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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`CLARK FILTER, INC.
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`Petitioner,
`
`v.
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`CAMFIL USA, INC., d/b/a CAMFIL AIR POLLUTION CONTROL,
`
`Patent Owner.
`
`_____________________
`
`Case No. IPR2016-00987
`
`U.S. Patent No. 9,174,155
`_____________________
`
`
`
`MOTION FOR ADMISSION PRO HAC VICE OF JESSICA HUTSON
`POLAKOWSKI PURSUANT TO 37 C.F.R. §42.10
`
`
`
`
`
`
`
`
`
`
`
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`CLARK FILTER, INC.
`
`Petitioner,
`
`v.
`
`CAMFIL USA, INC., d/b/a CAMFIL AIR POLLUTION CONTROL,
`
`Patent Owner.
`
`_____________________
`
`Case No. IPR2016-00987
`
`U.S. Patent No. 9,174,155
`_____________________
`
`
`
`MOTION FOR ADMISSION PRO HAC VICE OF JESSICA HUTSON
`POLAKOWSKI PURSUANT TO 37 C.F.R. §42.10
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-00987
`U.S. Pat. 9,174,155
`
`
`I.
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`RELIEF REQUESTED
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`Pursuant to 37 C.F.R. §42.10 and the Board's authorization to file motions
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`for pro hac vice admission set forth in the Notice of Filing Date Accorded Petition
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`entered May 4, 2016, Petitioner Clark Filter, Inc. requests that the Board admit
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`Jessica H. Polakowski pro hac vice as back-up counsel in this proceeding.
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`II.
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`STATEMENT OF FACTS
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`Pursuant to 37 C.F.R. §42.10(c), the Board
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`may recognize counsel pro hac vice during a proceeding upon a
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`showing of good cause, subject to the condition that lead counsel be a
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`registered practitioner and to any other conditions as the Board may
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`impose. For example, where the lead counsel is a registered
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`practitioner, a motion to appear pro hac vice by counsel who is not a
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`registered practitioner may be granted upon showing that counsel is an
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`experienced litigating attorney and has an established familiarity with
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`the subject matter at issue in the proceeding.
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`37 C.F.R. §42.10(c). Further, the Board has required that a motion for pro hac vice
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`admission be filed in accordance with the “Order – Authorizing Motion for Pro
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`Hac Vice Admission” in case IPR2013-00639, Paper 7 (“Representative Order”).
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`The Representative Order states that the motion must “[c]ontain a statement of
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`facts showing there is good cause for the Board to recognize counsel pro hac vice
`
`1
`
`
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`IPR2016-00987
`U.S. Pat. 9,174,155
`
`
`during the proceeding[,]” and “[b]e accompanied by an affidavit or declaration of
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`the individual seeking to appear attesting to the following:”
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`i. Membership in good standing of the Bar of at least one State or the District
`
`of Columbia;
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`ii. No suspensions or disbarments from practice before any court or
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`administrative body;
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`iii. No application for admission to practice before any court or administrative
`
`body ever denied;
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`iv. No sanctions or contempt citations imposed by any court or administrative
`
`body;
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`v. The individual seeking to appear has read and will comply with the Office
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`Patent Trial Practice Guide and the Board’s Rules of Practice for Trials set
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`forth in part 42 of the C.F.R.;
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`vi. The individual will be subject to the USPTO Code of Professional
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`Responsibility set forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary
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`jurisdiction under 37 C.F.R. § 11.19(a);
`
`2
`
`
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`IPR2016-00987
`U.S. Pat. 9,174,155
`
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`vii. All other proceedings before the Office for which the individual has applied
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`to appear pro hac vice in the last three (3) years; and
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`viii. Familiarity with the subject matter at issue in the proceeding.
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`The facts, supported by the attached Declaration of Jessica H. Polakowski in
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`Support of Motion for Admission Pro Hac Vice ("Polakowski Decl."), establish
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`good cause to admit Ms. Polakowski pro hac vice in this proceeding.
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`1.
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`Lead counsel, Robert A. Lawler, is a registered practitioner and is
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`experienced in inter partes proceedings in the USPTO.
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`2.
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`Backup counsel, Andrew J. Heinisch, is a registered practitioner and
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`is experienced in inter partes proceedings in the USPTO.
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`3. Ms. Polakowski is an experienced litigating attorney with more than
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`ten (10) years of experience. (Polakowski Decl. ¶ 1.) Ms. Polakowski has been
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`litigating patent cases for at least eight (8) of those years. (Id. ¶ 2.) Ms.
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`Polakowski is a member in good standing of the Wisconsin State Bar, with no
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`suspensions or disbarments from practice, nor any application for admission to
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`practice denied, nor any sanctions or contempt citations, and is admitted to practice
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`in the United States Court of Appeals for the 7th Circuit, United States District
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`Courts for the Eastern and Western Districts of Wisconsin and the United States
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`District Courts for the Northern District of Illinois. (Id. ¶¶ 3-6.)
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`3
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`
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`IPR2016-00987
`U.S. Pat. 9,174,155
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`4. Ms. Polakowski has familiarity with the technology and subject matter
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`at issue in this proceeding, including the Petition challenging Pat. No. U.S.
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`9,174,155, and with the Petition in the related proceeding IPR2016-00982. Ms.
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`Polakowski is familiar with the challenged patent, the prior art cited in this
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`proceeding, and facts and opinions set forth in Petitioner’s expert declaration. Ms.
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`Polakowski is also familiar with the Patent Owner’s Preliminary Response (filed
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`August 4, 2016), and the exhibits and declarations filed therewith, and the co-
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`pending litigation regarding the challenged patent. (Id. ¶¶ 7-8.)
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`5. Ms. Polakowski has read and will comply with the Office Patent Trial
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`Practice Guide and the Board's Rules for Practice for Trials set forth in part 42 of
`
`the C.F.R., and she agrees to be subject to the USPTO Code of Professional
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`Responsibility set forth in 37 C.F.R. §§10.20 et seq., and to disciplinary
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`jurisdiction under 37 C.F.R. §11.19(a). (Id. ¶¶ 9-10.)
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`6. Ms. Polakowski appeared pro hac vice in three related proceedings
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`before the Office in the last three (3) years: IPR2012-0006, IPR2012-00007 and
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`IPR2013-00011, each styled Illumina, Inc. v. The Trustees of Columbia University
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`in the City of New York. Each of these proceedings reached a Final Written
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`Decision on March 6, 2014. (Id. ¶ 11.)
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`7. Ms. Polakowski will be simultaneously applying to appear pro hac
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`vice in this proceeding and IPR2016-00982.
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`4
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`IPR2016-00987
`U.S. Pat. 9,174,155
`
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`8.
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`Patent Owner, Camfil USA, Inc., has indicated that this Motion will
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`not be opposed.
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`Based on the foregoing, Petitioner Clark Filter, Inc., respectfully requests
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`that the Board admit Jessica Hutson Polakowski pro hac vice as back-up counsel in
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`this proceeding.
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`The undersigned attorneys welcome a telephone call should the Board have
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`any additional requests or questions.
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`Date: September 27, 2016
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`Respectfully submitted,
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`By: /Robert A. Lawler/
`Robert A. Lawler
`USPTO Reg. No. 62,075
`rlawler@reinhartlaw.com
`Andrew J. Heinisch
`USPTO Reg. No. 43,666
`aheinisch@reinhartlaw.com
`Reinhart Boerner Van Deuren s.c.
`2215 Perrygreen Way
`Rockford, IL 61107
`Telephone: 815-633-5300
`
`
`5
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`
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`IPR2016-00987
`U.S. Pat. 9,174,155
`
`
`
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`CERTIFICATE OF SERVICE
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`I hereby certify that a copy of the foregoing MOTION FOR ADMISSION
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`PRO HAC VICE OF JESSICA HUTSON POLAKOWSKI and a copy of the
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`referenced DECLARATION OF JESSICA HUTSON POLAKOWSKI therein
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`were served today, September 27, 2016, on counsel for Patent Owner to the
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`following e-mail addresses of record:
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`Lead Counsel Jayme Partridge: jpartridge@pattersonsheridan.com
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`Back-up Counsel Keith Taboada: ktaboada@pattersonsheridan.com
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`Back-up Counsel B. Todd Paterson: tpatterson@pattersonsheridan.com.
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`The parties have agreed to electronic service.
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`
`Date: September 27, 2016
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`Respectfully submitted,
`
`By: /Robert A. Lawler/
`Robert A. Lawler
`USPTO Reg. No. 62,075
`rlawler@reinhartlaw.com
`Andrew J. Heinisch
`USPTO Reg. No. 43,666
`aheinisch@reinhartlaw.com
`Reinhart Boerner Van Deuren s.c.
`2215 Perrygreen Way
`Rockford, IL 61107
`Telephone: 815-633-5300
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