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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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`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,
`Petitioners
`
`v.
`
`SISVEL S.P.A.,
`Patent Owner
`
`
`
`
`Case IPR2021-00580
`Patent No. 7,869,396
`
`
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`PATENT OWNER’S RESPONSE TO PETITIONERS’ OPPOSITION TO
`PATENT OWNER’S MOTION FOR PRO HAC VICE ADMISSION
`
`Under 35 U.S.C. § 42.120
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`
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`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`Submitted Electronically via PTAB E2E
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`
`
`IPR2021-00580
`U.S. Patent No. 7,869,396
`Claims 1-10
`
`
`Table of Contents
`I. ARGUMENT ....................................................................................................... 2
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`II. CONCLUSION .................................................................................................... 7
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`ii
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`TABLE OF AUTHORITIES
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`
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`IPR2021-00580
`U.S. Patent No. 7,869,396
`Claims 1-10
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`Cases Page(s)
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`Satco Products, Inc. v. Seoul Semiconductor Co., LTD.,
`IPR2020-00836, Paper 23 at 2-3 PTAB Feb. 15, 2021) ....................................5, 6
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`iii
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`IPR2021-00580
`U.S. Patent No. 7,869,396
`Claims 1-10
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`
`TABLE OF EXHIBITS
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`2004
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`2005
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`2006
`2007
`2008
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`2009
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`2010
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`Exhibit Description
`2001
`Expert Declaration of Regis Bates
`2002
`Settlement Agreement dated August 4, 2021
`2003
`Affidavit of Mr. Neil Benchell in Support of Patent Owner’s Motion
`for Pro Hac Vice Admission
`Affidavit of Ms. Stephanie Berger in Support of Patent Owner’s
`Motion for Pro Hac Vice Admission
`Affidavit of Mr. Andrew DeMarco in Support of Patent Owner’s
`Motion for Pro Hac Vice Admission
`Second Expert Declaration of Regis Bates
`Settlement Agreement dated December 1, 2021 (Confidential)
`Email- January 31, 2021, Request for Motion to Strike Part of Neil
`Benchell PHV Opposition
`Email - February 2, 2022 Board’s Response and Denial to Motion to
`Strike
`Declaration of Ms. Feng Xu in Support of Patent Owner’s Response to
`Petitioners’ Opposition to Patent Owner’s Motion for Pro Hac Vice
`Admission
`Declaration of Mr. Andrew DeMarco in Support of Patent Owner’s
`Response to Petitioners’ Opposition to Patent Owner’s Motion for Pro
`Hac Vice Admission
`
`2011
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`iv
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`IPR2021-00580
`U.S. Patent No. 7,869,396
`Claims 1-10
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`On January 11, 2022, the Board held a hearing on Petitioners’ request to file
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`an Opposition to the Pro Hac Vice admission of Patent Owner’s Neil Benchell.
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`(Paper 34 at 1). Petitioners argued that Mr. Benchell had submitted a false affidavit
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`in support of his application for pro hac vice admission by failing to disclose he had
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`been placed on a list of attorneys who were ineligible for pro hac vice admission in
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`the District of New Jersey for failing to contribute to the New Jersey Lawyer’s Fund
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`in 2014 and 2020 (“Lawyers’ Fund list”). (Paper 34 at 1; See also Paper 36 at 1.)
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`During the hearing, Patent Owner’s counsel was questioned about Mr.
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`Benchell’s knowledge of the list at the time he signed the affidavit. It was revealed
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`that Mr. Benchell was unaware of being placed on any such lists until Petitioners
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`made him aware of it in preparation for their motion. (Paper 34 at 2.) Patent
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`Owner’s counsel also made clear that upon receiving notice, Mr. Benchell paid the
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`overdue amount. (Id.) The Board, on January 20, 2022, authorized Petitioners to
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`file a 7-page opposition to Mr. Benchell’s Pro Hac Vice Admission, and to “submit
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`exhibits that relate to the ineligibility list and to the circumstances of Mr. Benchell’s
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`placement on and removal from the list.” (Id. at 2-3.)
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`Petitioners filed their Opposition Brief on January 27, 2022, which fails to
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`show that Mr. Benchell filed a false affidavit. Rather, Petitioners argue—without
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`any support—that being placed on the Lawyer’s Fund list is a public admonition
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`equivalent to being sanctioned by the Court. Petitioners also argue that even if Mr.
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`1
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`
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`IPR2021-00580
`U.S. Patent No. 7,869,396
`Claims 1-10
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`Benchell did not know he was placed on this list, he should have known about this
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`public admonition and therefore that he had been sanctioned. Petitioners also appear
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`to argue in the alternative that placement on the list is a suspension.1
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`I.
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`ARGUMENT
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`The crux of Petitioners’ argument is that as a result of being placed on the
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`Lawyers’ Fund list, Mr. Benchell somehow, despite not knowing about his
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`placement or even about the existence of the list, filed a false affidavit. Petitioners
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`then make the baseless claim that being placed on the Lawyers’ Fund list is somehow
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`a sanction or suspension that was never disclosed in Mr. Benchell’s affidavit. Even
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`if true, which it is not, Mr. Benchell had no knowledge of being placed on any list
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`in New Jersey. It would have been impossible for him to disclose this to the Board
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`and therefore he could not have filed a false affidavit.
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`1 Patent Owner separately emailed the Board on January 31, 2021, requesting
`permission to file a motion to strike an additional section of Petitioners’ opposition
`that was beyond the scope of the Board’s order. (Ex. 2008.) The Board responded
`by email on February 2, 2022, denying the request for a motion to strike but stating
`that “the Board will not consider issues that the January 20, 2022, Order did not
`specifically authorize Petitioner to address.” (Ex. 2009.) Pursuant to the Board’s
`February 2, 2022, email, Patent Owner understands that the Board will not consider
`arguments beyond the issues related to the Lawyers’ Fund list. Should the Board
`decide that additional briefing is necessary, Patent Owner is prepared to provide it.
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`2
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`IPR2021-00580
`U.S. Patent No. 7,869,396
`Claims 1-10
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`When Patent Owner first requested the basis for Petitioners’ allegation that
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`Mr. Benchell submitted a false affidavit, Petitioners alleged that “the statement that
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`Mr. Benchell ‘has never had an application for admission to practice before any court
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`or administrative body denied’ is false in view of the New Jersey listings.” (Ex.
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`1023 at 2.)
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`As Patent Owner explained to Petitioners by email, Mr. Benchell has never
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`been denied pro hac vice admission in any jurisdiction. (Ex. 1023 at 5.) Petitioners’
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`own assertion, therefore, was false. Petitioners now pivot to allege that placement
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`on the list is a sanction, but Mr. Benchell has never been sanctioned by any Court.
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`To be clear, no Court or administrative body ever imposed sanctions or contempt
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`citations against Mr. Benchell. Finally, Mr. Benchell was unaware of being placed
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`on any list for failure to pay the Lawyers’ Fund fee until notified by Petitioners on
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`December 14, 2021. (Ex. 1024 at ¶ 6.)
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`Upon receiving notice from Petitioners, Mr. Benchell immediately contacted
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`the Lawyers’ Fund and payment in full was made on December 17, 2021. (Ex. 1023
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`at 5.) Patent Owner has since confirmed that Mr. Benchell is no longer on the list of
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`attorneys ineligible to file Pro Hac Vice Applications in the District of New Jersey.
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`(Ex. 2010 at ¶ 3.)
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`Although Patent Owner does not accept that being placed on the Lawyers’
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`Fund list is a denial of an application for admission to practice before the District of
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`3
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`IPR2021-00580
`U.S. Patent No. 7,869,396
`Claims 1-10
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`New Jersey, Mr. Benchell still could not have stated this information in his affidavit
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`since he had no knowledge of being put on this list until Petitioners brought this to
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`his attention, well after signing the affidavit in this proceeding. This undisputed
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`history demonstrates that Petitioners’ claim that Mr. Benchell signed a false affidavit
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`on this basis is itself fabricated.
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`Petitioners’ contortions of fact leading to their conclusion that Mr. Benchell
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`should have known about being placed on the Lawyers’ Fund list are likewise
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`unavailing. (Paper 36 at 4-5.) Petitioners come to their conclusions by claiming Mr.
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`Benchell knew he was required to pay into the Lawyers’ Fund every year that he
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`represents a client in New Jersey. (Id. at 4.) Missing from Petitioners’ argument is
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`the date when that fee is assessed or the ramifications for failing to pay the fee. In
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`fact, Mr. Benchell concluded his representation on March 16, 2020, before the fee
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`was assessed for the 2020 year, and was therefore unaware of the need to pay for the
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`additional year. The information Petitioners rely on to say Mr. Benchell should have
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`known the fee was due, still does not lead to knowledge that his affidavit was false
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`given that Mr. Benchell has explained that he was unaware the fee was due in 2020.
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`Petitioners also argue that being placed on the Lawyers’ Fund list is a public
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`admonishment. (Paper 36 at 1, 5.) Petitioners simply state this as an accepted fact
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`but provide no support that being on this administrative list is a public
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`admonishment. Petitioners’ repeated use of the word “admonishment” does not
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`4
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`IPR2021-00580
`U.S. Patent No. 7,869,396
`Claims 1-10
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`make it so. Petitioners likewise appear to claim without support that placement on
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`the list is also a suspension, but this too has no basis. (Id. at 4.)
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`Unlike Petitioners, Patent Owner sought to definitively answer this question
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`and was told in no uncertain terms that being placed on the Lawyers’ Fund list is not
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`a public admonishment or sanction. Counsel for Patent Owner contacted the New
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`Jersey Office of Attorney Ethics, The New Jersey Lawyer’s Fund for Client
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`Protection and the Clerk for the Supreme Court of New Jersey. All confirmed that
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`being on the Lawyers’ Fund list is an administrative matter, not a public
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`admonishment or sanction. (Ex. 2011 at ¶¶ 4-5.)
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`Petitioners’ goal here is clear. In an attempt to fit the facts to a prior case
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`where an attorney’s Pro Hac Vice Admission was revoked, Petitioners need to show
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`that being placed on the Lawyers’ Fund list is tantamount to a sanction, but it is not.
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`Mr. Benchell’s placement on the Lawyers’ Fund list is an administrative matter and
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`demonstrably different from the attorney in the only case cited by Petitioners, Satco
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`Products, Inc. v. Seoul Semiconductor Co., LTD., IPR2020-00836, Paper 23 at 2-3
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`PTAB Feb. 15, 2021) (denying an attorney’s pro hac vice admission on the grounds
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`that the attorney failed to disclose that he had been “disciplined with a ‘Public
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`reproval with/duties’” when the State Bar of California specifically defines public
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`reprovals as a sanction.) Further, there was no dispute that the attorney in Satco was
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`5
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`
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`IPR2021-00580
`U.S. Patent No. 7,869,396
`Claims 1-10
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`aware of the public reproval in that case as opposed to Mr. Benchell’s lack of
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`knowledge about the Lawyers’ Fund list here. (Id. at 3-4.)
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`None of this supports anything Petitioner seeks to argue, because the fact still
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`remains that Mr. Benchell had no knowledge of being placed on the list. Thus, Mr.
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`Benchell’s affidavit could not have been false.
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`Ironically, Petitioners even oppose Mr. Benchell’s Pro Hac Vice Admission
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`when he fully disclosed being on the Lawyers’ Fund list in his affidavit for Pro Hac
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`Vice Admission in IPR2021-00640. (Paper 36 at 5-6.) Petitioners’ opposition to
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`this new application proves false Petitioners’ assertion that “Mr. Benchell might still
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`have been able to be admitted PHV in this proceeding if he had acknowledged and
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`explained these facts.” (Paper 36 at 4.)
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`Ultimately, Petitioners waste the Board’s and Patent Owner’s time and
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`resources by bringing this baseless motion. It started with a false allegation about
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`Mr. Benchell’s affidavit, when instead what really happened was an unknown,
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`administrative oversight to pay a state bar fee that was due after the relevant case
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`was dismissed. The fact that: (1) that explanation, (2) the prompt payment of the
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`fee, and (3) Mr. Benchell’s subsequent candor in later pro hac applications, all failed
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`to satisfy Petitioners, and instead Petitioners persisted with a Motion with no
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`legitimate basis, all demonstrate exactly who has failed to approach this matter in
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`good faith and candor.
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`6
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`IPR2021-00580
`U.S. Patent No. 7,869,396
`Claims 1-10
`
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`II.
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`CONCLUSION
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`For the foregoing reasons, Petitioners’ Opposition to Mr. Benchell’s Pro
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`Hac Vice Admission should be denied.
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`Dated: February 3, 2022
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`DEVLIN LAW FIRM LLC
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`By: /s/ Timothy Devlin
`Timothy Devlin
`Reg. No. 41706
`1526 Gilpin Avenue
`Wilmington, DE 19806
`Phone: (302) 449-9010
`TD-PTAB@devlinlawfirm.com
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`7
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`CERTIFICATE OF SERVICE
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`The undersigned attorney hereby certifies that all counsel of record who are deemed to
`have consented to electronic service are being served with a copy of this document via electronic
`filing on February 3, 2022.
`
`
`Backup Counsel for Honeywell International, Inc.
`
`Benjamin E. Weed
`Reg. No. 65,939
`K&L GATES LLP
`70 W. Madison Street, Suite 3100
`Chicago, IL 60602
`benjamin.weed.PTAB@klgates.com
`T: (312) 781-7166
`F: (312) 827-8152
`
`Erik J. Halverson
`Reg. No. 73,552
`K&L GATES LLP
`70 W. Madison St., Suite 3100
`Chicago, IL 60602
`erik.halverson@klgates.com
`T: (312) 807-4240
`F: (312) 345-8529
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`Brian Paul Bozzo
`Reg. No. 77,190
`K&L GATES LLP
`210 Sixth Ave.
`Pittsburgh, PA 15222
`brian.bozzo@klgates.com
`T: (412) 355-8235
`F: (412) 355-6501
`
`Backup Counsel for TCL Communication Technology Holdings Limited,
`TCT Mobile International Limited, TCT Mobile, Inc., TCT Mobile (US)
`Inc., TCT Mobile (US) Holdings, Inc.
`
`Jeremy D. Peterson
`(Reg. No. 52,115)
`jeremy.peterson@pvuslaw.com
`PV Law LLP
`5335 Wisconsin Avenue, N.W.
`Suite 440
`Washington, DC 20015-2052
`Phone: 202-371-6861
`Fax: 202-888-3163
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`
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`Bradford A. Cangro
`(Reg. No. 58,478)
`bradford.cangro@pvuslaw.com
`PV Law LLP
`5335 Wisconsin Avenue, N.W.
`Suite 440
`Washington, DC 20015-2052
`Phone: 202-371-6861
`Fax: 202-888-3163
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`
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`IPR2021-00580
`U.S. Patent No. 7,869,396
`Claims 1-10
`
`
`Backup Counsel for Cradlepoint, Inc
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`Jacob K. Baron (Reg. No. 48,961)
`HOLLAND & KNIGHT LLP
`10 St. James Avenue, 11th Floor
`Boston, MA 02116
`jacob.baron@hklaw.com
`Phone: (617) 305-2102
`Fax: (617) 532-6850
`
`Allison M. Lucier (Reg. No. 70,205)
`HOLLAND & KNIGHT LLP
`10 St. James Avenue, 11th Floor
`Boston, MA 02116
`allison.lucier@hklaw.com
`Phone: (617) 305-2132
`Fax: (617) 532-6850
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`Lead Counsel
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`Backup Counsel
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`Counsel for Sierra Wireless, Inc.2
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`Kourtney Mueller Merrill
`(Reg. No. 58,195)
`KMerrill@perkinscoie.com
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`Roderick O’Dorisio
`(Reg. No. 75,363)
`RODorisio@perkinscoie.com
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`PERKINS COIE LLP
`1900 Sixteenth Street, Suite 1400
`Denver, Colorado 80202
`Phone: 303-291-2300
`Fax: 303-291-2400
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`Amanda Tessar
`(Reg. No. 53,683)
`ATessar@perkinscoie.com
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`
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`PERKINS COIE LLP
`1900 Sixteenth Street, Suite 1400
`Denver, Colorado 80202
`Phone: 303-291-2300
`Fax: 303-291-2400
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`Backup Counsel for Thales DIS AIS Deutschland GmbH
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`IPR2021-00580
`U.S. Patent No. 7,869,396
`Claims 1-10
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`Meredith Martin Addy
`Reg. No. 37,883
`meredith@addyhart.com
`
`ADDYHART P.C.
`10 Glenlake Parkway
`Suite 130
`Atlanta, Georgia 30328
`Phone: 312.320.4200
`Fax: 312.264.2547
`
`Robert P. Hart
`Reg. No. 35,184
`robert@addyhart.com
`
`Gregory B. Gulliver
`Reg. No. 44,138
`gbgulliver@addyhart.com
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`ADDYHART P.C.
`401 Michigan Ave.
`Suite 1200-1
`Chicago, Illinois 60611
`Phone: 312.834.7701
`Fax: 312.264.2547
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` /s/ Timothy Devlin
` Timothy Devlin
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`3
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