Case IPR2017-02039
`U.S. Patent No. 7,199,715
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`
`FEDEX CORP.,
`Petitioner
`
`
`v.
`
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner
`
`__________________
`
`
`Case IPR2017-02039
`
`U.S. Patent No. 7,199,715
`TITLE: SYSTEM AND METHOD FOR TRACKING ID TAGS USING A
`DATA STRUCTURE OF TAG READS
`Issue Date: April 3, 2007
`
`__________________
`
`INTELLECTUAL VENTURES II LLC’S UNOPPOSED MOTION FOR
`PRO HAC VICE ADMISSION OF LAUREN M. NOWIERSKI
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
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`
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`U.S. Patent No. 7,199,715
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`
`FEDEX CORP.,
`Petitioner
`
`
`v.
`
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner
`
`__________________
`
`
`Case IPR2017-02039
`
`U.S. Patent No. 7,199,715
`TITLE: SYSTEM AND METHOD FOR TRACKING ID TAGS USING A
`DATA STRUCTURE OF TAG READS
`Issue Date: April 3, 2007
`
`__________________
`
`INTELLECTUAL VENTURES II LLC’S UNOPPOSED MOTION FOR
`PRO HAC VICE ADMISSION OF LAUREN M. NOWIERSKI
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
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`Case IPR2017-02039
`U.S. Patent No. 7,199,715
`
`PATENT OWNER’S EXHIBIT LIST
`
`IV Exhibit No.
`2101
`
`DESCRIPTION
`Affidavit of Lauren M. Nowierski.
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`Case IPR2017-02039
`U.S. Patent No. 7,199,715
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`I.
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`
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`RELIEF REQUESTED
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`Intellectual Ventures II LLC (“IV”) hereby respectfully moves the Patent
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`Trial and Appeal Board for the pro hac vice admission of Lauren M. Nowierski as
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`back-up counsel for IV in Case IPR2017-02039. IV has conferred with counsel for
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`Petitioner, who confirmed that Petitioner does not oppose this motion.
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`II. GOVERNING LAW, RULES, AND PRECEDENT
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`
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`Under 37 C.F.R. § 42.10(c),
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`The Board may recognize counsel pro hac vice during a
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`proceeding upon a showing of good cause, subject to the
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`condition that lead counsel be a registered practitioner
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`and to any other conditions as the Board may impose.
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`For example, where the lead counsel is a registered
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`practitioner, a motion to appear pro hac vice by counsel
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`who is not a registered practitioner may be granted upon
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`showing that counsel is an experienced litigating attorney
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`and has an established familiarity with the subject matter
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`at issue in the proceeding.
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`
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`The Patent Trial and Appeal Board established its current procedure for
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`moving for pro hac vice admission in inter partes reviews in Unified Patents, Inc.
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`v. Parallel Iron LLC, Case IPR2013-00639, Paper 7 (“Order – Authorizing Motion
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`For Pro Hac Vice Admission – 37 C.F.R. § 42.10”) (PTAB Oct. 15, 2013).
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`Specifically, a motion for pro hac vice admission must 1) be filed no sooner than
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`twenty-one (21) days after the service of the petition; 2) “[c]ontain a statement of
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`1
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`Case IPR2017-02039
`U.S. Patent No. 7,199,715
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`facts showing there is good cause for the Board to recognize counsel pro hac vice
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`during the proceeding;” and 3) “[b]e accompanied by an affidavit or declaration of
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`the individual seeking to appear attesting to the following:”
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`i. Membership in good standing of the Bar of at least
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`one State or the District of Columbia;
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`ii.
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`No suspensions or disbarments from practice
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`before any court or administrative body;
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`iii. No application for admission to practice before
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`any court or administrative body ever denied;
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`iv. No sanctions or contempt citations imposed by any
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`court or administrative body;
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`v.
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`The individual seeking to appear has read and will
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`comply with the Office Patent Trial Practice Guide
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`and the Board’s Rules of Practice for Trials set
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`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
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`of Professional Conduct set forth in 37 C.F.R.
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`§ 11.101 et seq. and subject to the Office’s
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`disciplinary
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`jurisdiction
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`under
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`37 C.F.R.
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`§ 11.19(a);
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`vii. All other proceedings before the Office for which
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`the individual has applied to appear pro hac vice in
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`the last three (3) years; and
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`viii. Familiarity with the subject matter at issue in the
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`proceeding.
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`2
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`Case IPR2017-02039
`U.S. Patent No. 7,199,715
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`III. STATEMENT OF MATERIAL FACTS
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`
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`Supported by the Affidavit of Lauren M. Nowierski filed concurrently
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`herewith (Ex. 2101), IV respectfully shows the following facts:
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`1.
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`IV filed this motion on September 26, 2017, no sooner than 21 days
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`after service of the Petition on August 31, 2017.
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`2.
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`IV’s lead counsel, Andrew G. Heinz, is a registered practitioner (Reg.
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`No. 59,996).
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`3. Ms. Nowierski is an associate at the law firm of Desmarais LLP, an
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`intellectual property litigation firm. (Ex. 2101 ¶ 3.)
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`4. Ms. Nowierski is an experienced patent litigation attorney, having
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`practiced patent litigation for approximately eight (8) years. (Id. ¶ 4.)
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`5. Ms. Nowierski has an established familiarity with the subject matter at
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`issue in this proceeding. The patent involved in this proceeding is
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`U.S. Patent No. 7,199,715, and Ms. Nowierski has reviewed U.S.
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`Patent No. 7,199,715 and its prosecution file history. (Id. ¶ 5.) Ms.
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`Nowierski has also reviewed the parties’ papers and exhibits in this
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`proceeding, as well as the Board’s decisions in this proceeding to
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`date. (Id.) Ms. Nowierski is also familiar with the ’715 Patent
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`through serving as Intellectual Ventures II LLC’s litigation counsel in
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`3
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`
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`Case IPR2017-02039
`U.S. Patent No. 7,199,715
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`the related litigation involving the ’715 Patent, Intellectual Ventures II
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`LLC v. FedEx Corp. et al., No. 2:16-cv-980 (E.D. Tex.). (Id.)
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`6. Ms. Nowierski is a member in good standing of the State Bars of New
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`York and New Jersey. (Id. ¶ 6.)
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`7. Ms. Nowierski has never been suspended or disbarred from practice
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`before any court or administrative body. (Id. ¶ 7.)
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`8. Ms. Nowierski has never been denied admission to practice before
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`any court or administrative body. (Id. ¶ 8.)
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`9.
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`No court or administrative body has ever imposed sanctions or
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`contempt citations against Ms. Nowierski. (Id. ¶ 9.)
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`10. Ms. Nowierski 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 set forth in
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`37 C.F.R. part 42. (Id. ¶ 10.)
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`11. Ms. Nowierski understands that she will be subject to the USPTO
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`Rules of Professional Conduct set forth in 37 C.F.R. § 11.101 et seq.
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`and subject to the Office’s disciplinary jurisdiction under 37 C.F.R.
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`§ 11.19(a). (Id. ¶ 11.)
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`12.
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`In the past three years, Ms. Nowierski has sought pro hac vice
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`admission in the following cases: Case IPR2015-01076, in which the
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`Board granted her pro hac vice admission. (Id. ¶ 12). Ms. Nowierski
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`4
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`Case IPR2017-02039
`U.S. Patent No. 7,199,715
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`is concurrently seeking pro hac vice admission in Cases IPR2017-
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`00729, IPR2017-00741, IPR2017-00787, IPR2017-00859, IPR2017-
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`02028, IPR2017-02030, and IPR2017-02043, each of which involve
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`patents asserted in the related litigation Intellectual Ventures II LLC v.
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`FedEx Corp. et al., No. 2:16-cv-980 (E.D. Tex.). (Id. ¶ 12).
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`IV. GOOD CAUSE EXISTS TO ADMIT MS. NOWIERSKI PRO HAC
`VICE IN THIS PROCEEDING.
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`
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`The Board permits the pro hac vice admission as back-up counsel of an
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`attorney not registered to practice before the USPTO, subject to the condition that
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`lead counsel be a registered practitioner and subject to any other conditions the
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`Board may impose. 37 C.F.R. § 42.10(c). Both the registered practitioner lead
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`counsel condition and the Board’s other conditions are satisfied here.
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`
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`Lead counsel for IV, Andrew G. Heinz, is a registered practitioner. Ms.
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`Nowierski, for whom IV seeks pro hac vice admission as back-up counsel, is an
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`experienced litigator with an established familiarity with the subject matter at issue
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`in this proceeding. Ms. Nowierski has practiced patent litigation for approximately
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`nine years. Ms. Nowierski is familiar with U.S. Patent 7,199,715 and its
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`prosecution history. Ms. Nowierski has also reviewed the parties’ papers and
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`exhibits in this proceeding, as well as the Board’s decisions in this proceeding to
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`date. Ms. Nowierski is also familiar with the ’715 Patent through serving as
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`Intellectual Ventures II LLC’s litigation counsel in the related litigation involving
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`5
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`Case IPR2017-02039
`U.S. Patent No. 7,199,715
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`the ’715 Patent, Intellectual Ventures II LLC v. FedEx Corp. et al., No. 2:16-cv-
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`980 (E.D. Tex.). And Ms. Nowierski’s affidavit sets forth the facts providing good
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`cause for her admission as required by Unified Patents, Inc. v. Parallel Iron LLC,
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`Case IPR2013-00639, Paper 7.
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`
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`Because IV has appointed a registered practitioner as lead counsel and
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`because Ms. Nowierski is an experienced litigator with an established familiarity
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`with the subject matter of this proceeding, including U.S. Patent No. 7,199,715,
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`there is good cause to admit Ms. Nowierski pro hac vice as back-up counsel for IV
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`in this proceeding. Thus, the Board should admit Ms. Nowierski pro hac vice as
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`back-up counsel in this proceeding.
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`V. CONCLUSION
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`For the foregoing reasons, IV respectfully requests that Ms. Nowierski be
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`admitted pro hac vice as back-up counsel in this proceeding. IV will promptly file
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`updated mandatory notices reflecting her admission should the Board grant IV’s
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`motion.
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`6
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`Case IPR2017-02039
`U.S. Patent No. 7,199,715
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`Dated: September 26, 2017
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`Respectfully submitted,
`
`/kkm/
`Kevin K. McNish (Reg. No. 65,047)
`kkm-@desmaraisllp.com
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`Telephone: 212-351-3400
`Facsimile: 212-351-3401
`
`Counsel for Patent Owner
`Intellectual Ventures II LLC
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`7
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`Case IPR2017-02039
`U.S. Patent No. 7,199,715
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on September
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`26, 2017, a complete copy of the foregoing was served on counsel of record for
`Petitioner by filing this document through PTAB E2E and by sending this
`document via electronic mail to the following addresses:
`
`Jeffrey Berkowitz (Reg. No. 36,743)
`jeffrey.berkowitz@finnegan.com
`
`Michael V. Young Sr. (Reg. No. 61,180)
`michael.young@finnegan.com
`
`James Stein (Reg. No. 63,782)
`james.stein@finnegan.com
`
`Daniel Tucker (Reg. No. 62,781)
`daniel.tucker@finnegan.com
`
`Finnegan, Henderson, Farabow, Garrett,
`& Dunner L.L.P.
`Two Freedom Square
`11955 Freedom Drive, Suite 800
`Reston, VA 20190
`
`Dated: September 26, 2017
`
`Grace Klock Mills (Reg. No. 66,946)
`gracie.mills@finnegan.com
`
`Alexander Boyer (Reg. No. 66,599)
`alexander.boyer@finnegan.com
`
`Bradford Schulz (Reg. No. 75,006)
`bradford.schulz@finnegan.com
`
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`Respectfully submitted,
`
`/kkm/
`Kevin K. McNish (Reg. No. 65,047)
`kkm-ptab@desmaraisllp.com
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`Telephone: 212-351-3400
`Facsimile: 212-351-3401
`
`Counsel for Patent Owner
`Intellectual Ventures II LLC
`
`
`
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`8
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