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`Paper No. 8
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
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`SMR AUTOMOTIVE SYSTEMS USA, INC. et al.,
`Petitioner,
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`v.
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`MAGNA MIRRORS OF AMERICA, INC.,
`Patent Owner.
`____________________
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`Case No. IPR2018-00533
`Patent No. 8,783,882
`____________________
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`PATENT OWNER MAGNA’S MOTION FOR PRO HAC VICE ADMISSION
`OF STEPHANIE P. KOH
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`IPR2018-00533
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`Motion for Pro Hac Vice of Stephanie P. Koh
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`Patent Owner Magna Mirrors of America, Inc. (“Magna”) respectfully
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`requests that the Board recognize Stephanie P. Koh, Esq. as pro hac vice and
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`backup counsel for Magna for this proceeding.
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`I.
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`BACKGROUND
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`Magna’s Motion for Pro Hac Vice Admission is being filed pursuant to and
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`in compliance with the Notice of Filing Date Accorded to Petition and Time
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`Period for Filing Patent Owner Preliminary Response, which was filed January 29,
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`2018 (Paper 3) (the “Notice”). The Notice authorizes parties to file motions for
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`pro hac vice admission under 37 C.F.R. § 42.10(c). Further to the Notice, such
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`“motions shall be filed in accordance with the ‘Order – Authorizing Motion for
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`Pro Hac Vice Admission’ in Case IPR2013-00639” (the “Order”).
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`II. TIME OF FILING
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`This Motion for Pro Hac Vice admission is being filed in accordance with
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`the Notice Authorizing the Filing of a Motion for Pro Hac Vice admission, and is
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`filed greater than 21 days after that Notice.
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`III. STATEMENT OF FACTS
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`As required by the Order, the following statement of facts, supported by the
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`attached Declaration of Stephanie P. Koh in Support of Motion for Pro Hac Vice
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`Admission (Ex. 2017), shows that there is good cause for the Patent Trial and
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`Appeal Board (“Board”) to recognize Ms. Koh pro hac vice in this proceeding. As
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`IPR2018-00533
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`Motion for Pro Hac Vice of Stephanie P. Koh
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`required by 37 C.F.R. § 42.10(c), Magna lead counsel, Joseph A. Micallef, is a
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`registered practitioner experienced in proceedings before the USPTO.
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`Ms. Koh is an experienced litigation attorney. Ms. Koh has been a litigating
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`attorney for more than 15 years, and has been involved in numerous patent
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`litigation cases in federal courts. Ms. Koh’s experience includes representing a
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`wide range of clients in complex intellectual property litigation, and she has
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`appeared in a number of litigation matters before various Appellate and District
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`Courts. This will be Ms. Koh’s first appearance pro hac vice before the Board.
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`Ms. Koh is a member in good standing of the Illinois State Bar, with no
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`suspensions or disbarments from practice, nor any application for admission to
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`practice denied, nor any sanctions or contempt citations, and is admitted to practice
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`in the United States Court of Appeals for the Federal Circuit, as well as the United
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`States District Courts for the Northern District of Illinois and the Western District
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`of Michigan. Her mailing address is at Sidley Austin LLP, 1 South Dearborn,
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`Chicago, IL 60603, her email address is skoh@sidley.com, and her direct dial is
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`(312) 853-7038.
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`Ms. Koh has worked with lead counsel in most aspects of his participation in
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`this proceeding. As such, she has reviewed and is familiar with (i) U.S. Patent
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`Nos. 7,934,843; 8,147,077; 8,591,047; 8,128,244; 8,267,534; 8,783,882;
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`8,550,642; 8,899,762; and 9,694,750, the patents at issue in this and related
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`IPR2018-00533
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`Motion for Pro Hac Vice of Stephanie P. Koh
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`proceedings, (ii) the prior art relied upon in SMR Automotive Systems USA, Inc.’s
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`(“SMR”) Petition, (iii) the legal and factual arguments that have been addressed by
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`SMR, and (iv) the developments in this proceeding since the filing of SMR’s
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`Petition, as well as the developments in related matters before the Board. Even
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`though Ms. Koh has not been involved in other proceedings before the Board, she
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`has fully familiarized herself with its established practices. Accordingly, she has
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`established familiarity with the subject matter at issue in these proceedings and the
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`conduct of these proceedings to date.
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`Ms. Koh has read and will comply with the Office Patent Trial Practice
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`Guide and the Board’s Rules for Practice for Trials set forth in part 42 of 37
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`C.F.R., and she agrees to be subject to the USPTO Rules of Professional Conduct
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`set forth in 37 C.F.R. §§11.01 et seq., and to disciplinary jurisdiction under 37
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`C.F.R. §11.19(a).
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`IV. ANALYSIS
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`The facts contained in the Statement of Facts above, and contained in the
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`Koh Declaration, establish that there is good cause to admit Ms. Koh pro hac vice
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`in this proceeding under 37 C.F.R. § 42.10(c). Magna’s lead counsel is a
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`registered practitioner, Ms. Koh is an experienced litigating attorney, and Ms. Koh
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`has an established familiarity with the subject matter at issue in these proceedings.
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`V. CONCLUSION
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`IPR2018-00533
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`Motion for Pro Hac Vice of Stephanie P. Koh
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`Therefore, Magna respectfully submits that there is good cause for the Board
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`to recognize Ms. Koh as Pro Hac Vice counsel and backup counsel for Magna
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`during these proceedings. Petitioner’s Motion for Pro Hac Vice Admission is
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`accompanied by a Declaration of Stephanie P. Koh as required by the Order.
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`Dated: May 1, 2018
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`Respectfully Submitted,
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`/Joseph A. Micallef/
`Joseph A. Micallef
`Reg. No. 39,772
`SIDLEY AUSTIN LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`jmicallef@sidley.com
`(202) 736-8492
`Attorney for Patent Owner
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`IPR2018-00533
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`Motion for Pro Hac Vice of Stephanie P. Koh
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`Exhibit List
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`Exhibit # Reference Name
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`2001
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`2002
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`2003
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`2004
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`2005
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`2006
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`2007
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`2008
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`2009
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`2010
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`2011
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`2012
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`2013
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`2014
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`2015
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`2016
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`2017
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`Declaration of Michael Nranian
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`Curriculum Vitae of Michael Nranian
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`U.S. Patent No. 5,579,133
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`Excerpts of File History for U.S. Patent No. 8,128,243
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`Excerpts of File History for U.S. Patent No. 8,128,244
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`Excerpts of File History for U.S. Patent No. 8,147,077
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`Excerpts of File History for U.S. Patent No. 8,267,534
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`Excerpts of File History for U.S. Patent No. 8,550,642
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`Excerpts of File History for U.S. Patent No. 8,591,047
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`U.S. Provisional Patent Application No. 60/471, 872 (the “‘872
`provisional”)
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`Declaration of Niall Lynam
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`Annotated Copy of Lynam ‘026
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`Reserved
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`American Heritage Dictionary (4th Ed. 2000) p. 1344-45
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`U.S. Patent No. 8,550,642
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`Declaration of Scott M. Border in Support of Patent Owner Magna’s
`Motion for Pro Hac Vice Admission
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`Declaration of Stephanie P. Koh in Support of Patent Owner Magna’s
`Motion for Pro Hac Vice Admission
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`5
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), this is to certify that on this 1st day of May,
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`2018, I caused to be served a true and correct copy of the foregoing and any
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`accompanying exhibits by electronic mail on the following counsel for Petitioner:
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`Charles H. Sanders
`charles.sanders@lw.com
`Anant K. Saraswat
`anant.saraswat@lw.com
`Latham & Watkins LLP
`200 Clarendon Street
`Boston MA 02116
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`Jonathan M. Strang
`jonathan.strang@lw.com
`Latham & Watkins LLP
`555 Eleventh Street, NW, Ste. 1000
`Washington, DC 20004-1304
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`Dated: May 1, 2018
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`Respectfully submitted,
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`/Joseph A. Micallef/
`Joseph A. Micallef
`Reg. No. 39,772
`SIDLEY AUSTIN LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`jmicallef@sidley.com
`(202) 736-8492
`Attorney for Patent Owner
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`1
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