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DOCKET NO.: 0107945.00235US6
`Filed By: Donald R. Steinberg, Reg. No. 37,241
`David L. Cavanaugh, Reg. No. 36,476
`Michael H. Smith, Reg. No. 71,190
`60 State Street,
`Boston, Massachusetts 02109
`Tel: (617) 526-6000
`Email: Don.Steinberg@wilmerhale.com
`
` David.Cavanaugh@wilmerhale.com
`
` MichaelH.Smith@wilmerhale.com
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`
`
`
`
`ASML NETHERLANDS B.V., EXCELITAS TECHNOLOGIES CORP., AND QIOPTIQ
`PHOTONICS GMBH & CO. KG,
`Petitioners
`
`v.
`
`ENERGETIQ TECHNOLOGY, INC.,
`Patent Owner.
`
`Case IPR2015-01362
`
`
`
`PETITIONERS’ MOTION FOR ADMISSION PRO HAC VICE OF KEVIN
`S. PRUSSIA
`
`

`
`IPR2015-01362
`U.S. Patent No. 8,969,841
`
`Statement of Precise Relief Requested
`
`Pursuant to 37 C.F.R. § 42.10(c) and Paper No. 6 authorizing the parties to
`
`
`I.
`
`
`
`file motions for pro hac vice admission under 37 C.F.R. § 42.10(c), Petitioners
`
`ASML Netherlands B.V., Excelitas Technologies Corp., and Qioptiq Photonics
`
`GmbH & Co., KG (“Petitioners”) request that the Patent Trial and Appeal Board
`
`(the “Board”) admit Kevin S. Prussia pro hac vice in this proceeding, IPR2015-
`
`01362. Patent Owner Energetiq Technology, Inc. (“Patent Owner”) does not
`
`oppose this motion.
`
`II.
`
`
`
`Statement of Facts Showing Good Cause for the Board to Recognize
`Counsel Pro Hac Vice During the Proceeding
`
`In accordance with 37 C.F.R. § 42.10(c), the Board may recognize counsel
`
`pro hac vice during a proceeding upon a showing of good cause, subject to the
`
`condition that lead counsel be a registered practitioner and to any other conditions
`
`as the Board may impose. Section 42.10(c) indicates that “where lead counsel is a
`
`registered practitioner, a motion to appear pro hac vice by counsel who is not a
`
`registered practitioner may be granted upon a showing that counsel is an
`
`experienced litigating attorney and has an established familiarity with the subject
`
`matter at issue in the proceeding.” The facts here establish good cause for the
`
`Board to recognize Kevin S. Prussia pro hac vice in this proceeding.
`
`
`
`1
`
`

`
`1.
`
`Lead counsel, Donald R. Steinberg, is a registered practitioner.
`
`IPR2015-01362
`U.S. Patent No. 8,969,841
`
`
`
`
`Backup counsel, David L. Cavanaugh and Michael H. Smith, are also registered
`
`practitioners.
`
`
`
`2. Counsel, Kevin S. Prussia, is an experienced litigator and has an
`
`established familiarity with the subject matter at issue in the proceeding.
`
`Accompanying this motion as Exhibit 1026 is the Declaration of Kevin S. Prussia
`
`in Support of this Motion for Admission Pro Hac Vice (“Prussia Decl.”). In his
`
`declaration, Mr. Prussia asserts:
`
`I am a member in good standing of the Bar of Massachusetts
`and the Bar of New York, and am admitted to practice before
`the U.S. District Court for the District of Massachusetts, the
`U.S. Court of Appeals for the First Circuit, and the U.S. Court
`of Appeals for the Federal Circuit. I am also admitted to
`practice before the Supreme Judicial Court for Suffolk County,
`Massachusetts, and the State of New York Supreme Court
`Appellate Division, Third Judicial Dept.
`Prussia Decl. ¶ 2 (Ex. 1026). Mr. Prussia also states that he has been a part of
`
`numerous patent litigations that have concerned PTO rules and regulations:
`
`Over the course of my career, I have been counsel in dozens of
`patent litigations. Several of these cases have concerned Patent
`Office rules and regulations. For example, I have litigated a
`number of cases concerning the duty of candor to the Patent
`Office embodied in 37 C.F.R. § 1.56. Cases that I have been
`
`
`
`2
`
`

`
`IPR2015-01362
`U.S. Patent No. 8,969,841
`
`
`
`involved in which implicate this rule include Energetiq Tech.,
`Inc. v. ASML Netherlands B.V. et al., Civ. No.: 1:15-cv-10240-
`LTS (D. Mass.); In the Matter of Certain Laser-Driven Light
`Sources, Subsystems Containing Laser-Driven Light Sources,
`and Products Containing Same, Inv. No. 337-TA-983 (U.S.
`International Trade Commission); Summit 6 LLC v. Apple Inc.,
`Civ. No.: 7:14-cv-00106 (N.D. Tex.); and St. Clair Intellectual
`Property Consultants Inc. v. Research in Motion Ltd. et al.,
`Civ. No: 1:08-cv-00371 (D. Del.). In addition, Energetiq Tech.,
`Inc. v. ASML Netherlands B.V. et al., Civ. No.: 1:15-cv-10240-
`LTS (D. Mass.) also concerned Patent Office rules and
`regulations embodied in 37 C.F.R. § 1.27 regarding the
`definition and treatment of small entities.
`Prussia Decl. ¶ 4 (Ex. 1026). Mr. Prussia also asserts:
`
`I am familiar with the subject matter at issue in this proceeding.
`I have reviewed U.S. Patent No. 8,969,841 (the “‘841 patent”),
`which is being challenged in this proceeding, and I have
`reviewed the relevant prior art. Beginning in 2015 and
`continuing until the present, I have represented Petitioners
`ASML Netherlands B.V., Excelitas Technologies Corp., and
`Qioptiq Photonics GmbH & Co. KG in Energetiq Tech., Inc. v.
`ASML Netherlands B.V. et al., Civ. No.: 1:15-cv-10240-LTS
`(D. Mass.) (the “Energetiq litigation”), which is a related matter
`to this proceeding. The validity of the ’841 patent over the prior
`art raised in this proceeding is a contested issue in the Energetiq
`litigation. The validity of other patents in the same patent
`
`
`
`3
`
`

`
`IPR2015-01362
`U.S. Patent No. 8,969,841
`
`
`
`family as the ’841 patent over some of the prior art raised in
`this proceeding are also contested issues in the Energetiq
`litigation.
`Prussia Decl. ¶ 11 (Ex. 1026).
`
`3.
`In his declaration, Mr. Prussia also attests to each of the listed items
`
`required by the Order – Authorizing Motion for Pro Hac Vice Admission – 37
`
`C.F.R. § 42.10 in IPR2013-00639. See Prussia Decl. ¶¶ 2-11 (Ex. 1026). Mr.
`
`Prussia attests that he has read and will comply with the Office Patent Trial
`
`Practice Guide and the Board’s Rules of Practice for Trials set forth in 35 C.F.R. §
`
`42. Mr. Prussia further attests that he agrees to be subject to the United States
`
`Patent and Trademark Office’s Rules of Professional Conduct as set forth in 37
`
`C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
`
`See id. ¶ 9.
`
`
`
`
`
`
`
`4
`
`

`
`
`III. Conclusion
`
`IPR2015-01362
`U.S. Patent No. 8,969,841
`
`
`
`For the foregoing reasons, Petitioners respectfully request that the Board
`
`admit Kevin S. Prussia pro hac vice in this proceeding.
`
`Respectfully Submitted,
`
`/Donald R Steinberg/
`Donald R. Steinberg
`Registration No. 37,241
`Lead Counsel for Petitioners
`Wilmer Cutler Pickering
` Hale & Dorr LLP
`Tel: 617-526-6453
`Fax: 617-526-5000
`
`
`
`
`
`Date: March 2, 2016
`
`
`
`
`
`
`
`
`
`
`
`5
`
`

`
`
`
`
`IPR2015-01362
`U.S. Patent No. 8,969,841
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on March 2, 2016, I caused a true and correct copy of the
`
`following materials:
`
` Petitioners’ Motion For Admission Pro Hac Vice Of Kevin S. Prussia
`
` Petitioners’ Updated List of Exhibits
`
` Exhibit 1026: Declaration of Kevin S. Prussia in Support of Motion
`
`For Admission Pro Hac Vice
`
`to be served by electronic mail to the following address:
`
`PTABMattersBoston@proskauer.com.
`
`Respectfully Submitted,
`
`/Donald R Steinberg/
`Donald R. Steinberg
`Registration No. 37,241
`Wilmer Cutler Pickering
`
`Hale & Dorr LLP
`Tel: 617-526-6453
`Fax: 617-526-5000
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`
`IPR2015-01362
`U.S. Patent No. 8,969,841
`
`PETITIONERS’ UPDATED LIST OF EXHIBITS FOR
`IPR2015-01362
`
`
`Exhibit
`
`Description
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`U.S. Patent No. 8,969,841
`
`Chart of Patent Family Members
`
`Declaration of J. Gary Eden, Ph.D. Regarding U.S. Patent No.
`8,969,841, Claims 1, 2, 3, and 7 (“Eden Decl.”)
`
`French Patent Publication No. FR2554302A1, published May 3,
`1985 with English Translation and affidavit of translation (“Gärtner”)
`
`Japanese Patent Publication No. 2006010675A, published December
`1, 2006 with English Translation and affidavit of translation
`(“Kensuke”)
`
`William T. Silfvast, Laser Fundamentals, 2d ed., pp. 1-6; 199-222;
`565-68 (2004).
`
`Energetiq EQ-10M Soft X-Ray & EUV Source Data Sheet (2005)
`
`Office Action dated November 12, 2014
`
`Applicant’s Amendment and Response dated December 17, 2014
`
`Notice of Allowability dated January 22, 2015
`
`Second Declaration of Donald K. Smith, Ph.D. in Support of
`Energetiq’s Reply Brief In Support of Its Motion For Preliminary
`Injunction, Energetiq Technology, Inc. v. ASML Netherlands B.V., et
`al., Civil Action No. 1:15-cv-10240-LTS (D. Mass.), Dated
`3/17/2015 (“Second Smith Declaration”)
`
`Energetiq Technology, Inc. v. ASML Netherlands B.V. et al, Civil
`Action No. 1:15-cv-10240-LTS (D. Mass.), 3/17/2015 Reply Brief
`(Dkt. 66) (“PI Reply Brief”)
`
`i
`
`
`
`
`
`

`
`
`
`Exhibit
`
`Description
`
`IPR2015-01362
`U.S. Patent No. 8,969,841
`
`1013
`
`1014
`
`Declaration of Donald K. Smith, Ph.D. In Support of Energetiq’s
`Motion for A Preliminary Injunction, Energetiq Technology, Inc. v.
`ASML Netherlands B.V., et al., Civil Action No. 1:15-cv-10240-LTS
`(D. Mass.), Dated 2/6/2015 (“First Smith Declaration”)
`
`International Publication WO-2004097520, published November 11,
`2004 (“Mourou”)
`
`1015
`
`U.S. Patent No. 4,780,608 to Cross
`
`1016
`
`1017
`
`Handbook of Laser Technology and Applications, Vol. III:
`Applications (Colin E. Webb et al., eds.), Chapter D1.2, pp. 1587-
`1611 (2004) (“Handbook of Laser Tech.”)
`
`D. Keefer, “Laser Sustained Plasmas,” Chapter 4, in Radziemski et
`al., Laser-Induced Plasmas and Applications, pp. 169-206, CRC
`Press (1989)(“Keefer”)
`
`1018
`
`U.S. Patent No. 6,541,924 to Kane et al.
`
`1019
`
`1020
`
`1021
`
`1022
`
`Response to Non-Final Office Action, U.S. Patent Application No.
`13/024,027
`
`U.S. Patent No. 7,786,455
`
`U.S. Patent No. 7,435,982
`
`Michel Digonnet, Rare Earth Doped Fiber Lasers and Amplifiers, 2d
`ed. (2001), pp. 144-170.
`
`1023
`
`Kelin Kuhn, Laser Engineering, (1998), Chapter 12, pp. 384-440.
`
`1024
`
`1025
`
`1026
`
`
`
`I.M. Beterov, Resonance radiation plasma (photoresonance plasma),
`Sov. Phys. Usp. 31 (6), pp. 535-54 (1988) (“Beterov”)
`
`Bussiahn, “Experimental and theoretical investigations of a low-
`pressure He-Xe discharge for lighting purpose,” J. Appl. Phys. 95(9),
`pp. 4627-34 (May 1, 2004) (“Bussiahn”)
`
`Declaration of Kevin S. Prussia in Support of Motion for Admission
`ii
`
`

`
`IPR2015-01362
`U.S. Patent No. 8,969,841
`
`Exhibit
`
`Description
`Pro Hac Vice (“Prussia Decl.”)
`
`1027
`
`Declaration of James M. Dowd in Support of Motion for Admission
`Pro Hac Vice (“Dowd Decl.”)
`
`iii

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