UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`GUANGDONG ALISON HI-TECH CO., LTD.,
`Petitioner
`
`v.
`
`ASPEN AEROGELS, INC.,
`Patent Owner
`_______________
`
`Case No.: IPR2017-00201
`
`Patent No. 7,399,439
`_______________
`
`
`
`PETITIONER’S MOTION FOR PRO HAC VICE ADMISSION OF GARY
`M. HNATH PURSUANT TO 37 C.F.R. § 42.10(c)
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`GUANGDONG ALISON HI-TECH CO., LTD.,
`Petitioner
`
`v.
`
`ASPEN AEROGELS, INC.,
`Patent Owner
`_______________
`
`Case No.: IPR2017-00201
`
`Patent No. 7,399,439
`_______________
`
`
`
`PETITIONER’S MOTION FOR PRO HAC VICE ADMISSION OF GARY
`M. HNATH PURSUANT TO 37 C.F.R. § 42.10(c)
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`Case IPR2017-00201
`Patent No. 7,399,439
`Petitioner’s Motion for Pro Hac Vice Admission
`
`PETITIONER’S EXHIBIT LIST
`
`Previously Filed
`Aspen Aerogel Inc.’s U.S. Pat. No. 7,399,439
`
`Description
`
`Prosecution history of the ’439 patent
`
`Declaration of George W. Scherer, Ph.D.
`
`
`
`Exhibit #
`
`1001
`
`1002
`
`1003
`
`Aspen’s Initial Claim Construction Brief in 337-TA-1003 (filed Sept.
`20, 2016)
`Nakanishi (U.S. Pat. No. 4,950,148)
`
`1004
`
`1005
`
`Ramamurthi (U.S. Pat. No. 5,306,555)
`
`Champagne (U.S. Pat. No. 6,187,250)
`
`Andersen (U.S. Pat. No. 5,665,442)
`
`Roberts (U.S. Pat. No. 3,042,573)
`
`Sonoda (Japanese Patent No. H8-34678)
`
`English Translation of Sonoda (w/ certification)
`
`Uchida (U.S. Pat. No. 6,123,882)
`
`Product Information – Gels – Dow Corning® CY 52-276, 2-part, clear,
`1:1 mix ratio, gel with controlled volatility
`Silicone Chemistry Overview Dow Corning®
`Handbook of Sealant Technology (Edited by Mittal, K.L. and Pizzi, A
`(2009))
`Bibliographic data from Public Pair on the USPTO website for
`application Ser. No. 06/814,726
`History of Dow Corning from Dow website
`Curriculum vitae of George W. Scherer, Ph.D.
`
`1
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`1015
`
`1016
`
`1017
`1018
`
`
`
`1019
`
`1020
`
`1021
`1022
`
`1023
`1024
`
`1025
`
`Case IPR2017-00201
`Patent No. 7,399,439
`Petitioner’s Motion for Pro Hac Vice Admission
`
`D. Hotza and P. Greil, “Review: Aqueous Tape Casting of Ceramic
`Powders,” Materials Science and Engineering, A202 (1995), pp. 206-
`17
`J.S. Reed, Principles of Ceramics Processing, Second Edition, pp. 525-
`41 (1995)
`Britannica Encyclopedia – “Advanced Ceramics” (2001)
`S.S. Kistler, ”Coherent expanded aerogels,” J. Phys. Chem., 36 [1]
`(1931), pp. 52-64
`Yada (U.S. Pat. No. 5,004,761)
`Declaration of Bryan Nese
`Currently Filed
`Declaration of Gary M. Hnath in Support of Motion for Pro Hac Vice
`Admission
`
`
`
`
`
`
`
`2
`
`
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`Case IPR2017-00201
`Patent No. 7,399,439
`Petitioner’s Motion for Pro Hac Vice Admission
`
`
`Pursuant to 37 C.F.R. § 42.10(c) and in response to the authorization
`
`provided by the United States Patent and Trademark Office’s Patent Trial and
`
`Appeal Board (“Board”) in the Notice of Filing Date Accorded to Petition (Paper
`
`Number 4, entered November 17, 2016) (“Notice”), Petitioner Guangdong Alison
`
`Hi-Tech Co., Ltd. (“Petitioner”) hereby files this motion for Gary M. Hnath to
`
`appear pro hac vice on its behalf, as back-up counsel, before the Board in
`
`IPR2017-00201. This motion follows the guidelines set forth in IPR2013-00639,
`
`Paper 7, entered October 15, 2013 (“Order”).
`
`I.
`
`TIME FOR FILING
`
`Pursuant to the Order, this motion for pro hac vice admission is being filed
`
`no sooner than twenty-one (21) days after service of the petition.
`
`II.
`
`STATEMENT OF FACTS
`
`Pursuant to the Order, the following statement of facts shows that there is
`
`good cause for the Board to recognize Mr. Hnath pro hac vice.
`
`Lead counsel for this proceeding, Joseph A. Mahoney, is a registered
`
`practitioner (Registration No. 38,956).
`
`Mr. Hnath is an experienced litigation attorney, and has been involved in
`
`numerous patent infringement cases in the U.S. International Trade Commission
`
`and in federal District Courts across the country. Ex. 1025, ¶ 8. He has experience
`
`in various aspects of patent infringement matters including trials, Markman
`3
`
`
`
`Case IPR2017-00201
`Patent No. 7,399,439
`Petitioner’s Motion for Pro Hac Vice Admission
`
`hearings, and summary judgment hearings. Id. Mr. Hnath is a member in good
`
`standing of the District of Columbia Bar, the Bar of Virginia, and the Court of
`
`Appeals of Maryland. Id. at ¶ 1. He is admitted to practice before the United States
`
`Supreme Court, the United States Court of Appeals for the Federal and District of
`
`Columbia Circuits, the United States Court of Federal Claims, and the United
`
`States District Courts for the District of Columbia, the District of Maryland, and
`
`the Eastern District of Virginia. Id. Mr. Hnath has not been suspended or disbarred
`
`from practice, never had any application for admission to practice denied, nor had
`
`any sanctions or contempt citations imposed against him. Id. at ¶¶ 2-4.
`
`Mr. Hnath has reviewed and is familiar with the ’439 patent and related
`
`patents, the asserted prior art references, and invalidity arguments. Id. at ¶ 9.
`
`Further, Mr. Hnath has been involved and is familiar with the factual and legal
`
`arguments at issue in the litigation brought by Patent Owner against Petitioner in
`
`the U.S. International Trade Commission. Id. Accordingly, Mr. Hnath is familiar
`
`with the subject matter at issue in these proceedings for the ’439 patent.
`
`Mr. Hnath 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.,
`
`and he agrees to 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. §
`
`4
`
`
`
`Case IPR2017-00201
`Patent No. 7,399,439
`Petitioner’s Motion for Pro Hac Vice Admission
`
`11.19(a). Id. at ¶¶ 5-6. Mr. Hnath is concurrently applying to appear pro hac vice
`
`in IPR2016-001820 and IPR2017-00152. Id. at ¶ 7. These are Mr. Hnath’s first
`
`applications to appear pro hac vice before the Board. Id.
`
`Petitioner has expended significant financial resources in the co-pending
`
`litigation with Mr. Hnath as counsel, and Petitioner wishes to continue using Mr.
`
`Hnath in this proceeding.
`
`As such, Petitioner respectfully submits that there is good cause for the
`
`Board to recognize Mr. Hnath as counsel pro hac vice during this proceeding.
`
`III. AFFIDAVIT OR DECLARATION OF INDIVIDUAL SEEKING TO
`APPEAR
`This Motion for pro hac vice admission is accompanied by a Declaration of
`
`Mr. Hnath as required by the Order (Ex. 1025).
`
`Dated: December 15, 2016
`
`
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`5
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`Respectfully submitted,
`
`/Joseph A. Mahoney Reg No 38956/
`Joseph A. Mahoney
`Registration No. 38,956
`
`Mayer Brown LLP
`71 S. Wacker Drive
`Chicago, IL 60606
`Telephone: 312-701-8979
`Facsimile: 312-701-8530
`jmahoney@mayerbrown.com
`
`Gary M. Hnath (motion for pro hac
`vice admission pending)
`
`
`
`ghnath@mayerbrown.com
`Postal and Hand Delivery Address
`Mayer Brown LLP
`1999 K Street, N.W. Washington, DC
`20006-1101
`Telephone: (202) 263-3040
`Facsimile: (202) 263-3300
`
`
`
`
`
`
`
`Counsel for Petitioner, Guangdong
`Alison Hi-Tech Co., Ltd.
`
`
`
`
`Case IPR2017-00201
`Patent No. 7,399,439
`Petitioner’s Motion for Pro Hac Vice Admission
`
`
`
`
`
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`6
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`
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`Case IPR2017-00201
`Patent No. 7,399,439
`Petitioner’s Motion for Pro Hac Vice Admission
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 15th day of December, 2016, a copy of the
`
`attached PETITIONER’S MOTION FOR PRO HAC VICE ADMISSION OF
`
`GARY M. HNATH PURSUANT TO 37 C.F.R. § 42.10(c), together with the
`
`supporting declaration of Gary M. Hnath, was served by e-mail pursuant to Patent
`
`Owner’s consent in its Mandatory Notices Pursuant to 37 C.F.R. §§ 42.8(a)(2) and
`
`42.8(b): IPR41577-0001IP1@fr.com; PTABInbound@fr.com.
`
` Respectfully submitted,
`
`
`
`Date: December 15, 2016 By:
`
`
`
`
`
`
`/s/Joseph A. Mahoney
`
`Joseph A. Mahoney, Reg. No.
`38,956
`Joseph A. Mahoney
`MAYER BROWN LLP
`71 South Wacker Drive
`Chicago, IL 60606
`Telephone: (312) 701-8979
`Facsimile: (312) 706-8530
`
`Counsel for Petitioner
`
`1
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