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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`Apple Inc., Samsung Electronics Co. Ltd., and Samsung Electronics America, Inc.,
`Petitioners,
`
`
`
`v.
`
`Rosetta-Wireless Corporation,
`Patent Owner.
`______________
`
`
`
`Case IPR 2016-00616
`Patent 7,149,511
`______________
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`
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`PATENT OWNERS’ MOTION FOR PRO HAC VICE ADMISSION
`OF MICHAEL NG PURSUANT TO 37 C.F.R. § 42.10(c)
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`______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
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`
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`Apple Inc., Samsung Electronics Co. Ltd., and Samsung Electronics America, Inc.,
`Petitioners,
`
`
`
`v.
`
`Rosetta-Wireless Corporation,
`Patent Owner.
`______________
`
`
`
`Case IPR 2016-00616
`Patent 7,149,511
`______________
`
`
`
`PATENT OWNERS’ MOTION FOR PRO HAC VICE ADMISSION
`OF MICHAEL NG PURSUANT TO 37 C.F.R. § 42.10(c)
`______________
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`EXHIBIT LIST
`
`Ex. 2005
`
`Ex. 2006
`
`Ex. 2007
`Ex. 2008
`Ex. 2009
`Ex. 2010
`Ex. 2011
`
`Petitioners’ Exhibits
`Exhibit
`Description
`Ex. AP-1001 U.S. Patent No. 7,149,511 (challenged patent)
`Ex. AP-1002 Declaration of Dr. Nathaniel Polish
`Ex. AP-1003 Reexamination History of U.S. Patent No. 7,149,511
`Ex. AP-1004 U.S. Patent No. 5,864,853 to Kimura et al.
`Ex. AP-1005
`IEEE 100, THE AUTHORITATIVE DICTIONARY OF IEEE
`STANDARDS TERMS, 7th Ed. (2000) (excerpts)
`Ex. AP-1006 MICROSOFT COMPUTER DICTIONARY 5th Ed (2002)
`(excerpts)
`Ex. AP-1007 Patent Owner Rosetta’s Initial Infringement Contentions served
`in Co-Pending Litigation (excerpts)
`Ex. AP-1008 U.S. 5,978,805 to Carson
`Ex. AP-1009 U.S. 5,845,293 to Veghte et al.
`Ex. AP-1010 U.S. 5,797,089 to Nguyen
`Ex. AP-1011 U.S. 6,222,726 to Cha
`Ex. AP-1012 Graham, THE FACTS ON FILE, DICTIONARY OF
`TELECOMMUNICATIONS (1983) (excerpts)
`Patent Owner’s Exhibits
`Exhibit
`Description
`Ex. 2001
`Declaration of William H. Mangione-Smith, Ph.D.
`Ex. 2002
`ATP Proposal Preparation Kit
`Ex. 2003
`Email from David Nairn to Ed Bachner
`Ex. 2004
`“Moving Toward a Future of Ubiquitous Computing,”
`Technology@Intel Magazine
`“TECHNOLOGY; Verizon Plans Fast Internet for Cellphones,”
`New York Times, Jan. 9, 2004.
`“Data Over Cellular: A Look at GPRS,” Communication Systems
`Design, April 2000.
`Telecom & Networking Glossary, 1999.
`U.S. Patent Pub. 2001/0029178 to Criss et al.
`U.S. Patent No. 6,108,727 to Boals et al.
`Email from Sharon Shaffer to Keith Campbell
`ATP Project Brief: Wireless Replication of Enterprise Data for
`Instant Access by Mobile Workers
`“Wireless biz aims to link road warriors to office,” Crain’s
`Chicago Business, Jan. 14, 2002.
`Email chain between Sergio Fogel and Ed Bachner
`U.S. Patent No. 7,149,511 File History
`Declaration of Daniel A. Zaheer supporting motion for pro hac
`vice admission
`Declaration of Michael Ng supporting motion for pro hac vice
`admission
`
`Ex. 2012
`
`Ex. 2013
`Ex. 2014
`Ex. 2015
`
`Ex. 2016
`
`1
`
`
`
`
`
`
`
`PRELIMINARY STATEMENT
`
`Pursuant to 37 C.F.R. § 42.10(c) of the Code of Federal Regulations
`
`(“Federal Regulations”), Patent Owner Rosetta-Wireless Corporation (“Patent
`
`Owner” or “Rosetta”) respectfully requests the pro hac vice admission of Michael
`
`Ng as backup counsel for Rosetta in the current proceedings. The Petitioners Apple
`
`Inc., Samsung Electronics Co. Ltd., and Samsung Electronics America, Inc.
`
`(“Petitioners”) were consulted regarding this request, and have indicated through
`
`counsel that they would not oppose. A declaration made by Mr. Ng in support of
`
`this motion is attached hereto as Exhibit 2016.
`
`I. Statement of Facts
`
`1. Mr. Ng is a litigation attorney experienced in patent cases, and is admitted to
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`practice law in California, New York, and Mississippi as well as multiple Federal
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`Courts, including the following:
`
`a. United States District Court for the Northern District of California
`
`b. United States District Court for the Eastern District of California
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`c. United States District Court for the Central District of California
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`d. United States District Court for the Southern District of California
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`e. United States District Court for the Eastern District of Texas
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`f. United States District Court for the Northern District of Mississippi
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`g. United States District Court for the Southern District of Mississippi
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`2
`
`
`
`
`
`
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`h. United States District Court for the Southern District of New York
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`i. United States Court of the Appeals for the Second Circuit
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`j. United States Court of the Appeals for the Fifth Circuit
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`k. United States Court of the Appeals for the Ninth Circuit
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`l. United States Court of the Appeals for the Federal Circuit
`
`m. United States Supreme Court
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`2. Mr. Ng has not had any application denied for admission to practice, nor has
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`he been sanctioned, cited for contempt, suspended or disbarred from practice,
`
`before any court or administrative body.
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`3. Mr. Ng has an established familiarity with the subject matter at issue in this
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`proceeding, having represented Rosetta in District Court proceedings involving the
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`same technology (Rosetta-Wireless Corp. v. Apple Inc. et al., No. 15-cv-00799,
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`(N.D.Ill) and Rosetta-Wireless Corp. v. Samsung Electronics Co., Ltd. et al., No.
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`15-cv-10605, (N.D.Ill)). Mr. Ng has carefully studied the patent-in-suit, including
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`its prosecution history, and has conducted many interviews with the inventors
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`regarding their invention, the prosecution history and the patent. Mr. Ng is
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`intimately familiar with the positions taken by the petitioners and the other
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`defendants in the above litigation, and has provided counsel to the inventors in
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`connection with litigation involving a foreign counterpart in the United Kingdom.
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`Mr. Ng is an experienced patent litigator, having litigated dozens of patent
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`3
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`
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`infringement cases, for both plaintiffs and defendants, at both the district court and
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`Federal Circuit levels. Mr. Ng has, for example, served as lead trial and appellate
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`counsel for the Australian national science agency, Commonwealth Scientific and
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`Industrial Research Organisation, including in the currently pending CSIRO v.
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`Cisco, Eastern District of Texas Case No. 6-11-cv-343 and Federal Circuit Case
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`No. 15-1066.
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`4. Mr. Ng has read and will comply with the Office Patent Trial Practice Guide
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`and the Board’s Rules of Practice for Trials set forth in part 42 of the C.F.R.
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`II. Conclusion
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`For the reasons stated above, Patent Owner respectfully submits that there is
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`good cause for the Board to recognize Michael Ng pro hac vice during the
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`
`KOBRE & KIM
`
`
`
`
`/s/ Michael Ng
`Michael Ng (Pro Hac Vice Pending)
`Kobre & Kim LLP
`150 California, 19th Floor
`San Francisco, California 94111
`michael.ng@kobrekim.com
`(415) 582-4803
`
`Attorney for Patent Owner Rosetta-
`Wireless Corp.
`
`
`4
`
`proceeding.
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`
`
`Dated: June 1, 2016
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`CERTIFICATE OF SERVICE
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`
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`The undersigned certifies that pursuant to 37 C.F.R. § 42.6(e), a copy of the
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`foregoing PATENT OWNERS’ MOTION FOR PRO HAC VICE ADMISSION
`
`OF MICHAEL NG PURSUANT TO 37 C.F.R. § 42.10(c) was served via email to
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`lead and backup counsel of record for Petitioners as follows:
`
`Megan Raymond and Steven Baughman of Ropes & Gray LLP
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`Megan.Raymond@ropesgray.com / Steven.Baughman@ropesgray.com
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`
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`Brian E. Ferguson, Anish R. Desai, and Megan H. Wantland of Weil, Gotshal &
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`Manges LLP Brian.Ferguson@weil.com / Anish.Desai@weil.com /
`
`Megan.Wantland@weil.com
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`Dated: June 1, 2016
`
`
`
`
`
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`KOBRE & KIM
`
`
`
`
`/s/ Michael Ng
`Michael Ng (Pro Hac Vice Pending)
`Attorney for Patent Owner Rosetta-
`Wireless Corp.
`
`
`
`5
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