UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`DONGHEE AMERICA, INC. and DONGHEE ALABAMA, LLC,
`Petitioners
`v.
`PLASTIC OMNIUM ADVANCED INNOVATION AND RESEARCH,
`Patent Owner.
`____________
`Case IPR2017-01647
`Patent 6,814,921
`
`PETITIONERS’ MOTION FOR PRO HAC VICE
`ADMISSION OF NICHOLAS H. LAM
`
`
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`DONGHEE AMERICA, INC. and DONGHEE ALABAMA, LLC,
`Petitioners
`v.
`PLASTIC OMNIUM ADVANCED INNOVATION AND RESEARCH,
`Patent Owner.
`____________
`Case IPR2017-01647
`Patent 6,814,921
`
`PETITIONERS’ MOTION FOR PRO HAC VICE
`ADMISSION OF NICHOLAS H. LAM
`
`
`
`Orrick Docket 28133.8
`
`I.
`
`RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. § 42.10 (c), Petitioners Donghee America, Inc. and
`
`Donghee Alabama, LLC (collectively “Petitioners” or “Donghee”) respectfully
`
`requests the pro hac vice admission of Nicholas H. Lam in this proceeding.
`
`II.
`
`RELEVANT RULES AND ORDERS
`
`Section 42.10(c) states as follows:
`
`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 Board’s Notice of Filing Date Accorded to Petition and Time for Filing
`
`Patent Owner Preliminary Response states that motions for pro hac vice admission
`
`under 37 C.F.R. § 42.10(c) “shall be filed in accordance with the ‘Order –
`
`Authorizing Motion for Pro Hac Vice Admission’ in Case IPR2013-00639, Paper 7”
`
`(“Pro Hac Vice Order”). In accordance with the Pro Hac Vice Order, this motion is
`1
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`Orrick Docket 28133.8
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`being filed no sooner than twenty-one (21) days after service of the petition.
`
`The Pro Hac Vice Order requires motions to (1) contain a statement of facts
`
`showing there is good cause for the Board to recognize counsel pro hac vice during the
`
`proceeding, and (2) be accompanied by an affidavit or declaration of the individual
`
`seeking 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 the C.F.R.;
`
`vi.
`
`The individual will be subject to the USPTO Code of
`
`Professional Responsibility set forth in 37 C.F.R. §§ 11.101 et
`
`seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a);
`
`vii. All other proceedings before the Office for which the individual
`
`has applied to appear pro hac vice in the last three (3) years;
`2
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`
`
`Orrick Docket 28133.8
`
`and
`
`viii. Familiarity with the subject matter at issue in the proceeding.
`
`III. STATEMENT OF FACTS
`
`Based on the following facts, supported by the Declaration of Nicholas H. Lam
`
`submitted herewith, Petitioners requests that Mr. Lam be admitted pro hac vice in
`
`this proceeding.
`
`1.
`
`Patent Owner’s counsel has indicated that Patent Owner does not
`
`oppose this motion.
`
`2.
`
`Petitioners’ lead counsel, Alyssa Caridis, is a registered
`
`practitioner (Reg. No. 57,545) and a partner at the law firm of
`
`Orrick Herrington & Sutcliffe LLP.
`
`3.
`
`Mr. Lam is an associate at the law firm of Orrick Herrington &
`
`Sutcliffe LLP.
`
`4.
`
`Mr. Lam is an experienced litigating attorney and have been
`
`litigating patent cases for approximately ten (10) years.
`
`4. Mr. Lam has an established familiarity with the subject matter at issue
`
`in this proceeding. For example, Mr. Lam is counsel for Donghee in a
`
`co-pending district court case involving Patents 6,814,921 (“’921
`
`Patent”); 6,866,812 (“’812 Patent”); 7,166,253 (“’253 Patent”);
`
`9,079,490 (“’490 Patent”); 9,339,326 (“’326 Patent”); and 9,399,327
`
`(“’327 Patent”). That case is captioned Plastic Omnium Advanced
`3
`
`
`
`Orrick Docket 28133.8
`
`Innovation and Research v. Donghee America, Inc. and Donghee
`
`Alabama, LLC, C.A. No. 16-187-LPS-CJB (D. Del.). Mr. Lam has
`
`been actively involved in the technical aspects of the district court
`
`case, including the validity of the ’921, ’812, ’253, ’490, ’326, and
`
`’327 Patents. Mr. Lam has an in-depth familiarity with each of the
`
`patents, their file histories, and the references asserted as prior art by
`
`Donghee in this IPR proceeding.
`
`6. Mr. Lam is a member in good standing of the State Bar of New York.
`
`7. Mr. Lam has never been suspended or disbarred from practice before
`
`any court or administrative body.
`
`8.
`
`No application of Mr. Lam for admission to practice before any court
`
`or administrative body has ever been denied.
`
`9.
`
`No sanctions or contempt citations have ever been imposed against
`
`Mr. Lam by any court or administrative body.
`
`10. Mr. Lam 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 Section 37 of the C.F.R.
`
`11. Mr. Lam understands that he will be subject to the United States
`
`Patent and Trademark Office Code of Professional Responsibility
`
`set forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary
`
`jurisdiction under 37 C.F.R. § 11.19(a).
`4
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`Orrick Docket 28133.8
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`12. Mr. Lam is concurrently applying to appear pro hac vice in
`
`IPR2017-01605 (’253 Patent), IPR2017-01633 (’812 Patent),
`
`IPR2017-01647 (’921 Patent), IPR2017-01654 (’490 Patent),
`
`IPR2017-01890 (’327 Patent), and IPR2017-01945 (’326 Patent),
`
`each of which pertains to a patent asserted in the co-pending
`
`district court case. Other than the foregoing, Mr. Lam has not
`
`applied to appear pro hac vice in any other proceeding before the
`
`Office in the last three (3) years.
`
`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION OF
`MR. LAM IN THIS PROCEEDING
`
`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. 37 C.F.R.
`
`§ 42.10(c). Petitioners’ lead counsel, Alyssa Caridis, is a registered practitioner.
`
`As set forth above, and as supported by his Declaration, Mr. Lam is an
`
`experienced litigating attorney with approximately ten (10) years of patent
`
`litigation experience and he has an established familiarity with the subject matter
`
`at issue in this proceeding.
`
`In view of Mr. Lam’s knowledge of the subject matter at issue in this
`
`proceeding, Petitioners have a substantial need for the pro hac vice admission and
`
`involvement of Mr. Lam in this proceeding. Further, there will be no prejudice to
`
`5
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`Orrick Docket 28133.8
`
`Patent Owner here. Counsel for Patent Owner has indicated that Patent Owner
`
`does not oppose this Motion.
`
`V. CONCLUSION
`
`For the foregoing reasons, Petitioners respectfully request that Mr. Lam be
`
`admitted pro hac vice in this proceeding. The Patent Trial and Appeal Board is
`
`hereby authorized to charge any fees associated with this filing to Deposit Account
`
`15-0665 (Customer ID No. 34313).
`
`Dated: July 5, 2018
`
`Respectfully submitted,
`
`By: /Alyssa Caridis/
`
`Alyssa Caridis
`a8cptabdocket@orrick.com
`Registration No. 57,545
`ORRICK, HERRINGTON, & SUTCLIFFE LLP
`777 South Figueroa Street, Suite 3200
`Los Angeles, CA 90017
`Tel: 213-629-2020
`Fax: 213-612-2499
`
`Attorneys for Petitioners Donghee America, Inc.
`and Donghee Alabama, LLC.
`
`6
`
`
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`Orrick Docket 28133.8
`
`CERTIFICATION OF SERVICE
`
`The undersigned hereby certifies that “PETITIONERS’ MOTION FOR
`
`PRO HAC VICE ADMISSION OF NICHOLAS H. LAM” and accompanying
`
`“DECLARATION OF NICHOLAS H. LAM” were served in their entirety on
`
`July 5, 2018, upon the following parties via electronic service:
`
`Counsel for Patent Owner
`
`Robert C. Mattson
`Vincent Shier
`Christopher Ricciuti
`Oblon, McClelland, Maier & Neustadt, LLP
`1940 Duke Street
`Alexandria, VA 22314
`Main: (703) 413-3000
`Facsimile: (703) 413-2220
`CPDocketMattson@oblon.com
`CPDocketShier@oblon.com
`CPDocketRicciuti@oblon.com
`
`By: /Karen Johnson/
` Karen Johnson
`
`7
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`
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