’s Rules of Practices for Trials set forth in Part 42 of Title 37, C.F.R., and
`
`he agrees to 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). Id.
`
`- 2 -
`
`
`
`
`
`IPR2020-00140
`
`at ¶¶ 6–7. Mr. Lerner has not applied to appear pro hac vice in any other proceeding
`
`before the Office within the last three (3) years. Id. at ¶ 8.
`
`III. Analysis
`The facts contained in the Statement of Facts above, and contained in the
`
`Lerner Declaration, establish that there is good cause to admit Mr. Lerner pro hac
`
`vice in this proceeding, under 37 C.F.R. § 42.10. Lead counsel is a registered
`
`practitioner, Mr. Lerner is an experienced litigation attorney, and Mr. Lerner has an
`
`established familiarity with the subject matter at issue in this proceeding.
`
`IV. Conclusion
`For the foregoing reasons, Petitioner respectfully requests that the Board
`
`admit Jeffrey H. Lerner pro hac vice in this proceeding.
`
`Date: August 20, 2020
`
`
`Respectfully submitted,
`
`By: /David A. Garr/
`David A. Garr
` Registration No. 74,932
`Peter P. Chen
` Registration No. 39,631
`Grant D. Johnson
`Registration No. 69,915
`COVINGTON & BURLING LLP
`
`Attorneys for Petitioner
`
`
`- 3 -
`
`
`
`
`
`IPR2020-00140
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the above document was served on
`
`August 20, 2020, by filing this document through the Patent Trial and Appeal Board
`
`End to End System as well as delivering a copy via electronic mail upon the
`
`following attorneys of record for the Patent Owner:
`
`Neil Rubin
`Kent Shum
`Reza Mirzaie
`RUSS AUGUST & KABAT
`nrubin@raklaw.com
`kshum@raklaw.com
`rmirzaie@raklaw.com
`
`Date: August 20, 2020
`
`
`
`
`
`
`
`/David A. Garr/
`David A. Garr
`Registration No.: 74,932
`
`
`
`