UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioners,
`
`v.
`
`NANOCO TECHNOLOGIES LTD.,
`Patent Owner.
`
`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`
`UNOPPOSED MOTION OF NANOCO TECHNOLOGIES LTD.
`FOR PRO HAC VICE ADMISSION OF MATTHEW S. GALICA
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioners,
`
`v.
`
`NANOCO TECHNOLOGIES LTD.,
`Patent Owner.
`
`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`
`UNOPPOSED MOTION OF NANOCO TECHNOLOGIES LTD.
`FOR PRO HAC VICE ADMISSION OF MATTHEW S. GALICA
`
`
`
`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`
`I.
`
`Statement of Precise Relief Requested
`
`Patent Owner Nanoco Technologies Ltd. (“Nanoco”) respectfully requests
`
`that the Board admit Matthew S. Galica pro hac vice in this proceeding under 37
`
`C.F.R. § 42.10(c). Counsel for Petitioner has indicated that Petitioner does not
`
`oppose this motion.
`
`II.
`
`Statement of Facts Showing Good Cause for the Board to Recognize
`Counsel Pro Hac Vice during the Proceeding
`
`Pursuant to 37 C.F.R. § 42.10(c), the Board may admit counsel pro hac vice
`
`for good cause, subject to any other conditions that the Board may require, so long
`
`as lead counsel is a registered practitioner. Good cause includes when “counsel is
`
`an experienced litigating attorney and has an established familiarity with the
`
`subject matter at issue in the proceeding.” 37 C.F.R. § 42.10(c).
`
`This application satisfies the requirements of Section 42.10(c):
`
`1.
`
`Lead counsel, William A. Meunier, the undersigned, is a registered
`
`Practitioner.
`
`2.
`
`Pro Hac Vice Applicant, Mr. Matthew S. Galica, is an experienced
`
`patent litigator. As attested to in the accompanying Declaration dated December 1,
`
`2020 (“Galica Declaration”), Exhibit 2003, ¶¶ 2, 3, Mr. Galica has experience in
`
`numerous litigations involving patent infringement in District Courts throughout
`
`the United States and before the International Trade Commission, and is an
`
`2
`
`
`
`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`
`associate at the law firm of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo P.C.
`
`(“Mintz Levin”). Id. ¶ 1. Mr. Galica is a member in good standing of the Bar of
`
`the Commonwealth of Massachusetts with no suspensions or disbarments from
`
`practice, nor any application for admission to practice denied, nor any sanctions or
`
`contempt citations. Id. ¶¶ 2, 6. He is also admitted to practice before the United
`
`States Courts of Appeals for the Federal Circuit. Id. ¶ 2.
`
`3.
`
`Mr. Galica has an established familiarity with the subject matter at
`
`issue in this proceeding, as well as the parallel litigation involving U.S. Patent Nos.
`
`7,588,828 (“the ’828 patent”), U.S. Patent No. 7,803,423 (“the ’423 patent”), U.S.
`
`Patent No. 7,867,557 (“the ’557 patent”), U.S. Patent No. 8,524,365 (“the ’365
`
`patent”) and U.S. Patent No. 9,680,068 (“the ’068 patent”) filed by Patent Owner
`
`in the United States District Court for the Eastern District of Texas (Civil Action
`
`No. 2:20-cv-00038-JRG). Galica Declaration ¶ 4. He has reviewed and is familiar
`
`with all the relevant materials for this matter, including the case pleadings, the ’423
`
`patent, its prosecution history, and the prior art references that are the subject of
`
`this inter partes review proceeding. In addition, Mr. Galica has a thorough
`
`understanding of the grounds of unpatentability asserted in the Petition and the
`
`challenged claims of the ’423 patent. Id. ¶ 5.
`
`4.
`
`Mr. Galica has read and will comply with the Office Patent Trial
`
`Practice Guide, the Trial Practice Guide updates, and the Board's Rules for Practice
`
`3
`
`
`
`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`
`for Trials set forth in part 42 of the C.F.R, and he agrees to be subject to the
`
`USPTO Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq., and
`
`to disciplinary jurisdiction under 37 C.F.R. § 11.19(a). Id. at ¶¶ 7-8.
`
`5.
`
`Mr. Galica has not applied to appear pro hac vice in any proceedings
`
`before the Office in the last three years. Id. ¶ 3.
`
`4
`
`
`
`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`
`For the foregoing reasons, Patent Owner Nanoco respectfully requests that
`
`the Board admit Matthew S. Galica pro hac vice in this proceeding.
`
`Respectfully submitted,
`
`Nanoco Technologies Ltd.,
`By its attorneys,
`
`/ William A. Meunier /
`William A. Meunier (Reg. No. 41,193)
`Peter J. Cuomo (Reg. No. 58,481)
`Michael C. Newman (pro hac vice to be filed)
`Thomas A. Wintner (pro hac vice to be filed)
`Matthew S. Galica (pro hac vice to be filed)
`MINTZ, LEVIN, COHN, FERRIS,
`GLOVSKY AND POPEO, P.C.
`One Financial Center
`Boston, MA 02111
`Telephone: 617-348-1845
`Facsimile: 617-542-2241
`E-mails: WAMeunier@mintz.com
` PJCuomo@mintz.com
` MCNewman@mintz.com
` TWintner@mintz.com
` MSGalica@mintz.com
` NanocoIPRs@mintz.com
`
`5
`
`Dated: December 1, 2020
`
`
`
`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`
`CERTIFICATE OF SERVICE
`
`I certify that a copy of the foregoing Unopposed Motion for Pro Hac Vice
`
`Admission of Matthew S. Galica and accompanying Exhibit 2003 are being served
`
`by electronic mail on the following counsel of record:
`
`Lead Counsel
`F. Christopher Mizzo, P.C.
`Reg. No. 73,156
`chris.mizzo@kirkland.com
`KIRKLAND & ELLIS LLP 1301
`Pennsylvania Ave., N.W.
`Washington, D.C. 20004
`Telephone: (202) 389-5000
`Facsimile: (202)389-5200
`
`Back-Up Counsel
`Gregory S. Arovas, P.C.
`Reg. No. 38,818
`greg.arovas@kirkland.com
`Stefan Miller
`Reg. No. 57,623
`stefan.miller@kirkland.com
`KIRKLAND & ELLIS LLP
`601 Lexington Avenue
`New York, N.Y. 10022
`Telephone: (212) 446-4800
`Facsimile: (212) 446-4900
`
`W. Todd Baker
`Reg. No. 45,265
`todd.baker@kirkland.com
`KIRKLAND & ELLIS LLP 1301
`Pennsylvania Ave., N.W. Washington,
`D.C. 20004 Telephone: (202) 389-5000
`Facsimile: (202)389-5200
`
`Dated: December 1, 2020
`
`/William A. Meunier/
`William A. Meunier (Reg. No. 41,193)
`
`6
`
`
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