UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PETITIONER
`
`V.
`
`DISH NETWORK L.L.C.,
`DISH NETWORK L.L.C.,
`PETITIONER
`V.
`BROADBAND ITV, INC.,
`BROADBAND ITV, INC.,
`PATENT OWNER
`___________________
`CASE IPR2020-001267
`
`PATENT OWNER
`
`CASE IPR2020-001267
`
`U.S. PATENT NO. 10,028,026
`U.S. PATENT NO. 10,028,026
`
`PETITIONER’S MOTION FOR ADMISSION PRO HAC VICE OF
`
`PETITIONER’S MOTION FOR ADMISSION PRO HAC VICE OF
`CLEMENT ROBERTS PURSUANT TO 37 C.F.R. § 42.10
`CLEMENT ROBERTS PURSUANT TO 37 C.F.R. § 42.10
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PETITIONER
`
`V.
`
`DISH NETWORK L.L.C.,
`DISH NETWORK L.L.C.,
`PETITIONER
`V.
`BROADBAND ITV, INC.,
`BROADBAND ITV, INC.,
`PATENT OWNER
`___________________
`CASE IPR2020-001267
`
`PATENT OWNER
`
`CASE IPR2020-001267
`
`U.S. PATENT NO. 10,028,026
`U.S. PATENT NO. 10,028,026
`
`PETITIONER’S MOTION FOR ADMISSION PRO HAC VICE OF
`
`PETITIONER’S MOTION FOR ADMISSION PRO HAC VICE OF
`CLEMENT ROBERTS PURSUANT TO 37 C.F.R. § 42.10
`CLEMENT ROBERTS PURSUANT TO 37 C.F.R. § 42.10
`
`
`
`EXHIBIT LIST
`
`Intentionally omitted
`
`Description
`Exhibit
`1001 U.S. Patent No. 10,028,026 (“’026 patent”)
`1002 Declaration of Dr. Samuel Russ
`1003
`Intentionally omitted
`1004 Curriculum Vitae for Dr. Samuel Russ
`1005 U.S. Patent No. 8,434,118 (“Gonder”)
`1006 U.S. Patent No. 7,159,233 (“Son”)
`1007 U.S. Patent Application Publication No. 2001/0030667 (“Kelts”)
`1008
`Intentionally omitted
`1009
`1010
`Intentionally omitted
`1011 CableLabs Video-On-Demand Content Specification Version 1.1
`1012 Declaration of Christie Poland
`1013 U.S. Patent No. 7,631,336 (“’336 patent”)
`1014
`Intentionally omitted
`1015 Scheduling Order, Broadband iTV, Inc v. DISH Network, L.L.C., Case
`No. 6:19-cv-716-ADA (W.D. Tex. Apr. 10, 2020), ECF No. 34
`1016 Civil Minutes-General, DivX, LLC v. Netflix, Inc., et al., 19-cv-1602-
`PSG (DFMx) (C.D. Cal. May 11, 2020)
`1017 U.S. Patent No. 7,590,997 (“’997 patent”)
`1018 File History of U.S. Patent No. 10,028,026 (“’026 File History”)
`1019 Claim Construction Order, Broadband iTV, Inc. v. Hawaiian Telcom,
`
`-ii-
`
`
`
`Inc., et al., 14-00169 ACK-RLP (D. Haw. June 24, 2015)
`1020 U.S. Patent Application Publication No. 2002/0138619 (“Ramaley”)
`1021 Western District of Texas Order RE: COVID-19 dated May 8, 2020
`1022 Unified Patent’s Q1 2020 Patent Dispute Report (March 31, 2020)
`1023
`Judge Alan D. Albright Patent Statistics
`1024 Excerpt from File History for related U.S. Patent Application No.
`12/632,745
`1025 Family Chart for the ’997 patent
`1026 Broadband iTV, Inc.’s Preliminary Infringement Contentions and
`Identification of Priority Dates cover pleading dated April 30, 2020
`1027 Broadband iTV, Inc.’s Claim Chart for U.S. Patent No. 10,028,026
`(Ex. 1) dated April 30, 2020
`1028 Highlighted Claim 1 for ‘026 Patent
`1029
`Intentionally omitted
`Comcast’s 2004 Annual Report – Excerpts
`http://www.annualreports.com/HostedData/
`AnnualReportArchive/c/NASDAQ_CMCSA_2004.pdf
`1031 Time Warner, Inc.’s Form 10-K for the year 2003 – Excerpts
`http://getfilings.com/o0000950144-04-002438.html
`1032 AT&T U-Verse Wikipedia page
`https://en.wikipedia.org/wiki/AT%26T_U-verse.
`1033 Western District of Texas Order RE: COVID-19 dated June 18, 2020
`1034 Western District of Texas Order RE: COVID-19 dated July 2, 2020
`1035 Minute Entry, MV3 Partners LLC v. Roku, Inc., No. 6:18-cv-00308-
`ADA (W.D. Tex., Jun. 15, 2020), ECF 293
`
`1030
`
`1036
`
`Intentionally omitted
`
`-iii-
`
`
`
`1037
`
`Intentionally omitted
`
`1038
`
`1039
`
`1040
`
`1041
`
`Scientific-Atlanta Launches Explorer 4200 Set-Top,
`https://www.tvtechnology.com/equipment/scientificatlanta-launches-
`explorer-4200-settop.
`
`Samsung gains first OpenCable Certification on two-way digital
`television, https://www.tvtechnology.com/news/
`samsung-gains-first-opencable-certification-on-
`twoway-digital-television
`
`The Razor V3 was launched 14 years ago: Here’s why it still has a
`place in our hearts, https://www.androidauthority.com/motorola-razr-
`v3-888664/
`
`CableLabs OpenCable - www.opencable website Way Back Machine
`capture, https://web.archive.org/web/20060326111508/
`http://www.opencable.com/ocap/ocap.html
`
`1044
`
`1042
`
`Google pays the price to capture online video zeitgeist, Way Back
`Machine capture, https://web.archive.org/web/20070901031352/
`http://www.eurekastreet.com.au/article.aspx?aeid=1837
`1043 Mpeg-2 Wikipedia page, https://en.wikipedia.org/wiki/MPEG-2
`Sony’s PS3 makes U.S. debut to long lines, short supplies,
`https://usatoday30.usatoday.com/tech/gaming/2006-11-17-ps3-
`debut_x.htm
`1045 The Federal Circuit Bar Association Model Patent Jury Instructions,
`last edited May 2020
`1046 CableLabs Specifications Library,
`https://www.cablelabs.com/specifications
`1047 Merriam-Webster’s definition of “effect”
`1048 Document Details from CableLabs website re CableLabs Video-On-
`Demand Content Specification Version 1.1
`1049 Declaration of Will Melehani in support of petitioner’s motion for
`admission Pro Hac Vice
`
`-iv-
`
`
`
`1050 Declaration of Clement Roberts in support of petitioner’s motion for
`admission Pro Hac Vice
`
`-v-
`
`
`
`I.
`
`INTRODUCTION
`Pursuant to 37 C.F.R. § 42.10 and the authorization provided by the Board
`
`(see Paper 4), Petitioner DISH Network L.L.C., Inc. (“Petitioner”) respectfully
`
`requests that the Board admit Clement Roberts pro hac vice in this proceeding.
`
`II.
`
`STATEMENT OF FACTS
`Pursuant to 37 C.F.R. § 42.10(c), 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 accompanying Declaration of Clement Roberts in
`
`Support of Petitioner’s Motion for Admission Pro Hac Vice (Ex. 1050 “Roberts
`
`Declaration”), establish good cause to admit Mr. Roberts pro hac vice in this
`
`proceeding.
`
`Lead counsel Alyssa Caridis is a registered practitioner.
`
`-1-
`
`
`
`Clement Roberts is an experienced litigation attorney. Mr. Roberts has been
`
`a litigating attorney for about twenty years, with a primary focus on patent litigation.
`
`Roberts Declaration ¶ 1. Mr. Roberts is a member in good standing of the California
`
`State Bar, with no suspensions or disbarments from practice, nor any application for
`
`admission to practice denied, nor any sanctions or contempt citations, and is
`
`admitted to practice in the United States Court of Appeals for the Federal Circuit,
`
`and the United States District Courts for the Central, Southern and Northern Districts
`
`of California, As well as the Eastern District of Texas. Id. ¶¶ 1-4.
`
`Mr. Roberts has familiarity with the subject matter at issue in this proceeding
`
`and in the related district court case Broadband iTV, Inc v. DISH Network, L.L.C.,
`
`Case No. 6:19-cv-716-ADA (W.D. Tex., filed December 19, 2019) in which U.S.
`
`Patent Nos. 10,028,026, 10,506,269, 9,998,791, and 9,648,388 were asserted by the
`
`Patent Owner. Id. ¶ 9.
`
`Mr. Roberts has read and will comply with the Office Patent Trial Practice
`
`Guide and the Board’s Rules for Practice for Trials set forth in part 42 of the C.F.R,
`
`and he agrees to be subject to the USPTO Code of Professional Responsibility set
`
`forth in 37 C.F.R. §§ 10.20 et seq., and to disciplinary jurisdiction under 37 C.F.R.
`
`§ 11.19(a). Id. ¶¶ 5-6.
`
`III. ANALYSIS
`The facts contained in the Statement of Facts above, and contained in the
`
`-2-
`
`
`
`Roberts Declaration, establish that there is good cause to admit Mr. Roberts pro hac
`
`vice in this proceeding under 37 C.F.R. § 42.10. Lead counsel is a registered
`
`practitioner, Mr. Roberts is an experienced patent litigation attorney, and Mr.
`
`Roberts has familiarity with the subject matter at issue in this proceeding.
`
`IV. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that the Board
`
`admit Clement Roberts pro hac vice in this proceeding.
`
`Dated: April 27, 2021
`
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`
`/Alyssa Caridis/
`
`Alyssa Caridis
`USPTO Reg. No. 57,545
`Orrick, Herrington & Sutcliffe LLP
`777 South Figueroa Street, Suite 3200
`Los Angeles, CA 90017-5855
`
`Attorney for Petitioner
`
`-3-
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby confirms that the foregoing PETITIONER’S
`
`MOTION FOR ADMISSION PRO HAC VICE OF CLEMENT ROBERTS
`
`PURSUANT TO 37 C.F.R. § 42.10 and associated exhibit was caused to be
`
`served on April 27, 2021 via email upon the following counsel of record for Patent
`
`Owner:
`
`David Alberti (dalberti@feinday.com)
`Sal Lim (slim@feinday.com)
`Hong Lin (hlin@feinday.com)
`Russel Tonkovich (rtonkovich@feinday.com)
`FEINBERG DAY KRAMER ALBERTI LIM TONKOVICH &
`BELLOLI LLP
`
`Michael D. Specht (mspecht-PTAB@sternekessler.com)
`Jason A. Fitzsimmons (jfitzsimmons-PTAB@sternekessler.com)
`Richard M. Bemben (rbemben-PTAB@sternekessler.com)
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`Kevin Greenleaf (kevin.greenleaf@dentons.com)
`DENTONS US LLP
`
`fdalb-bbitv@feinday.com
`
`PTAB@sternekessler.com
`
`/Alyssa Caridis/
`Alyssa Caridis, Reg. No. 57,545
`Orrick, Herrington & Sutcliffe LLP
`777 South Figueroa Street, Suite 3200
`Los Angeles, CA 90017-5855
`Telephone: (213) 629-2020
`Email: A8CPTABDocket@orrick.com
`
`4153-9621-0477
`
`
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