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`Patent No. 8,037,158
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`Filed on behalf of Pi-Net International, Inc.
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`By: Bryan Boyle
`Gerald P. Dodson
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`Carr & Ferrell LLP
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`120 Constitution Drive
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`Menlo Park, CA 94025
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`Tel: (650) 812-3400
`Fax: (650) 812—3444
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`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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`Covered Business Method Review of US. Patent No. 8,037,158
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`
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`SAP America, Inc.
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`Petitioner
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`V.
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`Pi—Net International, Inc.
`
`Patent Owner
`
`
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`CASE IPR 2014-00018
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`Patent 8,037,158
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`Motion for Pro Hac Vice Admission of Colby B. Springer
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`Mail Stop “PA TENT BOARD”
`Patent Trial and Appeal Board
`US. Patent and Trademark Office
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`PO. Box 1450
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`Alexandria, VA 22313-1450
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`
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`Motion for Pro Hac Vice Admission of Colby B. Springer
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`CBM2014—000 1 8
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`Patent NO. 8,037,158
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`1.
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`INTRODUCTION
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`Pi—Net International, Inc., the real party-in-interest and the owner of the
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`entire right, title, and interest in US. patent number 8,037,158, respectfully
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`submits the present motion for pro hac vice admission of Colby B. Springer as
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`back-up counsel in accordance with 37 C.F.R. § 42.10(c). This motion is
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`authorized by virtue of the October 29, 2013 NOTICE OF FILING DATE ACCORDED
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`(PAPER NO. 3). As is required by current Patent Trial and Appeal Board practice,
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`the present motion is filed in accordance with PAPER NO. 7 in Case NO. IPR 2013—
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`00639 (the “Representative Order”).
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`11.
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`TIME FOR FILING
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`Pursuant to the Representative Order, this motion is filed no sooner than 21
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`days after service of the petition. The petition was served October 21, 2013. See
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`PAPER NO. 1. The aforementioned 21 day period has expired. The present motion
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`is timely submitted.
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`
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`CBM2014-00018
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`Patent No. 8,037,158
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`III.
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`CONTENT OF MOTION
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`a.
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`Statement of Facts
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`Pursuant to the Representative Order, the following statement of facts is
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`presented to show good cause for the Patent Trial and Appeal Board to recognize
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`Mr. Colby B. Springer (“Mr. Springer”) pro hac vice in the current proceeding:
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`1)
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`The inventor and CEO of the patent owner—by way of the
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`DECLARATION OF DR. LAKSHMI ARUNACHALAM IN SUPPORT OF
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`MOTION FOR PRO HAC VICE ADMISSION (PI-NET 2013)——hereby
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`requests that the United States Patent and Trademark Office permit
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`Mr. Springer to appear pro hac vice in this matter (PI-NET 2013 at llll
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`1, 2, 4-6, and 15); see also DECLARATION OF COLBY B. SPRINGER IN
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`SUPPORT OF MOTION FOR PRO HAC VICE ADMISSION (PI-NET 2014 at 'H
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`34);
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`2)
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`Mr. Springer is an attorney licensed to practice law by the State of
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`California (PI-NET 2014 at 1] 1);
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`3)
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`Mr. Springer is admitted to practice before the Supreme Court of the
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`United States of America; the United States Court of Appeals for the
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`Ninth Circuit; the United States Court of Appeals for the Federal
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`Circuit; the United States District Courts for the Northern, Central,
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`Southern, and Eastern District of California; the United States District
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`CBM2014-00018
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`Patent No. 8,037,158
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`Court for the District of Colorado; the United States District Court for
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`the Eastern District of Texas; and the United States International
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`Trade Commission and has previously been admitted pro hac vice
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`before the United States District Court for Arizona; the United States
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`District Court for New Mexico; the United States District Court for
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`Nevada; the United States District Court for the Middle District of
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`Florida; the United States District Court for the Western District of
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`Washington; and the United States District Court for Delaware (PI-
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`NET 2014 at 11 2—3);
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`4)
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`Mr. Springer is not admitted to practice before the United States
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`Patent and Trademark Office (PI-NET 2014 at 11 4);
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`5)
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`Mr. Springer graduated from the Santa Clara University School of
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`Law in 2001 where his studies focused on intellectual property; Mr.
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`Springer has actively practiced in the field of intellectual property—
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`namely patent law and litigation—since that time as a practitioner,
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`educator, and author (PI—NET 2014 at W 5-9, 14);
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`6)
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`Mr. Springer is currently an equity partner in the firm of Lewis Roca
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`Rothgerber LLP where he is responsible for the firm’s Silicon Valley
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`Office as well as the firm’s patent litigation practice (PI-NET 2014 at
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`1110-14);
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`CBM2014—0001 8
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`Patent No. 8,037,158
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`7)
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`Attorneys at the same law firm as Mr. Springer that are both
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`registered patent practitioners are already counsel of record in this
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`matter and will continue to serve as lead and back counsel
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`notwithstanding Mr. Springer’s possible admission pro hac vice (PI-
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`NET 2013 at 1111 3 and 7 and PI-NET 2014 at 11 35);
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`8)
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`The CEO of the patent owner believes that due to the quasi-litigation
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`nature of an inter partes review proceeding that the interests of the
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`patent owner would best be represented by both registered patent
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`practitioners and an experienced litigation attorney such as Mr.
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`Springer (Pl-NET 2013 at 11 8 and PI—NET 2014 at 11 26); see also 37
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`C.F.R. §§ 42.51 (discovery), 42.54 (protective orders), 42.20-25
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`(motions practice), 42.53 (taking testimony), and 42.62 (applicability
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`of the Federal Rules of Evidence);
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`9)
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`The CEO of the patent owner believes Mr. Springer to be an
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`experienced litigation attorney that can represent the aforementioned
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`interests of the patent owner (PI-NET 2013 at 11 9);
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`10)
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`Mr. Springer believes that his experience as a student, author, teacher,
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`and practitioner in the field of intellectual property, specifically patent
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`law and patent litigation, is sufficient to deem him an experienced
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`litigation attorney (PI-NET 2014 at 11 37);
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`CBM2014-00018
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`Patent No. 8,037,158
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`11)
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`The inventor and CEO of the patent owner has worked with Mr.
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`Springer in various facets—including the technical subject matter of
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`US. patent number 8,03 7,158—for more than five years thereby
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`giving him the requisite technical experience in the present subject
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`matter to properly aid the patent owner in this proceeding (PI—NET
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`2013 at W 10—1 1; PI—NET 2014 at W 21, 33);
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`12)
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`The patent owner will not seek any delay in this or any other
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`proceeding on the basis that Mr. Springer is now seeking pro hac vice
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`admission (PI—NET 2013 at W 12-13);
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`13)
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`The patent owner will not seek to overturn any order or adverse
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`decision on the basis that Mr. Springer has been admitted pro hac vice
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`should the Board permit such admission (PI-NET 2013 at 1] 14);
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`b.
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`Declaration
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`Pursuant to the Representative Order, THE DECLARATION OF COLBY B.
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`SPRINGER IN SUPPORT OF MOTION FOR PRO HAC VICE ADMISSION (PI-NET 2014) is
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`submitted herewith and establishes that Mr. Springer:
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`i)
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`enjoys membership in good standing of the Bar of at least one
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`State or the District of Columbia (PI-NET 2014 at W 1 and 15);
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`
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`CBM2014-00018
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`Patent No. 8,037,158
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`ii)
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`has not been suspended or disbarred from practice before any
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`court or administrative body (PI-NET 2014 at 1] 15-16);
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`iii)
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`has not had an application for admission to practice before any
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`court or administrative body ever denied (PI-NET 2014 at W
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`17-18);
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`iv)
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`has not been subject to sanctions or contempt citations imposed
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`by any court or administrative body (PI—NET 2014 at fl 19);
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`has read and will comply with the Office Patent Trial Practice
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`Guide and the Board’s Rules of Practice for Trials set forth in
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`part 42 of37 C.F.R. (PI-NET 2014 at {[11 20, 22-25);
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`vi)
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`will be subject to the USPTO Rules of Professional Conduct set
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`forth in 37 CPR. §§ 11.101 et. seq. and disciplinary
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`jurisdiction under 37 C.F.R. § 11.19(a) (PI-NET 2014 at 11 27—
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`29);
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`vii)
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`has identified all other proceedings before the US. Patent and
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`Trademark Office for which Mr. Springer has applied to appear
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`pro hac vice in the last three (3) years (PI-NET 2014 at 11 30-
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`32); and
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`viii)
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`attests to familiarity with the subject matter at issue in the
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`proceeding (PI—NET 2014 at 1111 21, 33);
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`CBM2014-00018
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`Patent No. 8,037,158
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`ix)
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`will abide by any other requirements set forth by the Board as a
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`condition ofpro hac vice admission ((PI-NET 2014 at 11 36)
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`IV.
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`UPDATED TABLE OF EXHIBITS
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`PI-NET 2001
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`Exhibit A : ‘158 Prosecution History, Amendment of December
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`27, 2010 at page 11 and the Whole document
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`PI-NET 2002
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`(http://www.uspto.gov/web/patents/classification/uspc705/
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`sched705 .htm)
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`PI-NET 2003
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`(http ://www.uspto.gov/web/patents/classification/
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`uspc709/defs709.htm)
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`PI—NET 2004
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`Exhibit B : ‘158 Prosecution History, Restriction requirement
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`of October 19, 2009, page 3
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`PI-NET 2005
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`Exhibit C : Bardash Decl. of April 1, 2013, Para. 46 and whole
`document, Previously Submitted (CA. No. 12-355-RGA)
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`PI—NET 2006
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`http://www.web0pedia.com/TERM/V/Virtual.html
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`PI-NET 2007
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`(http://en.wikipedia.org/wiki/Data_structure)
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`PI-NET 2008
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`http://www.webopedia.com/DidYouKnow/Internet/
`2002/Web_vs_Internet.asp
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`PI—NET 2009
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`Exhibit D : Easttom Declaration of November 25, 2013,
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`Pi-Net International, Inc. v. JP Morgan Chase & Co, No.
`1:12-cv—00282 (D. Del) Previously Submitted
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`PI-NET 2010
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`Exhibit E: RFC 1213 on SNMP MIB, cited in Petition Exhibit
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`1011, which is RFC 1448.
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`PI-NET 201 1
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`Exhibit F : Prosecution History of Parent 5,778,178 Patent
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`
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`CBM2014-00018
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`Patent No. 8,037,158
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`Pi-NET 2012
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`Exhibit G : Prosecution History of Parent 8,108,492 Patent
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`Pi-NET 2013
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`Declaration of Dr. Lakshmi Arunachalam in Support of Motion
`for Pro Hac Vice Admission
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`Pi-NET 2014
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`Declaration of Colby B. Springer in Support of Motion for Pro
`Hac Vice Admission
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`V.
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`CONCLUSION
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`Having evidenced Mr. Springer’s established familiarity with the subject
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`matter at issue in the current proceeding, the declared need of the Patent Owner for
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`counsel that is an experienced litigation attorney, evidence that Mr. Springer is an
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`experienced litigation attorney, and his compliance with the Board’s requirements
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`for admission as pro hac vice counsel, the Patent Owner submits that there is good
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`cause for the Board to recognize Mr. Springer pro hac vice in the present
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`proceeding.
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`Respectfully submitted,
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`CARR & FERRELL LLP
`
`
`
`Registration No. 52644
`
`Attorneys for Patent Owner
`Pi-Net International, Inc.
`
`Dated: March 11, 2014
`
`120 Constitution Drive
`
`Menlo Park, CA 94025
`
`Tel: (650) 812-3400
`Fax: (650) 812-3444
`
`
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`CBM2014-00018
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`Patent No. 8,037,158
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`CERTIFICATION OF SERVICE
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`The undersigned hereby certifies that the above—captioned “Motion for Pro Hac
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`Vice Admission of Colby B. Springer” and corresponding Exhibits in CBM2014-
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`00018 for Covered Business Method Patent Review of US. Patent No. 8,037,158,
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`was served on March 11, 2014, upon the following parties via e-mail:
`
`SAP America, Inc
`Attn: Samir Pandya
`VP and General Counsel
`1100 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
`ibeauchamp[cQJonesDaycom
`JONES DAY
`
`717 Texas, Suite 3300
`
`Houston, Texas 77002—2745
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`Telephone: 832.239.3835
`Facsimile: 832.239.3600
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`Attorneys for Petitioner
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`CARR & FERRELL, LLP
`
`@244.
`
`Bryan Boyle
`Registration No. 52644
`Attorney for Patent Owner
`
`Date: March 11, 2014
`120 Constitution Drive
`Menlo Park, CA 94025
`650.812.3400
`
`10
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