UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________
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`NICHIA CORPORATION,
`
`Petitioner,
`
`v.
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`DOCUMENT SECURITY SYSTEMS, INC.,
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`Patent Owner.
`
`____________________
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`CASE NO. IPR2018-00966
`
`U.S. Patent No. 7,652,297
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`____________________
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`
`
`PETITIONER’S UNOPPOSED MOTION FOR
`PRO HAC VICE ADMISSION OF THOMAS R. MAKIN
`PURSUANT TO 37 C.F.R. § 42.10(c)
`
`
`
`
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`NICHIA CORPORATION,
`
`Petitioner,
`
`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.,
`
`Patent Owner.
`
`____________________
`
`CASE NO. IPR2018-00966
`
`U.S. Patent No. 7,652,297
`
`____________________
`
`
`
`PETITIONER’S UNOPPOSED MOTION FOR
`PRO HAC VICE ADMISSION OF THOMAS R. MAKIN
`PURSUANT TO 37 C.F.R. § 42.10(c)
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.10(c), Petitioner Nichia Corporation respectfully
`
`requests that the Patent Trial and Appeal Board (“the Board”) admit Thomas R.
`
`Makin pro hac vice as back-up counsel in this proceeding. Patent Owner
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`Document Security Systems, Inc. has confirmed that it does not oppose this
`
`motion.
`
`I.
`
`Statement of Facts Showing There is a Good Cause for the Board to
`Admit Counsel Pro Hac Vice
`“The Board may recognize counsel pro hac vice in 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.” 37 C.F.R. §
`
`42.10(c). “[W]here lead counsel is a registered practitioner, a motion to appear pro
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`hac vice by counsel who is not a registered practitioner may be granted upon a
`
`showing that counsel is an experienced litigating attorney and has an established
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`familiarity with the subject matter at issue in the proceeding.” Id. The facts here
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`establish good cause for the Board to admit Thomas R. Makin pro hac vice during
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`this proceeding, so that he may participate in, inter alia, oral hearings, depositions,
`
`and conferences with the Board.
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`1.
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`2.
`
`Lead Counsel, Patrick R. Colsher, is a registered practitioner.
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`As set forth in the accompanying Declaration of Thomas R. Makin in
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`Support of Petitioner’s Unopposed Motion for Admission Pro Hac Vice (“Makin
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`Decl.”), Mr. Makin is admitted to practice law in New York, and in the United
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`
`
`2
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`
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`States District Court for the Eastern District of New York, the United States
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`District Court for the Southern District of New York, the United States District
`
`Court for the Eastern District of Michigan, and the United States Court of Appeals
`
`for the Federal Circuit. Makin Decl., ¶ 3.
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`3. Mr. Makin has not been suspended or disbarred from practice before
`
`any court or administrative body; denied admission to practice before any court or
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`administrative body; or sanctioned or cited for contempt by any court or
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`administrative body. Makin Decl., ¶¶ 6–8.
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`4. Mr. Makin is an experienced litigating attorney. More specifically, he
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`has more than 17 years of litigation experience with a focus on patent infringement
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`proceedings in federal court. Makin Decl., ¶ 4.
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`5. Mr. Makin has an established familiarity with the subject matter at
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`issue in this proceeding, having represented Petitioner as a defendant in the related
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`case in the United States District Court for the Central District of California, Case
`
`No. 2:17-cv-08849-JVS. In this related case, Patent Owner has asserted U.S.
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`Patent No. 7,652,297 against Petitioner. Mr. Makin’s experience representing
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`Petitioner in the related case over the same patent against the same Patent Owner
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`provides him with an established familiarity with the subject matter at issue in the
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`current proceeding. Makin Decl., ¶ 5.
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`
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`3
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`
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`6. Mr. Makin has attested that he has read and will comply with the
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`Office Patent Trial Practice Guide and the Board’s Rules of Practice for Trials set
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`forth in Part 42 of 37 C.F.R.; and will be subject to the United States Patent and
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`Trademark Office Code of Professional Responsibility set forth in 37 C.F.R. §§
`
`11.101 et seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and the
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`USPTO Rules of Professional Conduct as set forth in Changes to Representation of
`
`Others Before the United States Patent and Trademark Office; Final Rule, 78 Fed.
`
`Reg. 20180 (Apr. 3, 2013) (effective May 3, 2013). Makin Decl., ¶¶ 9–10.
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`7. Mr. Makin is also applying to appear pro hac vice in the following
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`inter partes review proceedings involving patents owned by Patent Owner and
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`asserted against Petitioner in the above-referenced district court case: IPR2018-
`
`00965, IPR2018-01165, IPR2018-01166, and IPR2018-01167; and has been
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`admitted pro hac vice in the following inter partes review proceedings: IPR2015-
`
`01087, IPR2016-01750, IPR2016-01751, IPR2016-01753, IPR2016-01754, and
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`IPR2016-01755. Makin Decl., ¶ 11.
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`II. Conclusion
`The requirement for admission pro hac vice being hereby established,
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`Petitioner respectfully requests that the Board admit Thomas R. Makin pro hac
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`vice as backup counsel in this proceeding.
`
`
`
`
`
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`4
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`
`
`Dated: June 1, 2018
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`
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`
`
`/Patrick R. Colsher/
`Patrick R. Colsher (Reg. No. 74,955)
`Shearman & Sterling LLP
`599 Lexington Ave
`New York, NY 10022
`Tel: (212) 848-7708
`Fax: (646) 848-7708
`Email: patrick.colsher@shearman.com
`
`Lead Counsel for Petitioner
`
`5
`
`
`
`Certificate of Service
`
`The undersigned hereby certifies that the foregoing Petitioner’s Unopposed
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`Motion for Admission pro hac vice of Thomas R. Makin and Declaration in
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`support were served on June 1, 2018, via electronic mail upon the following:
`
`Wayne M. Helge
`Email: whelge@dbjg.com
`
`James T. Wilson
`Email: jwildon@dbjg.com
`
`Aldo Noto
`Email: anoto@dbjg.com
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`
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`
`
`/Patrick R. Colsher/
`Patrick R. Colsher (Reg. No. 74,955)
`Shearman & Sterling LLP
`599 Lexington Ave
`New York, NY 10022
`Tel: (212) 848-7708
`Fax: (646) 848-7708
`Email: patrick.colsher@shearman.com
`
`Lead Counsel for Petitioner
`
`
`
`
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