`(307075-2007)
`
`
`
`
`Inter Partes Review of U.S. Patent No. 7,890,802
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`SERVICENOW, INC.
`Petitioner
`
`v.
`
`HEWLETT‐PACKARD COMPANY
`Patent Owner
`
`
`
`Case IPR2015‐00702
`Patent 7,890,802
`
`
`
`PETITIONER’S CORRECTED MOTION FOR PRO HAC VICE ADMISSION
`UNDER 37 C.F.R. § 41.10(c)
`
`
`
`
`
`
`
`
`
`
`
`
`
`Inter Partes Review of U.S. Patent No. 7,890,802
`
`Atty Docket No. SERC-007/00US
`(307075-2007)
`
`
`
`Petitioner ServiceNow, Inc. respectfully requests that the Board recognize
`
`Mark R. Weinstein, Esq., as counsel pro hac vice during this proceeding.
`
`I.
`
`BACKGROUND
`
`Petitioner’s Motion for Pro Hac Vice Admission is being filed in compliance
`
`with and pursuant to the “Order—Authorizing Motion for Pro Hac Vice
`
`Admission” in Case No. IPR2013‐00639 (MPT) [“the Order”].
`
`II.
`
`STATEMENT OF FACTS
`
`As required by the Order, the following statement of facts shows that there
`
`is good cause for the Board to recognize Mr. Weinstein pro hac vice.
`
`Mr. Weinstein is an experienced litigation attorney and has been involved
`
`in numerous complex litigations in state and federal courts. Mr. Weinstein’s
`
`biography is attached hereto as Exhibit 1009.
`
`Mr. Weinstein has reviewed U.S. Patent No. 7,890,802, and the petition
`
`already filed in this proceeding. Further, Mr. Weinstein is counsel of record in the
`
`co‐pending litigation between the parties entitled Hewlett‐Packard Company v.
`
`ServiceNow, Inc., before the U.S. District Court of the Northern District of
`
`California, Case No. 5:14‐cv‐00570‐BLF; and, as such, is familiar with the subject
`
`matter at issue in this proceeding.
`
`Therefore, Petitioner respectfully submits that there is good cause for the
`
`
`
`
`
`
`
`Inter Partes Review of U.S. Patent No. 7,890,802
`
`Atty Docket No. SERC-007/00US
`(307075-2007)
`
`
`
`Board to recognize Mr. Weinstein as counsel pro hac vice during this proceeding.
`
`III.
`
`
`
`AFFIDAVIT OR DECLARATION OF INDIVIDUAL SEEKING TO APPEAR
`
`Petitioner’s Motion for Pro Hac Vice Admission is accompanied by an
`
`Affidavit of Mark R. Weinstein, filed as Exhibit 1010, as required by the Order.
`
`Respectfully Submitted,
`
`/Heidi L. Keefe/
`Heidi L. Keefe
`Reg. No. 40,673
`
`DATED: April 3, 2015
`
`COOLEY LLP
`ATTN: Patent Docketing
`1299 Pennsylvania Ave. NW Suite 700
`Washington D.C. 20004
`T: 650‐843‐5001
`F: 650‐849‐7400
`
`
`115510335 v1
`
`
`
`
`
`MARK WEINSTEIN
`PARTNER
`
`
`
`PRACTICES:
`Covered Business Method Review
`Intellectual Property
`Intellectual Property Litigation
`Inter Partes Review
`Patent Office Litigation
`Post-Grant Review
`Trademark, Copyright & Advertising
`
`
`
`OFFICE:
`Palo Alto
`3175 Hanover Street
`Palo Alto, California
`94304
`
`T: +1 650 843 5007
`F: +1 650 849 7400
`E: mweinstein@cooley.com
`
`
`
`
`
`Mark Weinstein is a partner in the Cooley Litigation department and member of the Intellectual Property
`practice group. He joined the Firm in 2009 and is resident in the Palo Alto office.
`
`Mr. Weinstein's practice focuses on patent and other complex technology-related disputes. He has handled
`a number of high-stakes litigations throughout the United States involving a variety of technologies,
`including computer software and hardware, Internet applications, electronic transactions, e-commerce,
`computer networking, entertainment software, and medical devices.
`
`Representative cases include:
`
`Patents
`
`
`
`
`
`
`
`
`
`Facebook, Inc. Mark has represented and is representing Facebook in more than a dozen patent
`infringement actions, including Yahoo! Inc v. Facebook, Inc. (N.D. Cal.), Leader Technologies,
`Inc. v. Facebook, Inc. (D. Del.), Tele-Publishing, Inc. v. Facebook, Inc. (D. Mass.), Mekiki Co.,
`Ltd. v. Facebook, Inc. (D. Del.), Cross-Atlantic Capital Partners, Inc. v. Facebook, Inc. (E.D. Pa.),
`Unified Messaging Solutions LLC v. Facebook, Inc. (E.D. Tex.), Walker Digital, LLC v. Facebook,
`Inc. (D. Del.), and several others.
`
`
`HTC Corporation and HTC America. Mark has defended and is currently defending HTC in
`several patent litigations including HTC v. Technology Properties Ltd. (N.D. Cal.), Digitude
`Innovations LLC v. HTC (D. Del. and U.S. ITC), ADC Technology, Inc. v. HTC et al. (N.D. Ill.),
`Microunity Systems Eng'g v. HTC et al. (E.D. Tex.) and BandSpeed, Inc. v. HTC Corp. et al.
`(W.D. Tex), SP Technologies, Ltd. v. HTC et al. (N.D. Ill.), Implicit Networks, Inc. v. HTC (N.D.
`Cal.), and several others.
`
`LinkedIn Corporation. Mark is representing LinkedIn in Jaipuria v. LinkedIn Corp. et al. (E.D.
`Tex.) and Cathas Advanced Technologies LLC v. LinkedIn Corp. (D. Del.)
`
`EMC Corporation. In Hewlett-Packard Company et al. v. EMC Corporation (N.D. Cal.), Mr.
`Weinstein represented EMC in a patent infringement suit involving thirteen patents relating to
`mass data storage systems, servers and printers. HP initiated the lawsuit by suing EMC for
`alleged infringement of seven patents. EMC counterclaimed against HP with six of its own
`patents. Following claim construction proceedings and motion practice, the case settled with HP
`
`
`
`ServiceNow's Exhibit No. 1009
`
`001
`
`
`
`
`
`agreeing to pay EMC more than $325 million, one of the largest patent settlements on record.
`
`
`
`
`
`
`In-Three, Inc. In IMAX Corporation v. In-Three, Inc. (C.D. Cal.), Mr. Weinstein defended In-Three
`in a patent infringement suit involving software for producing three dimensional motion
`pictures. In-Three defeated a motion for preliminary injunction filed by IMAX that threatened to
`shut down In-Three's operations.
`
`
`eBay Inc. In Tumbleweed Communications Corp. v. eBay, Inc. et al. (N.D. Cal.), Mr. Weinstein
`defended eBay and its subsidiary PayPal against allegations of infringement of three software
`patents related to electronic financial transactions. The case settled on favorable terms during the
`pendency of a summary judgment motion filed by eBay and PayPal that sought to invalidate
`Tumbleweed's patents in light of the prior art.
`
`Trade Secrets
`
`
`
`
`
`
`
`Cirrus Logic, Inc. In Silvaco Data Systems v. Cirrus Logic, Inc. (Santa Clara Sup. Ct.), Mark
`represented Cirrus Logic in a trade secret lawsuit involving Electronic Design Automation
`technology. Cirrus Logic obtained summary judgment that it did not misappropriate any of the
`plaintiff's trade secrets, which was affirmed on appeal.
`
`
`Alstom ESCA Corporation. In ABB Power T&D Company v. Alstom ESCA Corporation et al.
`(N.D. Cal.), Mr. Weinstein was a member of a team representing Alstom in a six week federal jury
`trial involving claims for trade secret misappropriation, copyright infringement, breach of contract
`and a variety of business torts, which resulted in a unanimous verdict exonerating the client from
`liability. The technologies in the case related to hardware and software systems for the electric
`power industry.
`
`
`Advanced Modular Sputtering (AMS). In Sputtered Films, Inc. v. Advanced Modular Sputtering,
`Inc. et al. (Santa Barbara Sup. Ct.), Mr. Weinstein represented AMS in a trade secret case
`involving PVD sputtering technologies. The case generated an oft-cited decision clarifying
`California's statute requiring plaintiffs to identify their trade secrets, Advanced Modular Sputtering
`v. Superior Court, 132 Cal. App. 4th 826 (2005).
`
`
` Minerva Networks, Inc. In Myrio, Inc. v. Minerva Networks, Inc. (N.D. Cal.), Mark defended
`Minerva against trade secret, unfair competition and false advertising claims involving
`technologies for delivering television and multimedia services over broadband networks. The
`case settled favorably after the court ruled that Myrio had failed to adequately identify its trade
`secrets.
`
`Technology/IP Licensing
`
`
`
`DVD Copy Control Association (DVD CCA). In RealNetworks, Inc., et al. v. DVD Copy Control
`Association, Inc. et al. (N.D. Cal.) and DVD Copy Control Association, Inc. v. Kaleidescape, Inc.
`
`
`
`ServiceNow's Exhibit No. 1009
`
`002
`
`
`
`
`
`(Santa Clara Sup. Ct.), Mark represented the DVD CCA in two separate actions alleging breach
`of the technology license that covers use of the Content Scramble System (CSS) technology that
`is used to prevent copying of motion picture DVDs. DVD CCA obtained an injunction from the
`trial courts in both actions prohibiting sales of products that did not comply with the license. The
`Kaleidescape action is currently on appeal.
`
` Marshal Software. Mark represented Marshal, a leading producer of Internet security and anti-
`spam software, in three trademark and unfair competition lawsuits against competing companies.
`All three cases resulted in the defendants agreeing to rebrand their products to avoid any use of
`Marshal's trademarks.
`
`Mr. Weinstein is a frequent lecturer on all aspects of intellectual property protection and has taught classes
`at Santa Clara University School of Law. Prior to joining the Firm, Mr. Weinstein was a partner at a large
`international law firm and served as the managing partner in charge of that firm's Silicon Valley office. He is
`also a former law clerk for the Honorable Thomas J. Whelan, District Judge, United States District Court for
`the Southern District of California.
`
`Education
`
`
`
`
`
`University of San Diego School of Law
`JD, 1997
`
`University of California, San Diego
`BS, 1992
`
`Bar Admissions
`
`
`
`California
`
`Court Admissions
`
`
`
`
`
`
`
`
`
`
`
`U.S. Court of Appeals, Federal Circuit
`
`U.S. District Court, Central District of California
`
`U.S. District Court, Eastern District of Texas
`
`U.S. District Court, Northern District of California
`
`U.S. District Court, Southern District of California
`
`
`
`
`
`
`
`ServiceNow's Exhibit No. 1009
`
`003
`
`
`
`001
`
`ServiceNow's Exhibit No. 1010
`
`
`
`002
`
`ServiceNow's Exhibit No. 1010
`
`
`
`003
`
`ServiceNow's Exhibit No. 1010
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`
`
`I hereby certify, pursuant to 37 C.F.R. Sections 42.6, that a complete copy
`of the attached PETITIONER’S MOTION FOR PRO HAC VICE ADMISSION (Mark
`Weinstein) and related documents, are being electronically served on the 3d day
`of April, 2015, the same day as the filing of the above‐identified document in the
`United States Patent and Trademark Office/Patent Trial and Appeal Board, upon
`the Patent Owner by serving the correspondence address of record with the
`USPTO as follows:
`
`Joseph F. Haag
`Jason D. Kipnis
`Wilmer Cutler Pickering Hale and Dorr LLP
`950 Page Mill Road
`Palo Alto, CA 94304
`Joseph.Haag@wilmerhale.com
`Jason.Kipnis@wilmerhale.com
`WHIPDocketStaff@wilmerhale.com
`
`/ Heidi L. Keefe /
`Heidi L. Keefe
`Reg. No. 40,673
`
`
`
`DATED: April 3, 2015.
`
`COOLEY LLP
`ATTN: Heidi L. Keefe
`Patent Docketing
`1299 Pennsylvania Ave. NW, Suite
`700
`Washington, D.C. 20004
`Tel: (650) 843‐5001
`Fax: (650) 849‐7400
`
`114901842 v1