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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KINGSTON TECHNOLOGY COMPANY, INC.,
`Petitioner,
`
`v.
`
`POLARIS INNOVATIONS LTD.,
`Patent Owner.
`____________
`
`Case IPR2016-01622
`Patent 6,850,414 B2
`____________
`PATENT OWNER POLARIS INNOVATIONS LTD’S
`MOTION FOR PRO HAC VICE ADMISSION
`OF NATHAN NOBU LOWENSTEIN
`UNDER 37 C.F.R. § 42.10(c)
`
`
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`I.
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`RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. § 42.10(c) and the Notice of Filing Date in this
`
`proceeding (Paper 3 at 2), Patent Owner Polaris Innovations LTD (“Patent
`
`Owner”) respectfully requests that the Board admit Nathan Nobu Lowenstein pro
`
`hac vice in this proceeding as back-up counsel.
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`II. GOVERNING LAW, RULES, AND PRECEDENT
`
`Section 42.10(c), 37 C.F.R., provides 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.
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`The Board has further required that a motion for pro hac vice admission be
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`filed in accordance with the “Order - Authorizing Motion for Pro Hac Vice
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`- 1 -
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`
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`Admission” entered in Unified Patents, Inc. v. Parallel Iron, LLC, IPR2013-00639,
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`Paper 7 (P.T.A.B. Oct. 15, 2013) (“United Patents Order”).
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`The United Patents Order requires that such motions (1) “[c]ontain a
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`statement of facts showing there is good cause for the Board to recognize counsel
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`pro hac vice during the proceeding[,]” and (2) “[b]e accompanied by an affidavit
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`or declaration of the individual seeking to appear attesting to the following:”
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`i. Membership in good standing of the Bar of at least one State or the
`District of Columbia;
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`ii. No suspensions or disbarments from practice before any court or
`administrative body;
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`iii. No application for admission to practice before any court or
`administrative body ever denied;
`
`iv. No sanctions or contempt citations imposed by any court or
`administrative body;
`
`v. The individual seeking to appear has read and will comply with the
`Office Patent Trial Practice Guide and the Board's Rules of Practice for
`Trials set forth in part 42 of 37 C.F.R.;
`
`vi. The individual will be subject to the U.S.P.T.O. 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);
`
`vii. All other proceedings before the Office for which the individual has
`applied to appear pro hac vice in the last three (3) years; and
`
`viii. Familiarity with the subject matter at issue in the proceeding.
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`- 2 -
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`
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`III. STATEMENT OF FACTS
`
`Based on the following statement of facts, and supported by the Declaration
`
`of Nathan Nobu Lowenstein, submitted herewith as Exhibit 2005, Patent Owner
`
`requests the pro hac vice admission of Nathan Nobu Lowenstein in this
`
`proceeding:
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`1.
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`Patent Owner’s lead counsel, Kenneth J. Weatherwax (the
`
`undersigned), is a registered practitioner (Reg. No. 54,528).
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`2. Mr. Lowenstein is a partner at the law firm of Lowenstein &
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`Weatherwax LLP (Ex. 2005 ¶ 8), where Patent Owner’s lead counsel
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`Mr. Weatherwax is also a partner.
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`3. Mr. Lowenstein has a power of attorney from Patent Owner Polaris
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`Innovations Limited that has been made of record in this proceeding.
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`See Paper 5.
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`4. Mr. Lowenstein is an experienced litigator, and the majority of his
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`practice has consisted of patent litigation and other patent related
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`matters such as PTAB litigations. Id. at ¶ 9. Representative patent
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`litigations where Mr. Lowenstein has been actively involved as patent
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`litigation counsel include Tessera, Inc. v. Micron Technology, Inc. et
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`al., 2:05-cv-00094-JDL (E.D. Tex.); St. Jude Medical, Inc., et al. v.
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`Access Closure, Inc., 4:08-cv-04101 (W.D. Ark.); Microprocessor
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`- 3 -
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`
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`Enhancement Corp. v. Texas Instruments Inc., 8:08-cv-01123 (C.D.
`
`Cal.); Quantum World Corp. v. Atmel Corp. et al., 2:07-cv-00024
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`(E.D. Tex.). Id.
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`5. Mr. Lowenstein’s experience in post grant patent proceedings
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`includes drafting patent owner responses, taking depositions and
`
`presenting oral arguments before the Board. Id. at ¶ 10.
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`Representative matters where Mr. Lowenstein was actively involved
`
`include Microsoft Corp. v. IpLearn Focus, LLC (IPR2015-00095 thru
`
`-097); matters involving Maxim Integrated Products, Inc. (CBM2014-
`
`00038 thru -041, -00177 thru -00180); matters involving Solocron
`
`Media, LLC (IPR2015-00387 thru -00392, -00349 thru -00350, -
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`00342, -00364, -00376, -00380, -00383); Nissan North America, Inc.
`
`v. Diamond Coating Technologies, LLC (IPR2014-01545 thru -
`
`01548); Hyundai Motor America, Inc. et al. v. Diamond Coating
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`Technologies, LLC (IPR2014-01549, -01553); and Intel Corp. v.
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`Future Link Systems LLC (IPR2016-01398, IPR2016-01401 and
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`IPR2016-1402). Id.
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`6. Mr. Lowenstein has an established familiarity with the subject matter
`
`at issue in this proceeding. Id. at ¶ 15. Mr. Lowenstein has reviewed
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`the Patent at issue, U.S. Patent No. 6,850,414, as well as four other
`
`- 4 -
`
`
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`patents for which Petitioner has filed a Petition for Inter Partes
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`Review against Patent Owner (U.S. Patent Nos. 6,438,057, 7,315,454,
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`7,206,978, and 7,334,150). Id. Mr. Lowenstein has also reviewed the
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`Petitions and the relevant art in the five proceedings. Id. In addition,
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`Mr. Lowenstein materially participated in drafting of the Patent
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`Owner Preliminary Responses in all five proceedings. In sum, Mr.
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`Lowenstein is intimately familiar with the factual and legal issues in
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`these matters. Id.
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`7. Mr. Lowenstein is a member in good standing of the State Bar of
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`California. Id. ¶¶ 1, 2.
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`8. Mr. Lowenstein has never been suspended or disbarred from practice
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`before any court or administrative body. Id. ¶ 3.
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`9.
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`No application of Mr. Lowenstein for admission to practice before
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`any court or administrative body has ever been denied. Id. ¶ 4.
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`10. No sanctions or contempt citations have ever been imposed against
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`Mr. Lowenstein by any court or administrative body. Id. ¶ 5.
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`11. Mr. Lowenstein has read and will comply with the Office Patent Trial
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`Practice Guide and the Board’s Rules of Practice for Trials set forth in
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`part 42 of 37 C.F.R. Id. ¶ 6.
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`- 5 -
`
`
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`12. Mr. Lowenstein understands that he will be subject to the U.S.P.T.O.
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`Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq.
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`and disciplinary jurisdiction under 37 C.F.R. § 11.19(a). Id. ¶ 7.
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`13. Mr. Lowenstein intends to apply, concurrent with this application, to
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`appear pro hac vice in the related matters IPR2016-01621 and
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`IPR2016-01623, as well as two other matters IPR2017-00114 and
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`IPR2017-00116 filed by Petitioner against the Patent Owner in this
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`matter. Id. ¶ 11.
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`14. Mr. Lowenstein is also admitted to appear pro hac vice in the
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`currently pending matters Intel Corp. v. Future Link Systems, LLC,
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`IPR2016-01398, IPR2016-01401 and IPR2016-01402. Id. ¶ 12. He
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`applied to appear pro hac vice in Intel Corp. v. Future Link Systems,
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`LLC, IPR2016-01400, but before the Board ruled on his application
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`institution of review was denied. Id.; see IPR2016-01400, Paper 8
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`(P.T.A.B. Jan. 10, 2017) (decision denying institution).
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`15. Mr. Lowenstein was admitted to appear pro hac vice by this Board in
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`the former matters Microsoft Corp. v. IpLearn Focus, LLC, IPR2015-
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`00095, -00097, in each of which he participated actively from
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`beginning to end, took testimony and defended witnesses in
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`deposition, and presented argument at the oral hearing. See IPR2015-
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`- 6 -
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`
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`00095, Exs. 2010 & 2030 (deposition transcripts) & Paper 32 (oral
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`hearing); IPR2015-00097, Exs. 2008 & 2030 (deposition transcripts)
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`& Paper 32 (oral hearing). Id. ¶ 13.
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`16. Other than matters identified in ¶¶ 13-15, supra, Mr. Lowenstein has
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`not applied to appear pro hac vice in any other proceedings before the
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`U.S.P.T.O. in the last three years. Id. ¶ 14.
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`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION OF
`NATHAN NOBU LOWENSTEIN
`
`The Board may recognize counsel pro hac vice 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. 37 C.F.R. § 42.10(c).
`
`The facts outlined above in the Statement of Facts, and contained in the
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`Declaration of Nathan Nobu Lowenstein (Ex. 2005), establish that there is good
`
`cause to admit Mr. Lowenstein pro hac vice in this proceeding. Patent Owner’s
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`lead counsel is a registered practitioner. Mr. Lowenstein has extensive experience
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`in patent litigation and post grant patent proceedings, particularly IPRs. He also
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`has an established familiarity with the subject matter at issue, including the patents,
`
`petitions and references.
`
`//
`
`//
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`- 7 -
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`
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`V. CONCLUSION
`
`For the foregoing reasons, Patent Owner respectfully requests that the Board
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`admit Mr. Nathan Nobu Lowenstein, Esq. pro hac vice in this proceeding.
`
`
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`Respectfully submitted,
`
`
`____/ Kenneth J. Weatherwax /_________
`Kenneth J. Weatherwax, Reg. No. 54,528
`Lowenstein & Weatherwax LLP
`
`Date: February 16, 2017
`
`- 8 -
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`
`
`CERTIFICATE OF SERV
`
`The undersigned hereby certifies that the following documents were served
`by electronic service, by agreement between the parties, on the date of the
`signature below:
`
`
`PATENT OWNER POLARIS INNOVATIONS LTD’S
`MOTION FOR PRO HAC VICE ADMISSION
`OF NATHAN NOBU LOWENSTEIN
`UNDER 37 C.F.R. § 42.10(c)
`
`EXHIBIT 2005
`
`
`
`The names and address of the parties being served are as follows:
`
`IPR37307-0007IP1@fr.com (David Hoffman)
`IPR@sjclawpc.com (Martha Hopkins)
`
`
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`Respectfully submitted,
`
` / Parham Hendifar /
`
`Date: February 16, 2017
`
`
`
`
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