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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`PATENT TRIAL AND APPEAL BOARD
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`CRADLEPOINT, INC., HONEYWELL INTERNATIONAL, INC., SIERRA
`WIRELESS, INC., TCL COMMUNICATION TECHNOLOGY HOLDINGS
`LIMITED, TCT MOBILE INTERNATIONAL LIMITED, TCT MOBILE, INC.,
`TCT MOBILE (US) INC., TCT MOBILE (US) HOLDINGS INC., AND THALES
`DIS AIS DEUTSCHLAND GMBH,
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`Petitioner,
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`v.
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`SISVEL S.P.A.,
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`Patent Owner.
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`_____________________
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`CASE: IPR2021-00580
`U.S. PATENT NO. 7,869,396
`_____________________
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION FOR PRO HAC VICE ADMISSION (PAPER 22)
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`IPR2021-00580
`U.S. Patent No. 7,869,396
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`The Board authorized this Opposition to the Motion for Pro Hac Vice
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`Admission of Mr. Neil Benchell (“Motion”) on January 20, 2022. Paper 34, 3.
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`I.
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`Introduction
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`Admission pro hac vice (“PHV”) is ordinarily a routine matter, so Petitioner
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`initially did not oppose Mr. Benchell’s request for admission PHV here. The facts
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`now compel this opposition, however. Specifically, Petitioner recently discovered
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`that Mr. Benchell submitted a false affidavit in support of his Motion. Mr.
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`Benchell’s affidavit omitted that he was publicly admonished by the New Jersey
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`Supreme Court in 2014, 2020, and 2021 and was declared “ineligible to appear pro
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`hac vice in New Jersey” for purposes of admission and continued appearance in any
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`New Jersey proceeding until he cured his delinquency. Exs. 1015-1017, 1.
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`Knowingly signing a false affidavit is grounds for denial of admission. And,
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`although Mr. Benchell denies knowledge of the falsity, these denials cannot be
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`reconciled with his conduct.
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`As detailed below, Mr. Benchell’s recent behavior in depositions on behalf of
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`Patent Owner also presents concerns about Mr. Benchell’s sworn representation that
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`he has “read and will comply with” the Board’s Rules and the Patent Trial Practice
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`Guide. Ex. 2003, ¶ 4. Petitioner respectfully urges that the Motion be denied.
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`II. Mr. Benchell’s Affidavit Contains Unexplained False Statements
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`“The Board may recognize counsel pro hac vice during a proceeding upon a
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`-1-
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`IPR2021-00580
`U.S. Patent No. 7,869,396
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`showing of good cause.” 37 C.F.R. § 42.10(c) (emphasis added). The requirements
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`for such an admission include an affidavit attesting, inter alia, “[n]o suspensions or
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`disbarments from practice before any court … [and] [n]o sanctions or contempt
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`citations imposed by any court or administrative body.” Unified Patents, Inc. v.
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`Parallel Iron, LLC, IPR2013-00639, Paper 7 at 3 (PTAB Oct. 15, 2013).
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`Mr. Benchell’s affidavit, filed on December 1, 2021, states:1
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`3. I have never been suspended or disbarred from practice before any court
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`or administrative body. No application of mine for admission to practice
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`before any court or administrated [sic] body has ever been denied. No
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`court or administrative body has imposed sanctions or contempt citations
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`against me. I have never had an application for admission to practice
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`before any court or administrative body denied.
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`4. I have read and will comply with the Office Patent Trial Practice Guide
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`and the Board’s Rules of Practice for Trials set forth in part 42 of the C.F.R.
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`Ex. 2003, ¶¶ 3-4. Notably, no mention is made of whether Mr. Benchell has ever
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`been suspended from practice before a court.
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`The State of New Jersey requires that all attorneys appearing PHV file annual
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`statements and make payments to the Trustees of the New Jersey Lawyers’ Fund for
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`Client Protection (the “Fund”). The Fund’s Trustees make “every reasonable effort
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`… to notify all pro hac vice attorneys of their obligations” and, as required by state
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`1 Paper 22. The accompanying affidavit was erroneously filed as Paper 23 and
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`subsequently converted to Exhibit 2003 via Paper 28, which is cited here.
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`-2-
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`IPR2021-00580
`U.S. Patent No. 7,869,396
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`rules, report each attorney who fails to meet these requirements to the New Jersey
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`Supreme Court. E.g., Exs. 1015-1017, 1.
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`Mr. Benchell has repeatedly appeared PHV in New Jersey and submitted
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`declarations most recently in 2012 and 2018 attesting: “I agree to make payment to
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`the [Fund], as provided by Rule 1:28-2(a) of the New Jersey Rules of Court, for any
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`year in which I represent Defendants.” Ex. 1018, ¶ 9; Ex. 1019, ¶ 5 (similar). The
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`district court ordered Mr. Benchell to make these payments as well. Ex. 1020,2 2
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`(“ORDERED that counsel shall make payments to the [Fund], …, for each year in
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`which counsel represents the client in this matter”); Ex. 1021, 2 (similar).
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`Mr. Benchell’s name first appeared in the New Jersey PHV annual
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`ineligibility order in 2014. Ex. 1017, 2. This order states that “each pro hac vice
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`attorney whose name appears on the attached Ineligible List shall be ineligible to
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`appear pro hac vice in New Jersey” and “ineligible for … continued appearance.”
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`Id. at 1. Mr. Benchell’s name was removed by 2015, but Mr. Benchell’s name
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`returned in ineligibility/suspension orders filed in 2020 and again in 2021. Exs.
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`1015, 2; 1016, 2; 1017, 2.
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`2 Mr. Benchell’s motion for admission was opposed there on the basis of alleged
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`“inappropriate and unprofessional conduct,” including “abusive, bullying,
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`obnoxious, and retaliatory behavior unbecoming of an officer of this Court” (Ex.
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`1022, 2), but was granted without discussion of those accusations. Ex. 1020.
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`-3-
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`IPR2021-00580
`U.S. Patent No. 7,869,396
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`Mr. Benchell might still have been able to be admitted PHV in this proceeding
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`if he had acknowledged and explained these facts. Unified, IPR2013-00639, Paper
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`7 at 4 (requiring movant give “a full explanation of the circumstances” if he cannot
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`attest to the Unified factors). But Mr. Benchell did not provide such an explanation;
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`he instead ignored the issue, which is fatal. See Satco Prods., Inc. v. Seoul Viosys
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`Co., Ltd., IPR2020-00836, Paper 23, 4-5 (PTAB Feb. 16, 2021).
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`Just as with Satco, the New Jersey list is a public reproval, which the USPTO
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`recognizes as a sanction. Id. at 4; see also N.J. Ct. R. 1:20(i)(2)(A) (describing “a
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`public admonition” as a “sanction”). Likewise, the declaration of ineligibility for
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`continued appearance cannot be characterized as anything other than a “suspension.”
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`Mr. Benchell has run afoul of Unified. IPR2013-00639, Paper 7 at 3.
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`Petitioner raised its concerns regarding Mr. Benchell’s false affidavit with
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`Patent Owner in mid-December. Patent Owner responded that the 2020 annual fee
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`was assessed after the case where Mr. Benchell had appeared had ended: “Since the
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`case had concluded by the time the fee was assessed the fee was never paid.” Ex.
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`1023, 5. But that is incorrect. Mr. Benchell’s representation in the NASA Machine
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`Tools matter continued until the matter was terminated on March 16, 2020, and Mr.
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`Benchell had declared and been “ORDERED [to] make payments to the [Fund],
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`pursuant to N.J. Court Rule 1:28-2, for each year in which counsel represents the
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`client in this matter”). Ex. 1020, 1-2 (emphasis added). Mr. Benchell should have
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`-4-
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`IPR2021-00580
`U.S. Patent No. 7,869,396
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`therefore been aware that his 2020 fee was still due (as he represented a client in
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`New Jersey in 2020). Patent Owner further stated its position that the New Jersey
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`Supreme Court order “did not result in Mr. Benchell being denied admission” and
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`that Mr. Benchell’s declaration is therefore not false. Ex. 1023, 5. But Mr. Benchell
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`was certainly aware of the New Jersey requirements in 2014 (when he was first
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`admonished and then later became restored), and he failed to identify either the 2014
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`instance or the 2020 or 2021 instances in his affidavit here. See generally Ex. 2003.
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`Patent Owner proceeded to ignore Petitioner’s December 19, 21, and January 3
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`requests for availability for a conference with the Board. See generally Ex. 1023.
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`Mr. Benchell executed yet another affidavit just this past week in IPR2021-
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`00640 (“new affidavit”). Ex. 1024. Mr. Benchell, for the first time, acknowledges
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`in the new affidavit that he was assessed the 2020 fee, but now claims: “I was not
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`informed that this fee was assessed nor was I aware that I was required to pay the
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`fee even though the case in which I was admitted pro hac had been terminated.” Id.
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`at ¶ 5. This statement is at odds with his previous declarations to the New Jersey
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`District Court stating that he was familiar with both the Fund and rule requiring
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`payment every year, and the Fund Trustee’s representation that they made
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`reasonable efforts to provide notice. Mr. Benchell’s further protestations that he has
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`no knowledge of his 2014 delinquency (despite being informed by Petitioner)
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`because he was “never provided any evidence of my being on this list” (id., ¶ 9)
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`-5-
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`IPR2021-00580
`U.S. Patent No. 7,869,396
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`rings hollow. Mr. Benchell declared himself knowledgeable about the Fund and his
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`obligations to secure admission in New Jersey; he cannot now feign ignorance.
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`Moreover, Mr. Benchell’s renewed claim that he has “never been denied pro hac
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`admission nor had any pro hac admissions ever been revoked as a result of being on
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`any 2014 list” (id., ¶ 10) wholesale ignores the New Jersey Supreme Court’s clear
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`directive that Mr. Benchell “shall be ineligible to appear pro hac vice in New Jersey,
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`effective September 29, 2014.” Ex. 1017, 1; see also Exs. 1015, 1016, 1 (similar).
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`Mr. Benchell’s repeated failure to learn from, disclose, and address these
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`delinquencies warrants denial of admission. Satco, IPR2020-00836, Paper 23 at 5.
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`III. Mr. Benchell’s Deposition Conduct also Flaunts the Rules
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`IPRs are generally cordial, due in no small part to the high bar to admission
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`to practice before the USPTO. Mr. Benchell’s conduct at depositions that he has
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`conducted on behalf of Patent Owner represents a sharp departure from these norms.
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`Namely, Mr. Benchell’s repeated badgering of Petitioner’s expert during recent
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`depositions runs afoul of the Trial Practice Guide’s limitations. E.g., Trial Practice
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`Guide Consolidated Nov. 2019 at 136; 77 Fed. Reg. 48,756, 48,772 (Aug. 1, 2012).
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`Mr. Benchell deposed expert Dr. Kakaes in each of IPR Nos. 2021-00580,
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`-00584, and -01099. During these depositions, Mr. Benchell repeatedly raised his
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`voice, mocked the witness, and refused to allow the witness to complete his answers.
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`See, e.g., Exs. 1025, 120:23-133:12, 145:5-151:24; 1026, 104:17-105:10, 113:14-
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`IPR2021-00580
`U.S. Patent No. 7,869,396
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`21, 212:5-21, 234:17-239:3, 244:5-247:3, 267:5-270:9; 1027, 73:3-13, 143:22-
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`145:5, 152:24-153:20, 158:2-160:7, 163:4-164:1; 1028, 55:8-57:10, 87:4-88:3, 94:6-
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`95:1, 136:15-141:7, 209:2-210:3, 216:7-21 (representative examples of Mr.
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`Benchell’s repeated admonishment of Petitioner’s witness during deposition).
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`Petitioner invites the Board to take a few minutes to review portions of the deposition
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`audio recordings,3 excerpts of which are attached as Exhibits 1029-1031, as the
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`written transcripts do not adequately capture Mr. Benchell’s tone.4
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`Just as Mr. Benchell repeatedly failed to comply with New Jersey PHV
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`requirements, Mr. Benchell’s deposition conduct shows a failure to abide by the
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`Board’s requirements and calls into question Mr. Benchell’s affirmation that he has
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`“read and will comply” with the Board’s Rules and Patent Trial Practice Guide.
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`In conclusion, Mr. Benchell’s admission PHV in this proceeding should be
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`denied in view of Mr. Benchell’s false affidavit and his conduct in this proceeding.
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`3 Petitioner first became aware of Mr. Benchell’s tactics during depositions in
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`IPR2020-01099. Petitioner then elected to video subsequent depositions in hopes
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`that doing so would discourage Mr. Benchell’s conduct, but he was undeterred.
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`Complete videos are available for the Board’s review, should the Board so desire,
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`and can be transmitted via FTP, if requested.
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`4 Patent Owner also deposed Dr. Kakaes in IPR Nos. 2020-01157-01162. Ms.
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`Berger, Mr. Benchell’s colleague, took those depositions, and her conduct
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`accorded with the relevant guidance and rules.
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`-7-
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`Dated: January 27, 2022
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`K&L Gates
`4 Embarcadero Center Suite 1200
`San Francisco, CA 94111
`Phone: 650-798-6765
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`IPR2021-00580
`U.S. Patent No. 7,869,396
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`Respectfully submitted,
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` /Erik J. Halverson/
`Back-up Counsel
`Erik J. Halverson, Reg. No. 73,552
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`Attorneys for Petitioner
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`-8-
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`IPR2021-00580
`U.S. Patent No. 7,869,396
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`CERTIFICATE OF SERVICE
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`The undersigned certifies service on the Patent Owner, pursuant to 37 C.F.R.
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`§ 42.6(e), by electronic (e-mail) delivery of a true copy of the foregoing
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION FOR PRO
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`HAC VICE ADMISSION (PAPER 22) and EXHIBITS 1015-1031, to lead and
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`back-up counsel of record for Patent Owner as follows:
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`TD-PTAB@devlinlawfirm.com
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`nbenchell@devlinlawfirm.com
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`sberger@devlinlawfirm.com
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`ademarco@devlinlawfirm.com
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`dlflitparas@devlinlawfirm.com
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`Dated: January 27, 2022
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`By: /Meghan Bright/
`Meghan Bright
`Patent Paralegal
`Perkins Coie LLP
`1201 Third Avenue Suite 4900
`Seattle, WA 98101-3099
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