UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
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`Samsung Electronics Co. Ltd., Samsung Electronics America, Inc., and Apple Inc.,
`Petitioners,
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`v.
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`Rosetta-Wireless Corporation,
`Patent Owner.
`______________
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`
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`Case IPR 2016-00622
`Patent 7,149,511
`______________
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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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`EXHIBIT LIST
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`Ex. 1005
`Ex. 1006
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`Ex. 1007
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`Ex. 1008
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`Ex. 1009
`Ex. 1010
`Ex. 1011
`Ex. 1012
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`Ex. 1013
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`Petitioners’ Exhibits
`Exhibit
`Description
`Ex. 1001
`U.S. Patent No. 7,149,511 to Bachner et al. (“the ’511 Patent”)
`Ex. 1002
`U.S. Patent No. 7,149,511 File History
`U.S. Patent No. 7,149,511 Ex Parte Reexamination
`Ex. 1003
`Declaration of Dr. Erez Zadok In Support of the Petition for Inter
`Ex. 1004
`Partes Review of United States Patent No. 7,149,511
`U.S. Patent No. 6,012,063 to Bodnar (“Bodnar”)
`Declaration of David Lobato and Exhibit A - HP Jornada 820/820e
`Handheld PC User’s Guide (“Jornada”)
`Declaration of David Lobato and Exhibit B - HP CapShare 920
`Portable E-Copier (“CapShare”)
`IEEE100 The Authoritative Dictionary of IEEE Standards Terms,
`7th ed.
`Declaration of Rogelio Jose
`Declaration of Fred Peal
`Declaration of Sharon Lee
`Declaration of Christopher Butler and Exhibit A - “EarthmateTM
`GPS Receiver: The Smart Way to Navigate” & Exhibit D -
`“EarthmateTM Accessories” (“DeLorme”)
`Declaration of Christopher Butler and Exhibit B - “HP Jornada
`External Keyboard (Part HP F1275A) Impressions” to Todd
`Ogasawara (“Ogasawara”)
`Declaration of Christopher Butler and Exhibit C - “1.2.3
`Representing Programs” (“Representing Programs”)
`Certificate of Authenticity by Amy Klenke and “Proxim
`Delivering Industry’s Lowest Priced Commercial Frequency
`Hopping Wireless LAN PC Card,” Business Wire (Mar. 29, 1999)
`(“Proxim”)
`U.S. Patent No. 6,446,137 to Vasudevan et al. (“Vasudevan”)
`U.S. Patent No. 5,805,804 to Laursen et al. (“Laursen”)
`U.S. Patent No. 6,052,735 to Ulrich et al. (“Ulrich”)
`U.S. Patent No. 5,790,551 to Chan (“Chan”)
`U.S. Patent Pub. 2001/0029178 to Criss et al. (“Criss”)
`U.S. Patent No. 6,311,058 to Wecker et al. (“Wecker”)
`U.S. Patent No. 5,625,673 to Grewe et al. (“Grewe”)
`U.S. Patent No. 6,434,403 to Ausems et al. (“Ausems”)
`U.S. Pub. No. 2004/0204041 to Fillebrown et al. (“Fillebrown”)
`U.S. Pat U.S. Patent No. 6,236,938 to Atkinson et al. ("Atkinson")
`MICROSOFT COMPUTER DICTIONARY 5th Ed (2002)
`U.S. Patent No. 5,297,192 (“Gerszberg”)
`Rosetta's Local Patent Rule 2.2 Initial Infringement Contentions,
`dated January 20, 2016
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`Ex. 1014
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`Ex. 1015
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`Ex. 1016
`Ex. 1017
`Ex. 1018
`Ex. 1019
`Ex. 1020
`Ex. 1021
`Ex. 1022
`Ex. 1023
`Ex. 1024
`Ex. 1025
`Ex. 1026
`Ex. 1027
`Ex. 1028
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`1
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`Declaration of Ingrid Hsieh-Yee
`Windows CE Developer’s Handbook by Terrence A. Goggin
`(“Goggin”)
`Essential Windows CE Application Programming to Robert
`Burdick (“Burdick”)
`Programming Microsoft Windows CE to Douglas Boling
`(“Boling”)
`U.S. Patent No. 5,978,805 to Carson (“Carson”)
`U.S. Patent No. 5,845,293 to Veghte et al. (“Veghte”)
`U.S. Patent No. 5,864,853 to Kimura et al. (“Kimura”)
`U.S. Patent No. 5,797,089 to Nguyen (“Nguyen”)
`U.S. Patent No. 6,512,919 to Ogasawara (“Pat. Ogasawara”)
`U.S. Patent No. 6,108,727 to Boals et al. (“Boals”)
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`Ex. 1029
`Ex. 1030
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`Ex. 1031
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`Ex. 1032
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`Ex. 2005
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`Ex. 2006
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`Ex. 2007
`Ex. 2008
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`Ex. 2009
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`Ex. 2010
`Ex. 2011
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`Ex. 1033
`Ex. 1034
`Ex. 1035
`Ex. 1036
`Ex. 1037
`Ex. 1038
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`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.
`Member benefits (available at
`https://www.oclc.org/membership/benefits.en.html)
`“Libraries Hope for Web 2.0 Shake-up with New Site,”
`Washington Internet Daily, Dec. 15, 2006.
`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
`Declaration of Daniel A. Zaheer supporting motion for pro hac
`vice admission
`Declaration of Michael Ng supporting motion for pro hac vice
`admission
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`Ex. 2012
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`Ex. 2013
`Ex. 2014
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`Ex. 2015
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`2
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`PRELIMINARY STATEMENT
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`Pursuant to 37 C.F.R. § 42.10(c) of the Code of Federal Regulations
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`(“Federal Regulations”), Patent Owner Rosetta-Wireless Corporation (“Patent
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`Owner” or “Rosetta”) respectfully requests the pro hac vice admission of Michael
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`Ng as backup counsel for Rosetta in the current proceedings. The Petitioners
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`Samsung Electronics Co. Ltd., Samsung Electronics America, Inc., and Apple Inc.,
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`(“Petitioners”) were consulted regarding this request, and have indicated through
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`counsel that they would not oppose. A declaration made by Mr. Ng in support of
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`this motion is attached hereto as Exhibit 2015.
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`I. Statement of Facts
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`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:
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`a. United States District Court for the Northern District of California
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`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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`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
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`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,
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`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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`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
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`/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
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`Attorney for Patent Owner Rosetta-
`Wireless Corp.
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`5
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`proceeding.
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`Dated: June 1, 2016
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`CERTIFICATE OF SERVICE
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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
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`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:
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`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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`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 /
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`Megan.Wantland@weil.com
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`Dated: June 1, 2016
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`KOBRE & KIM
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`/s/ Michael Ng
`Michael Ng (Pro Hac Vice Pending)
`Attorney for Patent Owner Rosetta-
`Wireless Corp.
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`6