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`Paper No. 11
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`CASCADES CANADA ULC
`and
`TARZANA ENTERPRISES, LLC,
`Petitioner,
`
`v.
`
`SCA HYGIENE PRODUCTS AB,
`Patent Owner.
`______________
`
`Case IPR2017-01921
`Patent No. 9,320,372
`______________
`
`Mailed: February 21, 2018
`
`__________________________________________________________________
`
`PETITIONER’S UNOPPOSED MOTION FOR PRO HAC VICE
`ADMISSION OF KARA R. FUSSNER UNDER 37 C.F.R. § 42.10(c)
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`Case IPR2017-01921
`Patent No. 9,320,372
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`
`EXHIBIT INDEX
`
`Exhibit
`Ex #
`1001 U.S. Patent No. 8,597,761 (“the ‘761 patent”)
`1002 Expert Declaration of Mate Mrvica
`1003 Curriculum Vitae for Mate Mrvica
`1004 Expert Report of Paul Carlson Relating to Infringement of Tarzana
`Enterprises, LLC, SCA Tissue North America, LLC v. Tarzana Enterprises,
`LLC, Civil Action No. 3:11-cv-00316-bbc (W.D. Wis. Feb. 10, 2012)
`1005 SCA’s Identification of Claim Terms and Proposed Constructions, SCA
`Hygiene Products AB et al. v. Tarzana Enterprises, LLC, Civil Action No.
`3:16-cv-00728-wmc (W.D. Wis. May 17, 2017)
`1006 Tarzana’s Exchange of Terms and Proposed Constructions, SCA Hygiene
`Products AB et al. v. Tarzana Enterprises, LLC, Civil Action No. 3:16-cv-
`00728-wmc (W.D. Wis. May 17, 2017)
`1007 Webster’s New World College Dictionary (4th ed. 2004), definition of
`“offset”
`1008 DK Illustrated Oxford Dictionary (1998), definition of “offset”
`1009 Random House Webster’s Unabridged Dictionary (2nd ed. 2001), definition
`of “offset”
`1010 U.S. Patent No. 1,666,553 to Christman
`1011 U.S. Patent No. 1,427,420 to Sargent
`1012 U.S. Patent No. 1,632,446 to Krueger
`1013 EP 0286538 B1 to Pigneul (“Pigneul”)
`1014 EP 0302382 A1 to Lloyd
`1015 U.S. Patent Application Publication No. 2005/0058807 (“Hochtritt”)
`1016 U.S. Patent No. 5,736,224 to Dodge
`1017 B.P.A.I. Decision on Appeal, Hochtritt prosecution history, Jan. 28, 2008
`1018 U.S. Patent No. 7,611,765 (“the Hochtritt ‘765 patent”)
`1019 U.S. Patent No. 7,939,159 (“the Hochtritt ‘159 patent”)
`
`
`
`i
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`Case IPR2017-01921
`Patent No. 9,320,372
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`1020 Declaration of Paul Carlson (to SCA’s Opposition to Tarzana’s Motion for
`Summary Judgment), SCA Tissue North America, LLC v. Tarzana
`Enterprises, LLC, Civil Action No. 3:11-cv-00316-bbc, ECF No. 44 (W.D.
`Wis. Aug. 31, 2011)
`1021 U.S. Patent No. 6,602,575 to Lefevre du Grosriez (“Grosriez”)
`1022 Response to Office Action, ‘159 Patent prosecution history, Dec. 17, 2010
`1023 English translation and certification of EP 0286538 A1 to Pigneul
`1024 Complaint, SCA Hygiene Products AB et al. v. Tarzana Enterprises, LLC,
`Civil Action No. 3:16-cv-00728-wmc, ECF No. 1 (W.D. Wis. Nov. 3, 2016)
`1025 Return of Service, SCA Hygiene Products AB et al. v. Tarzana Enterprises,
`LLC, Civil Action No. 3:16-cv-00728-wmc, ECF No. 6 (W.D. Wis. Nov.
`10, 2016), Service on Nov. 7, 2016
`1026 Complaint, SCA Hygiene Products Aktiebolag (“AB”) et al. v. Cascades,
`Inc., Case No. 3:17-cv-00282-wmc, ECF No. 1 (W.D. Wis. Apr. 13, 2017)
`1027 Return of Service, SCA Hygiene Products Aktiebolag (“AB”) et al. v.
`Cascades, Inc., Case No. 3:17-cv-00282-wmc, ECF No. 6 (W.D. Wis. July
`5, 2017), Service on June 12, 2017
`1028 U.S. Patent No. 9,320,372 to Formon
`1029 Office Action, ‘761 Patent prosecution history, July 19, 2012
`1030 Intentionally omitted
`1031 Intentionally omitted
`1032 Order on Tarzana’s Motion for Summary Judgment, SCA Tissue North
`America, LLC v. Tarzana Enterprises, LLC, Civil Action No. 3:11-cv-
`00316-bbc, ECF No. 85 (W.D. Wis. Dec. 1, 2011)
`1033 Response to Office Action, ‘765 Patent prosecution history, May 13, 2009
`1034 Office Action, ‘372 Patent prosecution history, June 8, 2015
`1035 Office Action, ‘372 Patent prosecution history, Sept. 18, 2015
`1036 Response to Office Action, ‘372 Patent prosecution history, Sept. 4, 2015
`1037 Response to Office Action, ‘372 Patent prosecution history, Dec. 16, 2015
`1038 Declaration of Kara R. Fussner in Support of Motion for Admission Pro
`Hac Vice
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`ii
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`Case IPR2017-01921
`Patent No. 9,320,372
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`
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`Pursuant to 37 C.F.R. § 42.10(c) and the Notice of Filing Date Accorded to
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`Petition and Time for Filing Patent Owner Preliminary Response entered on
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`August 17, 2017, (Paper No. 4) in this proceeding, Petitioners Cascades Canada
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`ULC and Tarzana Enterprises, LLC respectfully request that the Patent Trial and
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`Appeal Board admit Kara R. Fussner pro hac vice in this proceeding, IPR2017-
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`01921. Petitioners have conferred with Patent Owner SCA Hygiene Products AB,
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`and Patent Owner does not object to Petitioner’s request.
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`STATEMENT OF FACTS
`
`In accordance with 37 C.F.R. § 42.10(c),
`
`[t]he 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.
`
`Good cause exists for the Board to recognize Kara R. Fussner pro hac vice
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`in this proceeding. Petitioner’s lead counsel in this proceeding, Rudolph A.
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`Telscher, Jr., is a registered practitioner with Reg. No. 36,032. Accompanying the
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`instant motion is the Declaration of Kara R. Fussner (EX1038) attesting to the
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`1
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`Case IPR2017-01921
`Patent No. 9,320,372
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`information required by “Order – Authorizing Motion for Pro Hac Vice
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`Admission” in Unified Patents, Inc. v. Parallel Iron, LLC, Case No. IPR2013-
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`00639, Paper No. 7 (October 15, 2013). Ms. Fussner is an experienced litigation
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`attorney (EX1038 at ¶¶ 1-2), including 15 years of predominantly patent
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`infringement litigation experience, and has established familiarity with the subject
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`matter at issue in this proceeding (Id. at ¶¶ 10-11).
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`Ms. Fussner attests to the remaining matters as set forth in Paper No. 7 of
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`Unified Patents in paragraphs 3-9 of her Declaration. EX1038.
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`Additional facts constitute good cause to grant the instant motion. Lead
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`Counsel in this proceeding has conflicting obligations in a five-week patent
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`infringement trial that will occur during the cross-examination period for testimony
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`to be used with Patent Owner’s Response to Petition. Backup counsel, Daisy
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`Manning, also has conflicting litigation obligations that may present themselves
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`during the pendency of the case. Ms. Fussner will support Lead and Backup
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`Counsel as scheduling conflicts arise in this case.
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`DECLARATION OF INDIVIDUAL SEEKING TO APPEAR
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`This Unopposed Motion for Pro Hac Vice Admission is accompanied by the
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`required Declaration of Kara R. Fussner (EX1038).
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`2
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`Case IPR2017-01921
`Patent No. 9,320,372
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`CONCLUSION
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`For the foregoing reasons, Petitioners respectfully request that the Board
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`admit Kara R. Fussner pro hac vice in this proceeding.
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`Dated: February 21, 2018
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`Respectfully submitted,
`
`By: /Rudolph A. Telscher, Jr. /
`Rudolph A. Telscher, Jr., Reg. No. 36,032
`Daisy Manning, Reg. No. 66,369
`HUSCH BLACKWELL LLP
`190 Carondelet Plaza, Suite 600
`St. Louis, MO 63105
`(314) 480-1500 Telephone
`(314) 480-1505 Facsimile
`rudy.telscher@hushblackwell.com
`PTAB-RTelscher@huschblackwell.com
`daisy.manning@huschblackwell.com
`PTAB-DManning@huschblackwell.com
`
`Attorneys for Petitioner,
`Cascades Canada ULC and Tarzana
`Enterprises, LLC
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`3
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`Case IPR2017-01921
`Patent No. 9,320,372
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 21st day of February 2018, I caused the
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`foregoing to be served via email to the attorneys of record for the ‘372 patent at the
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`following address:
`
`David A. Mancino
`William F. Smith
`Kevin Flynn
`BAKER & HOSTETLER LLP
`312 Walnut Street, Suite 3200
`Cincinnati, OH 45202-4074
`(513) 929-3400 Telephone
`(513) 929-0303 Facsimile
`dmancino@bakerlaw.com
`wsmith@bakerlaw.com
`kflynn@bakerlaw.com
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`By: /Rudolph A. Telscher, Jr. /
`Reg. No. 36,032
`Lead Counsel for Petitioner
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`4
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