CBM2013-00013
`Patent No. 8,037,158
`
`Filed on behalf of Pi-Net International, Inc.
`By: Bryan Boyle
`
`Gerald P. Dodson
`
`Carr & Ferrell LLP
`
`120 Constitution Drive
`
`Menlo Park, CA 94025
`
`Tel: (650) 812-3400
`
`Fax: (650) 812-3444
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`Covered Business Method Review of U.S. Patent No. 8,037,158
`_____________________
`SAP America, Inc.
`Petitioner
`v.
`Pi-Net International, Inc.
`Patent Owner
`_____________________
`CASE IPR 2013-00013
`Patent 8,037,158
`_____________________
`Motion for Pro Hac Vice Admission of Colby B. Springer
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`Patent No. 8,037,158
`
`Filed on behalf of Pi-Net International, Inc.
`By: Bryan Boyle
`
`Gerald P. Dodson
`
`Carr & Ferrell LLP
`
`120 Constitution Drive
`
`Menlo Park, CA 94025
`
`Tel: (650) 812-3400
`
`Fax: (650) 812-3444
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`Covered Business Method Review of U.S. Patent No. 8,037,158
`_____________________
`SAP America, Inc.
`Petitioner
`v.
`Pi-Net International, Inc.
`Patent Owner
`_____________________
`CASE IPR 2013-00013
`Patent 8,037,158
`_____________________
`Motion for Pro Hac Vice Admission of Colby B. Springer
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`CBM2013-00013
`
`Patent NO. 8,037,158
`
`Motion for Pro Hac Vice Admission of Colby B. Springer
`
`1.
`
`INTRODUCTION
`
`Pi—Net International, Inc., the real party-in-interest and the owner of the
`
`entire right, title, and interest in US. patent number 8,037,158, respectfully
`
`submits the present motion for pro hac vice admission Of Colby B. Springer as
`
`back—up counsel in accordance with 37 CPR § 42.10(c). This motion is
`
`authorized by Virtue Of the March 27, 2013 NOTICE OF FILING DATE ACCORDED
`
`(PAPER NO. 4). As is required by current Patent Trial and Appeal Board practice,
`
`the present motion is filed in accordance with PAPER NO. 7 in Case No. IPR 2013—
`
`00639 (the “Representative Order”).
`
`11.
`
`TIME FOR FILING
`
`Pursuant to the Representative Order, this motion is filed no sooner than 21
`
`days after service of the petition. The petition was served March 22, 2013. See
`
`PAPER NO. 2. The aforementioned 21 day period has expired. The present motion
`
`is timely submitted.
`
`
`
`CBM2013-00013
`
`Patent No. 8,037,158
`
`111.
`
`CONTENT OF MOTION
`
`a.
`
`Statement of Facts
`
`Pursuant to the Representative Order, the following statement of facts is
`
`presented to show good cause for the Patent Trial and Appeal Board to recognize
`
`Mr. Colby B. Springer (“Mr. Springer”) pro hac vice in the current proceeding:
`
`1)
`
`The inventor and CEO of the patent owner—by way of the
`
`DECLARATION OF DR. LAKSHMI ARUNACHALAM IN SUPPORT OF
`
`MOTION FOR PRO HAC VICE ADMISSION (PI—NET 2022)—hereby
`
`requests that the United States Patent and Trademark Office permit
`
`Mr. Springer to appear pro hac vice in this matter (PI-NET 2022 at W
`
`1, 2, 4-6, and 15); see also DECLARATION OF COLBY B. SPRINGER IN
`
`SUPPORT OF MOTION FOR PRO HAC VICE ADMISSION (PI-NET 2023 at 1]
`
`34);
`
`2)
`
`Mr. Springer is an attorney licensed to practice law by the State of
`
`California (PI-NET 2023 at 1] 1);
`
`3)
`
`Mr. Springer is admitted to practice before the Supreme Court of the
`
`United States of America; the United States Court of Appeals for the
`
`Ninth Circuit; the United States Court of Appeals for the Federal
`
`Circuit; the United States District Courts for the Northern, Central,
`
`Southern, and Eastern District of California; the United States District
`
`
`
`CBM2013-00013
`
`Patent No. 8,037,158
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`Court for the District of Colorado; the United States District Court for
`
`the Eastern District of Texas; and the United States International
`
`Trade Commission and has previously been admitted pro hac vice
`
`before the United States District Court for Arizona; the United States
`
`District Court for New Mexico; the United States District Court for
`
`Nevada; the United States District Court for the Middle District of
`
`Florida; the United States District Court for the Western District of
`
`Washington; and the United States District Court for Delaware (PI—
`
`NET 2023 at fl 2-3);
`
`4)
`
`Mr. Springer is not admitted to practice before the United States
`
`Patent and Trademark Office (PI—NET 2023 at 1] 4);
`
`5)
`
`Mr. Springer graduated from the Santa Clara University School of
`
`Law in 2001 where his studies focused on intellectual property; Mr.
`
`Springer has actively practiced in the field of intellectual property—
`
`namely patent law and litigation—since that time as a practitioner,
`
`educator, and author (PI—NET 2023 at W 5-9, 14);
`
`6)
`
`Mr. Springer is currently an equity partner in the firm of Lewis Roca
`
`Rothgerber LLP where he is responsible for the firm’s Silicon Valley
`
`Office as well as the firm’s patent litigation practice (Pl-NET 2023 at
`
`1110—14);
`
`
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`CBM2013—00013
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`Patent No. 8,037,158
`
`7)
`
`Attorneys at the same law firm as Mr. Springer that are both
`
`registered patent practitioners are already counsel of record in this
`
`matter and will continue to serve as lead and back counsel
`
`notwithstanding Mr. Springer’s possible admission pro hac vice (PI-
`
`NET 2022 at 11‘” 3 and 7 and PI-NET 2023 at 1] 35);
`
`8)
`
`The CEO of the patent owner believes that due to the quasi-litigation
`
`nature of an inter partes review proceeding that the interests of the
`
`patent owner would best be represented by both registered patent
`
`practitioners and an experienced litigation attorney such as Mr.
`
`Springer (PI—NET 2022 at 1] 8 and PI—NET 2023 at 11 26); see also 37
`
`CPR. §§ 42.51 (discovery), 42.54 (protective orders), 42.20—25
`
`(motions practice), 42.53 (taking testimony), and 42.62 (applicability
`
`of the Federal Rules of Evidence);
`
`9)
`
`The CEO of the patent owner believes Mr. Springer to be an
`
`experienced litigation attorney that can represent the aforementioned
`
`interests of the patent owner (PI—NET 2022 at 1] 9);
`
`10)
`
`Mr. Springer believes that his experience as a student, author, teacher,
`
`and practitioner in the field of intellectual property, specifically patent
`
`law and patent litigation, is sufficient to deem him an experienced
`
`litigation attorney (PI-NET 2023 at 1i 37);
`
`
`
`CBM2013-00013
`
`Patent No. 8,037,158
`
`11)
`
`The inventor and CEO of the patent owner has worked with Mr.
`
`Springer in various facets—including the technical subject matter of
`
`US. patent number 8,03 7, l 58—for more than five years thereby
`
`giving him the requisite technical experience in the present subject
`
`matter to properly aid the patent owner in this proceeding (PI—NET
`
`2022 at 1111 10—11;PI—NET 2023 at W 21, 33);
`
`12)
`
`The patent owner will not seek any delay in this or any other
`
`proceeding on the basis that Mr. Springer is now seeking pro hac vice
`
`admission (PI—NET 2022 at W 12—13);
`
`13)
`
`The patent owner will not seek to overturn any order or adverse
`
`decision on the basis that Mr. Springer has been admitted pro hac vice
`
`should the Board permit such admission (PI-NET 2022 at fl l4);
`
`b.
`
`Declaration
`
`Pursuant to the Representative Order, THE DECLARATION OF COLBY B.
`
`SPRINGER IN SUPPORT OF MOTION FOR PRO HAC VICE ADMISSION (PI-NET 2023) is
`
`submitted herewith and establishes that Mr. Springer:
`
`i)
`
`enjoys membership in good standing of the Bar of at least one
`
`State or the District of Columbia (PI—NET 2023 at W 1 and 15);
`
`
`
`CBM2013-00013
`
`Patent No. 8,037,158
`
`ii)
`
`has not been suspended or disbarred from practice before any
`
`court or administrative body (PI-NET 2023 at 1] 15-16);
`
`iii)
`
`has not had an application for admission to practice before any
`
`court or administrative body ever denied (PI-NET 2023 at W
`
`17—18);
`
`iv)
`
`has not been subject to sanctions or contempt citations imposed
`
`by any court or administrative body (PI-NET 2023 at 11 19);
`
`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 of37 C.F.R. (PI-NET 2023 at 1111 20, 22-25);
`
`vi)
`
`will be subject to the USPTO 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) (PI—NET 2023 at 11 27-
`
`29);
`
`vii)
`
`has identified all other proceedings before the US. Patent and
`
`Trademark Office for which Mr. Springer has applied to appear
`
`pro hac vice in the last three (3) years (PI-NET 2023 at 11 30-
`
`32); and
`
`viii)
`
`attests to familiarity with the subject matter at issue in the
`
`proceeding (Pl-NET 2023 at W 21, 33);
`
`
`
`CBM2013-00013
`
`Patent No. 8,037,158
`
`ix)
`
`will abide by any other requirements set forth by the Board as a
`
`condition ofpro hac vice admission ((Pl-NET 2023 at 11 36)
`
`UPDATED TABLE OF EXHIBITS
`IV.
`
`
`EXHIBIT NO. DESCRIPTION
`"Complaintfor Declaratory Judgment ofPatent Non-Infringement;
`Demandfor Jury Trial No. CVl3-1248 EDL (N.D. Cal)
`
`PI—NET 2001
`
`PI—NET 2002
`
`Motion to Dismiss Pursuant to Fed. R. Civ. P. 12(1))(1), Or In The
`
`PI-NET 2003
`
`PI—NET 2004
`
`PI-NET 2005
`
`Alternative, For More Definite Statement Pursuant to Fed. R. Civ.
`
`P. 12(e) No. CVl3-1248 EDL (N.D. Cal)
`SAP ’s Opposition to Pi-Net’s Motion to Dismiss No. CVl3—1248
`EDL (N.D. Cal)
`Stipulation and Order Vacating Case Management Conference
`and Rescheduling Hearingfor Motion to Dismiss No. CV1 3-1248
`
`EDL (N.D. Cal)
`PlaintiffPi—Net-International, Inc. ’s Answering Briefin
`Opposition to Defendants ’ Motion for Partial Summary Judgment
`
`
`
`
`
` uspc705/sched705.htm)
`
`Pl-NE‘T 2006
`
`ofIndefiniteness CA. No. 12-355-RGA
`Maria Aapan, Five Key Questions About Retail Banking ’s Future,
`
`American Banker (Mar. 12, 2013, 1:49 PM ET)
`
`http://www.americanbanker.com/issues/ l 78_49/five-big-
`
`questions—for-the-future-of—retail-banking- 1 05744 1 '- l .html?pg=2
`Provisional Patent Application (Serial No. 60/006634).
`PI—NET 2007 -
`
`'Pl-NET 2008
`Prosecution History for US. Patent No. 5,778,178
`
`PI-NET 2009
`'Excerpts From Prosecutiori History of US. Patent No. 8,037,158,
`
`Previously Submitted (CA. No. l2-355-RGA)
`Pl-NET 2010
`.. Declaration of Michael Bardash Previously Submitted (CA. No.
`
`l2—355-RGA)
`'PI-NET 2011
`US. Patent No. 5,778,178
`_ _
`
`PI-NET 2012
`(http:/lwww.uspto.gov/web/patents/classification/
`_
`
`
`
`
`
`CBM2013-00013
`
`Patent No. 8,037,158
`
`EXHIBIT NO. DESCRIPTION
`
`
`
`
`
`PI-NET 2013
`(http ://www.uspto.gov/web/patents/classification/
`
`uspc709/defs709.htm)
`
`PI-NET 2014
`http://wwvv.webopedia.com/TERM/V/virtual.html
`_ PI—NET 2015
`(http://en.wikipedia.org/wiki/Data_structure)
`PI—NET 2016
`http://Www.web0pedia.com/DidYouKnow/Internet/
`2002/Web_vs_lnternet.asp
`" Removed.
`| PI-NET 2017
`l PI-NET 2018
`(http://en.wikipedia.org/wild/Web_application) (previously filed).
`
`PI-NET 2019
`I “Web Applications - What is a Web Application”
`(http://Webtrends.about.com/od/webapplications/a/
`
`..
`
`web_application.htm) (previously filed).
`
`
`PI-NET 2020
`Prosecution History of Parent 8,108,492 Patent
`
`PI-NET 2021
`‘158 Prosecution History, Amendment of December 27,2010 at
`page 11 and the whole document (previously filed).
`
`Declaration of Dr. Lakshmi Arunachalam in Support of Motion for
`PI-NET 2022
`
`Pro Hac Vice Admission
`
`
`
`
`
`PI-NET 2023
`
`Declaration of Colby B. Springer in Support of Motion for Pro
`
`Hac Vice Admission
`
`
`V.
`
`CONCLUSION
`
`Having evidenced Mr. Springer’s established familiarity with the subject
`
`matter at issue in the current proceeding, the declared need of the Patent Owner for
`
`counsel that is an experienced litigation attorney, evidence that Mr. Springer is an
`
`experienced litigation attorney, and his compliance with the Board’s requirements
`
`for admission as pro hac vice counsel, the Patent Owner submits that there is good
`
`
`
`cause for the Board to recognize Mr. Springer pro hac vice in the present
`
`proceeding.
`
`CBM2013—00013
`
`Patent No. 8,037,158
`
`Respectfully submitted,
`
`CARR & FERRELL LLP
`
`
`
`
`
`Bryan oylé
`Registration No. 52644
`
`Dated: March 11, 2014
`
`120 Constitution Drive
`
`Menlo Park, CA 94025
`
`Tel: (650) 812-3400
`Fax: (650) 812-3444
`
`Attorneys for Patent Owner
`Pi-Net International, Inc.
`
`10
`
`
`
`CBM2013-00013
`
`Patent No. 8,037,158
`
`CERTIFICATION OF SERVICE
`
`The undersigned hereby certifies that the above-captioned “Motion for Pro Hac
`
`Vice Admission of Colby B. Springer” and corresponding Exhibits in CBM2013—
`
`00013 for Covered Business Method Patent Review of US. Patent No. 8,037,158,
`
`was served on March 11, 2014, upon the following parties via e—mail:
`
`SAP America, Inc
`Attn: Samir Pandya
`VP and General Counsel
`1 100 New York Avenue, NW
`Newtown Square, PA 19073
`Petitioner ’s correspondence address
`Ofrecord at the USPTO PTAB
`
`Lori A. Gordon and Michael Q. Lee
`STERNE, KESSLER, GOLDSTEIN
`& FOX, P.L.L.C.
`3999 West Chester Pike
`Washington, DC 20005
`Attorneys for Petitioner
`
`Joseph M. Beauchamp
`jbeauchamp@,JonesDay.com
`JONES DAY
`
`717 Texas, Suite 3300
`
`Houston, Texas 77002-2745
`
`Telephone: 832.239.3835
`Facsimile: 832.239.3600
`
`Attorneys for Petitioner
`
`CARR & FERRELL, LLP
`
`ire/54
`
`Bryan Boyle
`Registration No. 52644
`Attorney for Patent Owner
`
`Date: March 11, 2014
`120 Constitution Drive
`Menlo Park, CA 94025
`650.812.3400
`
`11
`
`
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