IPR 2015-01440
`Patent No. 7,706,778
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`
`
`UniKey Technologies, Inc.,
`Petitioner
`
`v.
`
`ASSA ABLOY AB,
`Owner of U.S. Patent No. 7,706,778 to Lowe
`________________
`
`Case IPR2015-01440
`Patent No. 7,706,778
`________________
`
`PATENT OWNER’S MOTION FOR ADMISSION PRO HAC VICE OF
`RONALD P. OINES PURSUANT TO 37 C.F.R. §42.10
`
`
`
`
`2705/025100-0032
`8600326.1 a07/20/15
`
`
`
`
`
`Patent No. 7,706,778
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`
`
`UniKey Technologies, Inc.,
`Petitioner
`
`v.
`
`ASSA ABLOY AB,
`Owner of U.S. Patent No. 7,706,778 to Lowe
`________________
`
`Case IPR2015-01440
`Patent No. 7,706,778
`________________
`
`PATENT OWNER’S MOTION FOR ADMISSION PRO HAC VICE OF
`RONALD P. OINES PURSUANT TO 37 C.F.R. §42.10
`
`
`
`
`2705/025100-0032
`8600326.1 a07/20/15
`
`
`
`
`
`
`IPR 2015-01440
`Patent No. 7,706,778
`
`I.
`
`RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. §42.10 and the Board’s “Order -- Authorizing Motion
`
`for Pro Hac Vice Admission” in Case IPR2013-00639, Patent Owner ASSA
`
`ABLOY AB requests that the Board admit Ronald P. Oines pro hac vice in this
`
`proceeding.
`
`II.
`
`STATEMENT OF FACTS
`
`Pursuant to 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. For example, where
`the 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 showing that counsel is an experienced litigating
`attorney and has an established familiarity with the subject
`matter at issue in the proceeding
`
`
`37 C.F.R. §41.10(c).
`
`Ronald P. Oines is lead trial counsel in an ongoing district court patent
`
`infringement case (ASSA ABLOY AB v. Spectrum Brands, Inc., Civil Action No.
`
`14-cv-00947-CJC) involving the patent at issue in this proceeding. Mr. Oines has
`
`familiarity with the subject matter at issue in this proceeding. Mr. Oines has been
`
`actively involved in all aspects of the pending district court case, including the
`
`issue of validity of the patents-in-suit. (Id. ¶¶ 7-8.) Patent Owner therefore submits
`
`2705/025100-0032
`8600326.1 a07/20/15
`
`
`-2-
`
`
`
`IPR 2015-01440
`Patent No. 7,706,778
`that there is good cause to allow Mr. Oines to represent the Patent Owner pro hac
`
`vice in this proceeding. The facts, supported by the attached Declaration of Ronald
`
`P. Oines in Support of Motion for Admission Pro Hac Vice (“Oines Decl.”),
`
`establish good cause to admit Mr. Oines pro hac vice in this proceeding.
`
`1.
`
`Lead counsel Benjamin Deming is a registered practitioner and is
`
`experienced in inter partes proceedings in the USPTO.
`
`2. Mr. Oines is an experienced litigating attorney. Mr. Oines has been a
`
`litigating attorney for more than 25 years. (Oines Decl. ¶ 1.) Mr. Oines has been
`
`litigating patent cases for at least 20 of those years. (Id. ¶ 2.) Mr. Oines is a
`
`member in good standing of the California State Bar and the Texas State Bar, with
`
`no suspensions or disbarments from practice, nor any application for admission to
`
`practice denied, nor any sanctions or contempt citations, and is admitted to practice
`
`in the United States Court of Appeals for the Federal Circuit and Ninth Circuit, and
`
`the United States District Courts for the Central, Northern, Southern and Eastern
`
`Districts of California, the Eastern District of Texas and the Eastern District of
`
`Michigan. (Id. ¶¶ 3-6.)
`
`3. Mr. Oines has familiarity with the subject matter at issue in this
`
`proceeding based on his work as lead counsel in the pending district court case
`
`ASSA ABLOY AB v. Spectrum Brands, Inc., Civil Action No. 14-cv-00947-CJC,
`
`filed on June 19, 2014 in the U.S. District Court for the Central District of
`
`2705/025100-0032
`8600326.1 a07/20/15
`
`
`-3-
`
`
`
`IPR 2015-01440
`Patent No. 7,706,778
`California, which involves the same patent at issue in this proceeding. (Id. ¶ 7.) Mr.
`
`Oines has been actively involved in all aspects of the pending district court case,
`
`including the issue of validity of the patents-in-suit. (Id. ¶¶ 7-8.)
`
`4. Mr. Oines has read and will comply with the Office Patent Trial
`
`Practice Guide and the Board’s Rules for Practice for Trials set forth in part 42 of
`
`37 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. ¶¶ 9-10.) Aside from the companion proceeding Case
`
`IPR2015-01441, Mr. Oines has not applied to appear pro hac vice in any other
`
`proceedings before the Office in the last three (3) years. (Id. ¶ 11.)
`
`III. ANALYSIS
`
`The facts contained in the Statement of Facts above, and contained in the
`
`Oines Declaration, establish that there is good cause to admit Mr. Oines pro hac
`
`vice in this proceeding under 37 C.F.R. §42.10. Lead counsel is a registered
`
`practitioner, Mr. Oines is an experienced litigating attorney, and Mr. Oines has an
`
`established familiarity with the subject matter at issue in the proceeding.
`
`//
`
`//
`
`//
`
`//
`
`2705/025100-0032
`8600326.1 a07/20/15
`
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`-4-
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`
`
`IPR 2015-01440
`Patent No. 7,706,778
`
`IV. CONCLUSION
`
`For the foregoing reasons, Patent Owner ASSA ABLOY AB respectfully
`
`requests that the Board admit Ronald P. Oines pro hac vice in this proceeding.
`
`
`
`Respectfully Submitted,
`
`
`
`RUTAN & TUCKER LLP
`
`BY: /Benjamin Deming/
`Benjamin Deming
`RUTAN & TUCKER, LLP
`611 Anton Blvd.
`Suite 1400
`Costa Mesa, CA 92626
`T: 714-641-5100
`F: 714-546-9035
`bdeming@rutan.com
`
`
`
`
`
`2705/025100-0032
`8600326.1 a07/20/15
`
`
`-5-
`
`
`
`IPR 2015-01440
`Patent No. 7,706,778
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that the foregoing PATENT OWNER’S
`MOTION FOR ADMISSION PRO HAC VICE OF RONALD P. OINES
`PURSUANT TO 37 C.F.R. §42.10 was served on July 21, 2015, in its entirety on the
`following via Federal Express:
`
`
`
`
`
`Steven M. Bauer
`Reg. No. 31,481
`Proskauer Rose LLP
`One International Place
`Boston, MA 02110
`Tel: (617) 526-9700
`Fax: (617) 526-9899
`PTABMattersBoston@proskauer.com
`
`Joseph A. Capraro, Jr.
`Reg. No. 36,471
`Proskauer Rose LLP
`One International Place
`Boston, MA 02110
`Tel: (617) 526-9800
`Fax: (617) 526-9899
`jcapraro@proskauer.com
`
`RUTAN & TUCKER LLP
`
`BY: /Benjamin Deming/
`Benjamin Deming
`
`
`
`2705/025100-0032
`8600326.1 a07/20/15
`
`
`-6-
`
`
`
`IPR 2015-01440
`
`Patent No. 7,706,778
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`UniKey Technologies, Inc.,
`Petitioner
`
`V.
`
`ASSA ABLOY AB,
`
`Owner of U.S. Patent No. 7,706,778 to Lowe
`
`Case IPR2015—01440
`
`Patent No. 7,706,778
`
`DECLARATION OF RONALD P. OINES IN SUPPORT OF
`
`PATENT OWNER’S MOTION FOR ADMISSION PRO HAC VICE OF
`
`RONALD P. OINES PURSUANT TO 37 C.F.R. §42.10
`
`2705/025100-0032
`8600433.] 307/20/15
`
`
`
`IPR 2015-01440
`
`Patent No. 7,706,778
`
`I, Ronald P. Oines, declare as follows:
`
`1.
`
`I am an experienced litigating attorney with more than twenty—five
`
`years of experience.
`
`2.
`
`3.
`
`I have been litigating patent cases for at least twenty years.
`
`I am a member in good standing of the California State Bar and the
`
`Texas State Bar, and am admitted to practice in the United States Court of Appeals
`
`for the Federal Circuit and Ninth Circuit and the United States District Courts for
`
`the Central, Northern, Southern and Eastern Districts of California, the Eastern
`
`District of Texas, and the Eastern District of Michigan.
`
`4.
`
`I have never been suspended or disbarred from practice before any
`
`court or administrative body.
`
`5.
`
`I have never had an application for admission to practice before any
`
`court or administrative body denied.
`
`6.
`
`I have had no sanctions or contempt citations imposed against me by
`
`any court or administrative body.
`
`7.
`
`I am familiar with the subject matter at issue in this proceeding,
`
`including the patent-at-issue. I am lead counsel in the pending district court case
`
`ASSA ABLOY AB v. Spectrum Brands, Inc., Civil Action No. 14-cv-00947-CJC,
`
`filed on June 19, 2014 in the U.S. District Court for the Central District of
`
`California, which involves the same patent at issue in this proceeding.
`
`2705/025100-0032
`86004331 a07/20/15
`
`'2‘
`
`
`
`IPR 2015-01440
`
`Patent No. 7,706,778
`
`8.
`
`I am actively involved in all aspects of the pending district court case,
`
`including the issue of validity of the patents-in—suit, which include the patent at
`
`issue in this proceeding.
`
`9.
`
`I have 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 of 37 C.F.R.
`
`10.
`
`I agree to be subject to the USPTO Rules of Professional Conduct set
`
`forth in 37 C.F.R. §§1 1.101 et seq., and to disciplinary jurisdiction under 37 C.F.R.
`
`§ 1 1.19(a).
`
`11.
`
`I am concurrently submitting an application to appear pro hac vice in
`
`companion proceeding Case IPR2015-01441. Aside from the companion
`
`proceeding, I have not applied to appear pro hac vice in any proceeding before the
`
`Office in the last three (3) years.
`
`//
`
`//
`
`//
`
`86004331 a07/20/15
`2705/025100-0032
`
`'
`
`3
`
`'
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`
`
`IPR 2015-01440
`
`Patent No. 7,706,778
`
`12.
`
`I hereby declare that all statements made herein of my own
`
`knowledge are true and that all statements made on information and belief are
`
`believed to be true; and further that these statements are made with the knowledge
`
`that willful false statements and the like so made are punishable by fine or
`
`imprisonment, or both, under Section 1001 of Title 18 of the United States Code
`
`and that such willful false statements may jeopardize the Validity of U.S. Patent
`
`No. 7,706, 778.
`
`Dated:
`
`7 1 5“ l l gm
`
`BY:
`
`
`
`Ronald P. Oines
`
`2705/025100-0032
`86004311 2107/20/15
`
`'4'
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