`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________________
`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________________________
`
`
`HEWLETT PACKARD ENTERPRISE CO.,
`ARUBA NETWORKS, LLC,
`CISCO SYSTEMS, INC.,
`APPLE INC.,
`
`Petitioners,
`
`- vs. -
`
`BillJCo, LLC,
`
`Patent Owner.
`
`_____________________________
`
`IPR2022-00426
`U.S. Patent No. 8,761,804
`_____________________________
`
`
`PETITIONERS’ UNOPPOSED MOTION FOR PRO HAC VICE
`ADMISSION OF ROSE CORDERO PREY UNDER 37 C.F.R. § 42.10
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`PETITIONER’S UPDATED EXHIBIT LIST
`
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`Exhibit Description
`1001
`U.S. Patent No. 8,761,804 (“the ’804 Patent”)
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
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`1010
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`1011
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`1012
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`1013
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`Prosecution History of U.S. Patent No. 8,761,804
`
`Curriculum Vitae of Darrell D.E. Long
`
`Declaration of Darrell D.E. Long, dated January 14, 2022
`
`U.S. Patent No. 7,123,926 (“Himmelstein”)
`
`U.S. Patent Application Publication No. 2003/0014181 (“Myr”)
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`U.S. Patent No. 6,327,535 (“Evans”)
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`U.S. Patent No. 8,600,341
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`Prosecution History of U.S. Patent No. 8,600,341
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`U.S. Patent Application Publication No. 2007/0030824 (“Ribaudo”)
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`BillJCo, LLC v. Apple Inc., Case No. 6:21-cv-528, Apple, Inc.’s
`Opening Claim Construction Brief, Dkt. No. 32 (W.D. Tex. Dec. 2,
`2021)
`
`BillJCo, LLC v. Apple Inc., Case No. 6:21-cv-528, Agreed
`Scheduling Order, Dkt. No. 27 (W.D. Tex. Sept. 11, 2021)
`
`BillJCo, LLC v. Cisco Sys., Inc., Case No. 2:21-cv-181, BillJCo, LLC
`v. Hewlett-Packard Enterprise Co. and Aruba Networks, Case No.
`2:21-cv-183, Docket Control Order, Dkt. No. 44 (E.D. Tex. Oct. 25,
`2021)
`
`1014
`
`Dufresne, A., et al., How Reliable are Trial Dates Relied on by the
`PTAB in the Fintiv Analysis? (Oct. 29, 2021)
`
`i
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`
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`IPR2022-00426
`U.S. Patent No. 8,761,804
`
`
`Exhibit Description
`1015
`Fintiv, Inc. v. Apple Inc., Case No. 6:21-cv-926-ADA, Order (Oct. 4,
`2021)
`
`BillJCo, LLC v. Cisco Sys., Inc., Case No. 2:21-cv-181, Cisco
`Systems Inc.’s Motion to Transfer Venue, Dkt. No. 36 (E.D. Tex.
`Oct. 11, 2021)
`
`BillJCo, LLC v. Hewlett-Packard Enterprise Co. and Aruba
`Networks, Case No. 2:21-cv-183, Hewlett-Packard Enterprise
`Company’s and Aruba Networks, LLC’s Opposed Motion to Transfer
`Venue to the Northern District of California Under 28 U.S.C. § 1404,
`Dkt. No. 34 (E.D. Tex. Oct. 4, 2021)
`
`BillJCo, LLC v. Apple Inc., Case No. 6:21-cv-528, Defendant’s
`Motion to Dismiss Plaintiff’s Claims of Willful Infringement as to
`Each Patents-in-Suit and Plaintiff’s Claims of Indirect Infringement
`as to Each Patents-in-Suit, Dkt. No. 16 (W.D. Tex. Aug. 2, 2021)
`
`BillJCo, LLC v. Apple Inc., Case No. 6:21-cv-528, Apple Inc.’s
`Opposed Motion to Transfer Venue Pursuant to 28 U.S.C. § 1404,
`Dkt. No. 26 (W.D. Tex. Sept. 10, 2021)
`
`Curriculum Vitae listing Prior Litigation Engagements for Darrell
`D.E. Long
`
`Jackson, C., Radar and LORAN, Popular Electronics (July 1959)
`
`Letter from Krishnan Padmanabhan, dated January 14, 2022
`
`Declaration of Rose Cordero Prey In Support of Motion to Appear Pro
`Hac Vice
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`
`
`ii
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`
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`Pursuant to 37 C.F.R. § 42.10, and pursuant to the authorization provided by
`
`the United States Patent and Trademark Office’s Patent Trial and Appeal Board
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`(“Board”) in Paper Number 5, dated January 26, 2022 (“the Notice”), Petitioners
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`submit this unopposed motion for Rose Cordero Prey to appear pro hac vice.
`
`Petitioners respectfully request the Board to recognize Ms. Prey as counsel pro hac
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`vice during this proceeding and demonstrate good cause for doing so as shown
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`below.
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`I.
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`TIME FOR FILING
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`Pursuant to the authorization provided in the Notice, this motion for pro hac
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`vice admission is being filed no sooner than twenty one (21) days after service of the
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`petition. The requisite fees for this motion have been paid.
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`II.
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`STATEMENT OF FACTS
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`Pursuant to the Notice, the following statements of facts show that good cause
`
`exists for the Board to recognize Ms. Prey pro hac vice.
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`Petitioners’ counsel for this proceeding, Andrew R. Sommer, is a registered
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`practitioner (Reg. No. 53,932).
`
`Ms. Prey is an experienced litigation attorney with more than fifteen (15)
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`years of patent litigation experience. Ex. 1035 at ¶ 8. She has been involved in
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`numerous patent infringement cases in federal district courts across the country. Id.
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`at ¶ 8.
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`
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`1
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`
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`IPR2022-00426
`U.S. Patent No. 8,761,804
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`Ms. Prey is a member in good standing in the bar of New York, the U.S. Court
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`of Appeals for the Federal Circuit, and several U.S. District Courts. Ex. 1035 at ¶ 1.
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`Ms. Prey has not been suspended or disbarred from practice, has never had
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`any application for admission to practice denied, and has never had any sanctions or
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`contempt citations imposed against her. Ex. 1035 at ¶ 2.
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`Ms. Prey has obtained substantial familiarity with the involved patent, the
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`prior art, and the various issues raised in this proceeding. Ex. 1035 at ¶ 8. Moreover,
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`Ms. Prey has reviewed the involved patent, the Petition, the prior art, and all other
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`cited materials. Id. She was involved in the preparation of the Petition. Id. at ¶ 8.
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`Given her extensive patent litigation experience and familiarity with the Petition, the
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`cited materials, and the patented technology, Ms. Prey has established familiarity
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`with the subject matter at issue in this proceeding. Id.
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`Ms. Prey has 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 Title 37 of the
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`Code of Federal Regulations, and she agrees to be subject to the USPTO Rules of
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`Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq., and to disciplinary
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`jurisdiction under 37 C.F.R. § 11.19 (a). Ex. 1035 at ¶¶ 5-6.
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`In the last three years, she has appeared pro hac vice before the Board in the
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`following matters: Hewlett Packard Enterprise Company v. Intellectual Ventures II
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`LLC, Case No. IPR2021-01376; Hewlett Packard Enterprise Company v.
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`2
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`
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`IPR2022-00426
`U.S. Patent No. 8,761,804
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`Intellectual Ventures II LLC, Case No. IPR2021-01377; Hewlett Packard Enterprise
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`Company v. Intellectual Ventures II LLC, Case No. IPR2021-01378; Hewlett
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`Packard Enterprise Company v. Intellectual Ventures II LLC, Case No. IPR2022-
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`00096; Hewlett Packard Enterprise Company v. Intellectual Ventures II LLC, Case
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`No. IPR2022-00211. Id. at ¶ 7. Ms. Prey has previously appeared pro hac vice in
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`Micron Technology, Inc. v. Massachusetts Institute of Technology, Case No.
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`IPR2015-01087. Id.
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`Given Ms. Prey’s familiarity with the subject matter at issue in this
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`proceeding, Petitioners respectfully submit that they have shown good cause for the
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`Board to recognize Ms. Prey as counsel pro hac vice during this proceeding.
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`III. DECLARATION OF INDIVIDUAL SEEKING TO APPEAR
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`This Motion is accompanied by the Declaration of Ms. Prey.
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`
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`Date: May 4, 2022
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`Respectfully submitted,
`MERCHANT & GOULD P.C.
`
`By: /Jeffrey D. Blake/
`Jeffrey D. Blake
`MERCHANT & GOULD P.C.
`191 Peachtree Street NE
`Suite 3800
`Atlanta, GA 30303
`Phone: 404-954-5040
`Fax: 612-332-9081
`jblake@merchantgould.com
`Reg. No. 58,884
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`Counsel for Petitioners
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`3
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`
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`CERTIFICATE OF SERVICE
`The undersigned certifies that a true and correct copy of Petitioners’ Motion
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`IPR2022-00426
`U.S. Patent No. 8,761,804
`
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`for Pro Hac Vice Admission of Rose Cordero Prey under 37 C.F.R. § 42.10 has been
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`served on the Patent Owner via email to Patent Owner by serving the email
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`correspondence addresses of record as follows:
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`Saul Ewing Arnstein & Lehr LLP
`Centre Square West
`1500 Market Street, 38th Floor
`Philadelphia PA 19102-2186
`brian.michalek@saul.com
`joseph.kuo@saul.com
`brian.landry@saul.com
`IPGroupMailbox@saul.com
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`
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`
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`By: /Jeffrey D. Blake/
`Jeffrey D. Blake
`Reg. No. 58,884
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`Counsel for Petitioners
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`
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`Date: May 4, 2022
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`4
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