`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`PAYPAL, INC.,
`Petitioner,
`
`v.
`
`MONEYCAT LTD.,
`Patent Owner
`
`
`
`
`IPR2017-00542
`U.S. Patent No. 8,712,918
`
`Title: ELECTRONIC CURRENCY, ELECTRONIC WALLET THEREFOR
`AND ELECTRONIC PAYMENT SYSTEMS EMPLOYING THEM
`
`
`
`
`
`
`PETITIONER’S MOTION FOR ADMISSION PRO HAC VICE OF JARED
`BOBROW PURSUANT TO 37 C.F.R. § 42.10
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`I.
`
`RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. § 42.10, Petitioner PayPal, Inc. (“Petitioner”)
`
`respectfully request that the Board admit Jared Bobrow pro hac vice in this
`
`proceeding.
`
`II.
`
`STATEMENT OF FACTS
`
`Pursuant to 37 C.F.R. § 42.10(c), 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 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 facts, supported by the accompanying Declaration of Jared Bobrow in
`
`Support of Petitioner’s Motion for Admission Pro Hac Vice (”Bobrow
`
`Declaration,” Ex. 1027), establish good cause to admit Mr. Bobrow pro hac vice
`
`in this proceeding.
`
`1.
`
`2.
`
`Lead counsel Adrian Percer is a registered practitioner.
`
`Backup counsel Naveen Modi and Brian Chang are registered
`
`practitioners.
`
`3.
`
`Jared Bobrow is an experienced litigation attorney. Mr. Bobrow has
`
`been a litigating attorney for more than 28 years. Bobrow Decl. ¶ 1. Mr. Bobrow
`
`
`
`2
`
`
`
`
`
`has been litigating patent cases for over 25 of those years. Id. Mr. Bobrow is a
`
`member in good standing of the California State Bar, with no suspensions or
`
`disbarments from practice, nor any application for admission to practice denied,
`
`nor any sanctions or contempt citations, and is admitted to practice in the United
`
`States Court of Appeals for the Federal Circuit, United States Court of Appeals
`
`for the Ninth Circuit, United States Court of Appeals for the First Circuit;
`
`California State Supreme Court; the United States District Court for the Eastern
`
`District of Texas; and the United States District Courts for the Central, Eastern,
`
`Northern and Southern Districts of California. Id. ¶¶ 1-4.
`
`4. Mr. Bobrow has familiarity with the subject matter at issue in this
`
`proceeding based on his work as counsel in the pending district court case
`
`MoneyCat, Ltd. v. PayPal, Inc., Case No. 14-cv-02490-JST (N.D. Cal.)1, in which
`
`U.S. Patent Nos. 7,590,602, 8,051,011, and 8,195,578 are asserted by the Patent
`
`Owner. Id. ¶ 9. U.S. Patent 8,712,918 (the “918 patent”) is a continuation of
`
`U.S. Patent No. 8,195,578 (the “578 patent”), claims 1-3, 5-11, and 13-23 of
`
`which the Board found unpatentable in CBM2014-00093, a proceeding in
`
`which Mr. Bobrow was admitted pro hac vice as backup counsel for the
`
`petitioner eBay Inc. Additionally, Mr. Bobrow is familiar with the subject
`
`
`1 Originally filed as Case No. 1:13-cv-01358-RGA (D. Del.) prior to transfer.
`
`
`
`3
`
`
`
`
`
`matter at issue in this proceeding based on his work as backup counsel for
`
`eBay in CBM2014-00091 and CBM2014-00092, concerning U.S. Patent Nos.
`
`8,051,011 and 7,590,602, which are also related to the 918 patent, and as
`
`eBay’s counsel in MoneyCat’s appeal of the Board’s final written decision in
`
`those CBM proceedings to the Federal Circuit Court of Appeals. Id. Mr.
`
`Bobrow has been actively involved in all aspects of the pending district court
`
`case, including the issue of validity. Id.
`
`5. Mr. Bobrow has read and will comply with the Office Patent Trial
`
`Practice Guide and the Board’s Rules for Practice for Trials set forth in part 42 of
`
`the C.F.R, and he agrees to be subject to the USPTO Code of Professional
`
`Responsibility set forth in 37 C.F.R. §§ 10.20 et seq., and to disciplinary
`
`jurisdiction under 37 C.F.R. § 11.19(a). Id. ¶¶ 5-6.
`
`III. ANALYSIS
`The facts contained in the Statement of Facts above, and contained in the
`
`Bobrow Declaration, establish that there is good cause to admit Mr. Bobrow
`
`pro hac vice in this proceeding under 37 C.F.R. § 42.10. Lead counsel and Back-
`
`up Counsel are registered practitioners, Mr. Bobrow is an experienced litigation
`
`attorney, and Mr. Bobrow has an established familiarity with the subject matter
`
`at issue in this proceeding.
`
`
`
`4
`
`
`
`
`
`IV. CONCLUSION
`For the foregoing reasons, Petitioners respectfully request that the Board
`admit Jared Bobrow pro hac vice in this proceeding.
`
`
`Respectfully submitted,
`
`
`
`Adrian Percer
`Lead Counsel for Petitioner
`Registration No. 49,986
`Weil, Gotshal & Manges LLP
`201 Redwood Shores Parkway
`Redwood Shores, CA 94065-1134
`Telephone: 650-802-3000
`
`
`
`Dated: February 7, 2017
`
`
`
`
`
`5
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies, in accordance with 37 C.F.R. § 42.6(e), that
`
`service was made on the Patent Owner as detailed below.
`
`Date of Service
`
`February 7, 2017
`
`Manner of Service
`
`Electronic Mail
`
`Documents Served
`
`Persons Served
`
`Petitioner’s Motion for Admission Pro Hac Vice of
`Jared Bobrow Pursuant to 37 C.F.R. § 42.10
`Exhibit 1027 (Declaration of Jared Bobrow In Support
`of Petitioner’s Motion for Admission Pro Hac Vice)
`
`Patent Owner’s Counsel of Record
`
`Kevin D. McCarthy, Lead Counsel
`USPTO Reg. No. 35278
`Roach Brown McCarthy & Gruber, P.C.
`1920 Liberty Building - 424 Main Street
`Buffalo, New York 14202
`kdmccarthy@roachbrown.com
`
`
`
`Respectfully submitted,
`
`
`
`Adrian Percer
`Lead Counsel for Petitioners
`Registration No. 49,986
`Weil, Gotshal & Manges LLP
`201 Redwood Shores Parkway
`Redwood Shores, CA 94065-1134
`Telephone: 650-802-3000
`
`
`Dated: February 7, 2017
`
`
`
`
`
`
`
`
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