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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ROCKWELL AUTOMATION, INC. and
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`ROCKWELL AUTOMATION TECHNOLOGIES, INC.,
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`Petitioner,
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`v.
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`AUTOMATION MIDDLEWARE SOLUTIONS, INC.,
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`Patent Owner.
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`____________
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`Case IPR2017-00048
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`Patent 6,516,236 Bl
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`____________
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`PATENT OWNER’S MOTION FOR PRO HAC VICE ADMISSION OF
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`CHRISTOPHER LIMBACHER
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`UNDER 37 C.F.R. § 42.10(c)
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`IPR2017-00048
`U.S. Patent No. 6,516,236
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`I. Relief Requested
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`Pursuant to 37 C.F.R. § 42.10, Patent Owner Automation Middleware
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`Solutions, Inc. (“AMS”) requests that the Board recognize Christopher Limbacher
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`as counsel pro hac vice during this proceeding.
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`II. Authorization to File
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`The Board’s Notice of Filing Date Accorded to Petition and Time for Filing
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`Patent Owner Preliminary Response authorized the filing of motions for admission
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`pro hac vice under 37 C.F.R. § 42.10(c).
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`III. Governing Authority
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`Under 37 C.F.R. § 42.10(c), “[t]he Board may recognize counsel pro hac
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`vice during a proceeding upon a showing of good cause, subject to the condition
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`that lead counsel be a registered practitioner and to any other conditions as the
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`Board may impose.” The Board’s Notice of Filing Date in this proceeding advised
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`that any pro hac vice motion filed should be in accordance with the “‘Order --
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`Authorizing Motion for Pro Hac Vice Admission’ in Case IPR2013-00639, Paper
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`7, a copy of which is available on the Board Web site under ‘Representative
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`Orders, Decisions, and Notices.’” The IPR 2013-000639 order requires that a
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`motion for pro hac vice admission:
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`a. Contain a statement of facts showing there is good cause for the Board
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`to recognize counsel pro hac vice during the proceeding.
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`IPR2017-00048
`U.S. Patent No. 6,516,236
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`b. Be accompanied by an affidavit or declaration of the individual
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`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
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`the District of Columbia;
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`ii.
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`No suspensions or disbarments from practice before any court
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`or administrative body;
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`iii. No application for admission to practice before any court or
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`administrative body ever denied;
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`iv. No sanctions or contempt citations imposed by any court or
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`administrative body;
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`v.
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`The individual seeking to appear has read and will comply with
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`the Office Patent Trial Practice Guide and the Board’s Rules of
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`Practice for Trials set forth in part 42 of 37 C.F.R.;
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`vi.
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`The individual will be subject to the USPTO Rules of
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`Professional Conduct set forth in 37 C.F.R. §§ 11.101 et. seq.
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`and disciplinary jurisdiction under 37 C.F.R. § 11.19(a);
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`vii. All other proceedings before the Office for which the individual
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`has applied to appear pro hac vice in the last three (3) years;
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`and
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`viii. Familiarity with the subject matter at issue in the proceeding.
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`IPR2017-00048
`U.S. Patent No. 6,516,236
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`IV. Good Cause Exists To Grant This Motion
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`The following facts, supported by the Declaration of Christopher Limbacher,
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`establish good cause to admit Mr. Limbacher pro hac vice in this proceeding:
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`i. Mr. Limbacher is a member in good standing of the Texas State Bar, and has
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`been admitted to the United States District Court for the Southern District of
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`Texas.
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`ii. Mr. Limbacher has never been suspended or disbarred from practice before
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`any court or administrative body.
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`iii. No application filed by Mr. Limbacher for admission to practice before any
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`court or administrative body has ever been denied.
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`iv. No sanctions or contempt citations have been imposed against Mr.
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`Limbacher by any court or administrative body.
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`v. Mr. Limbacher has read and will comply with the Office Patent Trial
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`Practice Guide and the Board’s Rules of Practice for Trials.
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`vi. Mr. Limbacher understands that he will be subject to the USPTO Rules of
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`Professional Conduct.
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`vii.
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`Mr. Limbacher is applying to appear pro hac vice before the Office in
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`four related proceedings: Rockwell Automation, Inc. and Rockwell Automation
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`Technologies, Inc., Petitioners v. Automation Middleware Solutions, Inc., Patent
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`Owner (IPR2017-00023, -00049, -00469, -00470). Other than these current
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`proceedings, Mr. Limbacher has not applied to appear pro hac vice before the
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`Office in the last three years.
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`viii.
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`Mr. Limbacher is a litigation attorney with an established familiarity
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`with the subject matter. He has carefully studied the patent-in-suit, including its
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`prosecution, reexamination, and inter partes review history. Additionally, Mr.
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`Limbacher has more than eight years of engineering experience, including two
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`years of experience in the field of motion control systems at issue in this inter
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`partes review.
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`If admitted, Christopher Limbacher will serve as backup counsel for AMS
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`lead counsel Douglas Wilson. Mr. Wilson is a registered practitioner, as required
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`by 37 C.F.R. § 42.10(c).
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`Dated: January 10, 2017
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`Respectfully Submitted,
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` /s/ Douglas Wilson
`Douglas Wilson
`Registration Number 54,542
`Attorney for Patent Owner
`Automation Middleware Solutions,
`Inc.
`Heim Payne & Chorush LLP
`9442 Capital of Texas Highway North
`Plaza 1, Suite 500-146
`Austin, TX 78759
`Telephone: (512) 343-3622
`Email: dwilson@hpcllp.com
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`IPR2017-00048
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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
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`copy of the foregoing PATENT OWNER’S MOTION FOR PRO HAC VICE
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`ADMISSION OF CHRISTOPHER LIMBACHER was served via email to lead
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`counsel of record for Petitioner as follows:
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`Jeffrey N. Costakos
`Foley & Lardner LLP
`MILW-Rockwell-AMS@foley.com
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`Dated: January 10, 2017
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`By: /Douglas R. Wilson/
`Douglas R. Wilson (Reg. No. 54,542)
`Attorney for Patent Owner
`Automation Middleware Solutions, Inc.
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