`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`SHOPIFY, INC.,
`Petitioner
`
`v.
`
`DDR HOLDINGS, LLC,
`Patent Owner
`
`
`
`Case IPR2018-01011
`Patent 9,639,876
`
`
`
`
`PATENT OWNER’S MOTION FOR PRO HAC VICE
`ADMISSION UNDER 37 C.F.R. § 42.10
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`
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`Page 1
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`Case No. IPR2018-01011
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`
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`Patent 9,639,876
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`Patent Owner DDR Holdings, LLC (“DDR”) respectfully requests that the
`
`Board recognize Ian B. Crosby as counsel pro hac vice during this proceeding.
`
`The Board has authorized filing this motion via the Notice according filing date
`
`mailed June 5, 2018, Paper No. 5.
`
`1.
`
`Statement of Facts
`
`Mr. Crosby has established familiarity with the subject matter at issue in this
`
`IPR proceeding through his role as co-counsel for Patent Owner in a prior litigation
`
`that involved this patent, DDR Holdings, LLC v. Hotels.com et al. (Case No. 06-
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`CV-0042 (RG)(E.D. Tex.), and on appeal. See DDR Holdings, LLC v. Hotels.com,
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`L.P., 773 F.3d 1245 (Fed. Cir. 2014), aff’g as to this patent, DDR Holdings, LLC v.
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`Hotels.com, L.P., 954 F. Supp. 2d 509 (E.D. Tex. 2013).
`
`The Board granted Mr. Crosby’s Motion for pro hac vice admission in
`
`proceeding IPR2018-00482 involving related U.S. Patent 7,818,399 (see Paper No.
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`21, entered October 16, 2018, in that proceeding.)
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`Mr. Crosby is an attorney with extensive experience in patent matters, and
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`has appeared before the U.S. International Trade Commission and consulted on
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`patent-related inter partes matters before this Board.
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`Mr. Crosby has received national recognition from U.S. News – The Best
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`Lawyers in America®, the American Intellectual Property Law Association, and
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`Page 2
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`Case No. IPR2018-01011
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`Patent 9,639,876
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`Managing IP Magazine for his work and expertise in the field of intellectual
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`property litigation and licensing.
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`Other patent cases in which Mr. Crosby has been involved include Uniloc
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`U.S.A. v. Bitdefender LLC, Case No. 2:16-cv-00394-RWS (N.D. Cal. 2017); In re
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`Certain Wearable Activity Tracking Devices, Investigation No. 337-TA-973 (I.T.C.
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`2016); In re Queen’s University at Kingston, No. 2015-145 (Fed. Cir. 2016); Two-
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`Way Media LLC v. AT&T et al., No. 2014-1302 (Fed. Cir. 2015); ViaSat, Inc. v.
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`Space Systems/Loral, Inc. et al., No. 3:12-cv-00260-H (S.D. Cal. 2014).
`
`Mr. Crosby earned a B.A. from Reed College and a J.D. with high honors
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`from the University of Texas School of Law, where he received awards for highest
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`achievement in several subjects, including patent litigation.
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`Further facts concerning and verifying Mr. Crosby’s experience appear in
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`the accompanying declaration supporting this motion, Exhibit 2024.
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`2.
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`Argument
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`Under 37 C.F.R. § 42.10(c) the Board may recognize a counsel pro hac vice
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`“upon a showing of good cause,” provided that lead counsel is a registered
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`practitioner and on any other conditions as the Board may impose. Lead counsel
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`here is a registered practitioner. In that circumstance, a motion of this sort “may be
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`granted upon showing that counsel is an experienced litigating attorney and has an
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`established familiarity with the subject matter at issue in the proceeding.” Id.
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`Page 3
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`Case No. IPR2018-01011
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`Patent 9,639,876
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`The facts recited above and in the declaration establish that there is “good
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`cause,” that Mr. Crosby is “an experienced litigating attorney,” and that he “has an
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`established familiarity with the subject matter at issue” here. Patent Owner is not
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`aware of any additional conditions imposed by the Board, except the Board has
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`ordered applicants making pro hac vice motions to file them “in accordance with”
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`a representative order from an earlier case, which the undersigned has reviewed
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`and addressed. See Paper No. 5, p. 2.
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`Petitioner has indicated that it has no objection to Mr. Crosby’s admission
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`pro hac vice.
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`If the Board grants this motion, Patent Owner intends to act promptly to
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`submit a Power of Attorney for Mr. Crosby in accordance with 37 C.F.R.
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`§ 42.10(b), and to update its mandatory notices as required by 37 C.F.R.
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`§ 42.8(b)(3). Approval of Mr. Crosby as counsel pro hac vice for this proceeding,
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`to act as backup counsel only, is therefore respectfully requested.
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`Dated: January 4, 2019
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`
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`
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`Respectfully submitted,
`
`/Louis J. Hoffman/
`Louis J. Hoffman
`Reg. No. 38,918
`
`LOUIS J. HOFFMAN, P.C.
`7689 East Paradise Lane
`Suite 2
`Scottsdale, Arizona 85260
`(480) 948-3295
`Lead Counsel for Patent Owner
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`
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`Page 4
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`Case No. IPR2018-01011
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`Patent 9,639,876
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`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e)(1))
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`The undersigned hereby certifies that on January 4, 2019, a complete and
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`correct copy of the foregoing PATENT OWNER’S MOTION FOR PRO HAC
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`VICE ADMISSION UNDER 37 C.F.R. § 42.10 and Exhibit 2024 was served via
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`electronic mail on the following counsel of record for Petitioner:
`
`Michael McNamara (Reg. No. 52,017)
`William A. Meunier (Reg. No. 41,193)
`Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, PC
`One Financial Center
`Boston, MA 02111
`DDR_IPR_Service@mintz.com
`
`
`
` /Louis J. Hoffman/
`Louis J. Hoffman, Reg. No. 38,918
`DDR_IPR@valuablepatents.com
`LOUIS J. HOFFMAN, P.C.
`7689 East Paradise Lane, Suite 2
`Scottsdale, Arizona 85260
`
`
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