Filed on behalf of Nalco Company
`
`By: Anthony R. Zeuli, Reg. No. 45,255
`Merchant & Gould P.C.
`3200 IDS Center
`80 South 8th Street
`Minneapolis, MN 55402
`Tel:
`(612) 371-5208
`Fax: (612) 332-9081
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SOLENIS LLC
`
`Petitioner,
`
`v.
`
`NALCO COMPANY
`
`Patent Owner.
`____________
`
`Case IPR2016-01281
`Patent 8,465,623
`____________
`
`PATENT OWNER’S MOTION FOR ADMISSION PRO HAC VICE OF
`RACHEL ZIMMERMAN SCOBIE UNDER 37 C.F.R. § 42.10(C)
`
`
`
`
`
`
`
`By: Anthony R. Zeuli, Reg. No. 45,255
`Merchant & Gould P.C.
`3200 IDS Center
`80 South 8th Street
`Minneapolis, MN 55402
`Tel:
`(612) 371-5208
`Fax: (612) 332-9081
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SOLENIS LLC
`
`Petitioner,
`
`v.
`
`NALCO COMPANY
`
`Patent Owner.
`____________
`
`Case IPR2016-01281
`Patent 8,465,623
`____________
`
`PATENT OWNER’S MOTION FOR ADMISSION PRO HAC VICE OF
`RACHEL ZIMMERMAN SCOBIE UNDER 37 C.F.R. § 42.10(C)
`
`
`
`
`
`
`
`Case IPR2016-01281
`Patent 8,465,623
`
`RELIEF REQUESTED
`
`Under 37 C.F.R. § 42.10(c), and in accordance with the Board’s “Order –
`
`Authorizing Motion for Pro Hac Vice Admission” in case IPR 2016-01281, Patent
`
`Owner requests that the Board admit Rachel Zimmerman Scobie pro hac vice in
`
`this proceeding.
`
`GOVERNING LAWS, RULES, AND PRECEDENT
`
`Section 42.10(c) provides 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 any other conditions as the Board may
`
`impose.” The Rule provides that counsel who is not a recognized 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.”
`
`The Board’s July 6, 2016, Notice of Filing Date Accorded to Petition, Paper
`
`No. 4, authorized the parties to file motions for pro hac vice admission under 37
`
`C.F.R. § 42.10(c). The Notice provided pro hac vice motions shall be filed in
`
`accordance with the “Order – Authorizing Motion for Pro Hac Vice Admission” in
`
`Case IPR2013-00639, which provides guidelines for admission under 37 C.F.R. §
`
`42.10(c).
`
`
`
`1
`
`
`
`Case IPR2016-01281
`Patent 8,465,623
`
`The “Order – Authorizing Motion for Pro Hac Vice Admission” in Case
`
`IPR2013-00639 states that motions for pro hac vice shall “[c]ontain a statement of
`
`facts showing there is good cause for the Board to recognize counsel pro hac vice
`
`during the proceeding.” The Order further provides the motion is to be
`
`“accompanied by an affidavit or declaration of the individual seeing to appear
`
`attesting to the following:
`
`i. Membership in good standing of the Bar of at least one State or the
`
`District of Columbia;
`
`ii.
`
`No suspensions or disbarments from practice before any court or
`
`administrative body;
`
`iii. No application for admission to practice before any court or
`
`administrative body ever denied;
`
`iv. No sanctions or contempt citations imposed by any court or
`
`administrative body;
`
`v.
`
`The individual seeking to appear has 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.;
`
`vi.
`
`The individual will be subject to the USPTO Rules of Professional
`
`Conduct set forth in 37 C.F.R. §§ 11.101 et. seq. and disciplinary
`
`jurisdiction under 37 C.F.R. § 11.19(a);
`
`2
`
`
`
`
`
`Case IPR2016-01281
`Patent 8,465,623
`
`vii. All other proceedings before the Office for which the individual has
`
`applied to appear pro hac vice in the last three (3) years; and
`
`viii. Familiarity with the subject matter at issue in the proceeding.”
`
`TIME OF FILING
`
`In accordance with the rules, this motion is being filed no sooner than
`
`twenty one (21) days after service of the petition.
`
`STATEMENT OF THE FACTS
`
`The following facts, supported by the attached Declaration of Rachel
`
`Zimmerman Scobie in Support of Patent Owner’s Motion for Admission Pro Hac
`
`Vice, establish good cause to recognize Ms. Scobie pro hac vice in this proceeding.
`
`There is good cause for the Board to recognize counsel Rachel Zimmerman
`
`Scobie pro hac vice during this proceeding.
`
`Patent Owner’s Lead counsel, Anthony R. Zeuli, is a registered practitioner
`
`(Reg. No. 45,255).
`
`Counsel Rachel Zimmerman Scobie is an experienced litigating attorney.
`
`Ms. Scobie is a partner at the law firm of Merchant & Gould P.C. Ms. Scobie has
`
`been a litigating attorney for more than 13 years. Scobie Decl., ¶ 8. Her experience
`
`includes representing a wide range of clients in intellectual property litigation. Ms.
`
`Scobie has been litigating patent cases for more than 13 years. Id., ¶ 9.
`
`
`
`3
`
`
`
`Case IPR2016-01281
`Patent 8,465,623
`
`Ms. Scobie has established familiarity with the subject matter at issue in this
`
`proceeding. Ms. Scobie is counsel for Patent Owner in a co-pending district court
`
`litigation filed by Patent Owner. Id., ¶ 10. That litigation is captioned Nalco
`
`Company v. Solenis LLC, U.S.D.C., Northern District of Illinois, Civil Action No.
`
`1:15-cv-08913. Id. The litigation involves the same patent at issue in this
`
`proceeding. Id. Ms. Scobie, as counsel for Patent Owner, has been actively
`
`involved in the district court litigation. Id., ¶ 11.
`
`During the co-pending litigation, Ms. Scobie has worked on analyzing and
`
`defending against the invalidity positions, including those based on some of the
`
`same references raised in the Petition, advanced by Defendant/Petitioner Solenis
`
`LLC. She is thus familiar with the prior art relied upon in the Petitioner’s Petition
`
`as well as the patent at issue. Id., ¶ 11.
`
`Ms. Scobie is in good standing and admitted to practice law in the State of
`
`Minnesota, and before various federal courts, including the United States District
`
`Court for the District of Minnesota, the United States District Court for the
`
`Western District of Wisconsin, the United States District Court for the Eastern
`
`District of Wisconsin, the United States Court of Appeals for the Federal Circuit,
`
`the United States Court of Appeals for the Seventh Circuit, and the United States
`
`Court of Appeals for the Eighth Circuit. Id., ¶ 1.
`
`
`
`4
`
`
`
`Case IPR2016-01281
`Patent 8,465,623
`
`Ms. Scobie has had no suspensions or disbarments from practice before any
`
`court or administrative body. Id., ¶ 2.
`
`Ms. Scobie has never been denied application to practice before any court or
`
`administrative body. Id., ¶ 3.
`
`Ms. Scobie has never been sanctioned or cited for contempt by any court or
`
`administrative body. Id., ¶ 4.
`
`Ms. Scobie has 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.
`
`Id., ¶ 5.
`
`Ms. Scobie has agreed to be subject to the United States Patent and
`
`Trademark Office 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). Id., ¶ 6.
`
`Ms. Scobie has previously applied (under her former name Rachel K.
`
`Zimmerman) to appear pro hac vice before the Office in proceeding No. IPR2014-
`
`00219. Id., ¶ 7. Ms. Scobie is applying concurrently to appear pro hac vice before
`
`the Office in proceeding No. IPR2016-01282. Id., ¶ 7.
`
`ANALYSIS
`
`37 C.F.R. § 42.10(c) states that 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
`
`
`
`5
`
`
`
`Case IPR2016-01281
`Patent 8,465,623
`
`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.” The “Order -- Authorizing Motion for Pro Hac Vice Admission” in
`
`Case IPR2013-00639 clarified the requirements for a motion for pro hac vice
`
`admission under 37 C.F.R. § 42.10(c).
`
`The Statement of Facts, above, and the Scobie Declaration establish that
`
`there is good cause to admit Ms. Scobie pro hac vice in this proceeding under 37
`
`C.F.R. § 42.10(c). Lead counsel, Anthony R. Zeuli, is a registered practitioner. Ms.
`
`Scobie is an experienced litigating attorney with over thirteen (13) years of
`
`experience litigating patents. Ms. Scobie has established familiarity with the
`
`subject matter at issue in the proceeding. She is counsel for Patent Owner in co-
`
`pending district court litigation involving the same patent at issue in this
`
`proceeding.
`
`Admission of Ms. Scobie pro hac vice will enable Patent Owner to avoid
`
`unnecessary expense and duplication of work between this proceeding and its
`
`district court litigation. See 77 Fed. Reg. 157 (Aug. 14, 2012), at 48661 (Office’s
`
`comment on final rule discussing concerns about efficiency and costs where an
`
`entity has already engaged counsel for parallel district court litigation). As
`
`
`
`6
`
`
`
`Case IPR2016-01281
`Patent 8,465,623
`
`litigation counsel for Patent Owner, Ms. Scobie has been actively involved in all
`
`aspects of the district court litigation. In view of Ms. Scobie’s knowledge of the
`
`subject matter at issue in the district court proceeding and the overlapping
`
`knowledge of the subject matter in this proceeding, Patent Owner has a substantial
`
`need for Ms. Scobie’s pro hac vice admission and involvement in this proceeding.
`
`Counsel for Patent Owner have met and conferred with counsel for
`
`Petitioner. Counsel for Petitioner has not provided a final indication of whether it
`
`will oppose this motion.
`
`CONCLUSION
`
`For the reasons stated above, Patent Owner respectfully requests that the
`
`Board admit Rachel Zimmerman Scobie to appear pro hac vice in this proceeding.
`
`
`
`Respectfully submitted,
`MERCHANT & GOULD P.C.
`
`
`
`/Anthony R. Zeuli/
`Anthony R. Zeuli, Reg. No. 45,255
`Merchant & Gould P.C.
`3200 IDS Center
`80 South 8th Street
`Minneapolis, MN 55402
`Telephone: (612) 371-5208
`Fax: (612) 332-9081
`Email: tzeuli@merchantgould.com
`NalcoIPR@merchantgould.com
`
`ATTORNEYS FOR PATENT OWNER
`
`Date: August 31, 2016
`
`
`
`
`
`
`
`
`
`
`(Trial No. IPR2016-01281)
`
`
`
`7
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