UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`AGILTRON, INC.,
`Petitioner
`
`v.
`
`MEMSCAP S.A.,
`Patent Owner
`
`_______________
`
`Patent 6,262,512
`Issue Date: July 17, 2001
`
`Title: THERMALLY ACTUATED MICROELECTROMECHANICAL
`SYSTEMS INCLUDING THERMAL ISOLATION STRUCTURES
`_______________
`
`Case IPR: IPR2016-01683
`_______________
`
`PATENT OWNER’S MOTION FOR PRO HAC VICE
`ADMISSION OF BENJAMIN T. HORTON
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`AGILTRON, INC.,
`Petitioner
`
`v.
`
`MEMSCAP S.A.,
`Patent Owner
`
`_______________
`
`Patent 6,262,512
`Issue Date: July 17, 2001
`
`Title: THERMALLY ACTUATED MICROELECTROMECHANICAL
`SYSTEMS INCLUDING THERMAL ISOLATION STRUCTURES
`_______________
`
`Case IPR: IPR2016-01683
`_______________
`
`PATENT OWNER’S MOTION FOR PRO HAC VICE
`ADMISSION OF BENJAMIN T. HORTON
`
`
`
`PATENT OWNER’S MOTION FOR PRO HAC VICE
`ADMISSION OF BENJAMIN T. HORTON
`
`I.
`
`Requested Relief
`
`Pursuant to 37 C.F.R. § 42.10 and the Board’s “Notice of Filing Date
`
`Accorded to Petition and Time for Filing Patent Owner Preliminary Response,”
`
`(Paper No. 3), dated September 7, 2016, the Patent Owner requests the Board to
`
`admit Benjamin T. Horton pro hac vice in this proceeding to serve as backup
`
`counsel for MEMSCAP S.A. in this inter partes review.
`
`II.
`
`Statement of Facts Showing Good Cause for the Requested Relief
`
`The Board may recognize counsel pro hac vice during an inter partes review
`
`proceeding upon a showing of good cause, subject to the condition that lead
`
`counsel be a registered practitioner and to any other conditions the Board may
`
`impose. See 37 C.F.R. § 42.10(c). Where “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 a showing that counsel is an experienced litigating attorney and
`
`has an established familiarity with the subject matter at issue in the proceeding.”
`
`Id. The Patent Owner respectfully submits that the following facts establish good
`
`cause for the Board to recognize Mr. Horton pro hac vice during this proceeding.
`
`Further, the Board requires that a motion for pro hac vice admission be filed
`
`in accordance with the “Order – Authorizing Motion for Pro Hac Vice Admission”
`
`in Case IPR2013-00639, Paper 7 (“Representative Order”). The Representative
`
`-1-
`
`
`
`Order states that the motion must “[c]ontain a statement of facts showing there is
`
`good cause for the Board to recognize counsel pro hac vice during the
`
`proceedings,” and “[b]e accompanied by an affidavit or declaration of the
`
`individual seeking to appear attesting to the following:”
`
`1.
`
`Lead counsel, Michael P. Furmanek, is a registered practitioner (Registration
`
`No. 58,495).
`
`2.
`
`Back-up counsel, Ryan N. Phelan, is a registered practitioner (Registration
`
`No. 60,674).
`
`3.
`
`Mr. Horton is a partner at the law firm of Marshall, Gerstein & Borun LLP.
`
`(See Exh. 2001 (Horton Declaration) at ¶ 1.)
`
`4.
`
`Mr. Horton has been practicing in the field intellectual property, and
`
`particularly patent litigation, for approximately eleven years. (Id. at ¶ 2.)
`
`5.
`
`Mr. Horton is a member in good standing of the Bar of the State of Illinois,
`
`as well as the United States District Court for the Northern District of
`
`Illinois, including the Trial Bar for the Northern District of Illinois, and has
`
`also been admitted to practice pro hac vice in a number of other Federal
`
`District courts. (Id. at ¶ 3.)
`
`6.
`
`Mr. Horton has never been suspended or disbarred from practice before any
`
`court or administrative body. (Id. at ¶ 4.)
`
`-2-
`
`
`
`7.
`
`Mr. Horton has never had an application for admission to practice before any
`
`court or administrative body denied. (Id. at ¶ 5.)
`
`8.
`
`Mr. Horton has never had sanctions or contempt citations imposed upon him
`
`by any court or administrative body. (Id. at ¶ 6.)
`
`9.
`
`Mr. Horton 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 the
`
`Code of Federal Regulations. (Id. at ¶ 7.)
`
`10. Mr. Horton has read and will abide by and be subject to the U.S. Patent and
`
`Trademark Office Code of Professional Responsibility set forth in 37 C.F.R.
`
`§ 11.101 et. seq. and the Office’s disciplinary jurisdiction under 37 C.F.R.
`
`§ 11.19(a). (Id. at ¶ 8.)
`
`11. Mr. Horton has been admitted in proceedings before the Office in the past
`
`three years, specifically IPR2014-01536. (Id. at ¶ 9.)
`
`12. Mr. Horton is lead counsel for MEMSCAP S.A. in related litigation
`
`involving the ’512 patent, MEMSCAP, S.A. v. Agiltron, Inc., C.A. 1:15-cv-
`
`00796-RGA (D. Del.). (Id. at ¶ 10.)
`
`13. Mr. Horton is an experienced litigation attorney and he is familiar with the
`
`subject matter at issue in the proceeding. He has spent substantial time
`
`reviewing and analyzing the patent at issue in this proceeding, its file
`
`history, the Petition and the references cited therein. (Id. at ¶ 11.) As a
`
`-3-
`
`
`
`result, Mr. Horton has acquired substantial understanding of the underlying
`
`legal and technological issues at stake in this proceeding. Patent Owner has
`
`spent time and resources consulting with Mr. Horton as counsel in this and
`
`other matters involving the patent at issue in this proceeding and wishes to
`
`continue using Mr. Horton as counsel in this proceeding. (Id.)
`
`14.
`
`Further, in his declaration, Mr. Horton attests to each of the listed items
`
`required by 37 C.F.R. § 42.10(c). (See Id. at ¶¶ 1-12.)
`
`III. Conclusion
`
`For the foregoing reasons, Patent Owner respectfully requests the Board to
`
`admit Benjamin T. Horton pro hac vice in this proceeding to serve as backup
`
`counsel for MEMSCAP S.A. in this inter partes review.
`
`September 20, 2016
`
`Respectfully submitted,
`
`/Michael P. Furmanek #58,495/
`Michael P. Furmanek (Reg. No. 58,495)
`mfurmanek@marshallip.com
`Lead Counsel for Patent Owner
`
`/Ryan N. Phelan #60,674/
`Ryan N. Phelan (Reg. No. 60,674)
`rphelan@marshallip.com
`Back-up Counsel for Patent Owner
`
`MARSHALL, GERSTEIN & BORUN LLP
`6300 Willis Tower
`233 South Wacker Drive
`Chicago, Illinois 60606-6357
`Telephone: (312) 474-6300
`mgblitdocket@marshallip.com
`-4-
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on September 20, 2016, pursuant to 37
`
`CFR §§ 42.6(b)(1) and (e), a copy of the foregoing PATENT OWNER MOTION
`
`FOR PRO HAC VICE ADMISSION OF BENJAMIN T. HORTON and Exh. 2001
`
`thereto are being electronically filed via the Patent Review Processing System
`
`(PRPS), and are being served via electronic mail on counsel for the Patent Owner
`
`as part of the PRPS as follows:
`
`Thomas O. Hoover
`McCarter & English, LLP
`265 Franklin St.
`Boston, MA 02110
`E: thoover@mccarter.com
`
`September 20, 2016
`
`/Michael P. Furmanek #58,495/
`Michael P. Furmanek
`MARSHALL, GERSTEIN & BORUN LLP
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
