UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
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`WESTERN DIGITAL CORPORATION,
`Petitioner
`v.
`SPEX TECHNOLOGIES, INC.
`Patent Owner
`
`_________________________
`CASE NO: IPR2018-00082
`U.S. PATENT: 6,088,802
`_________________________
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`PETITIONER’S MOTION FOR PRO HAC VICE ADMISSION
`OF FRANK P. COTÉ UNDER 37 C.F.R § 42.10(C)
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`_________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`WESTERN DIGITAL CORPORATION,
`Petitioner
`v.
`SPEX TECHNOLOGIES, INC.
`Patent Owner
`
`_________________________
`CASE NO: IPR2018-00082
`U.S. PATENT: 6,088,802
`_________________________
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`PETITIONER’S MOTION FOR PRO HAC VICE ADMISSION
`OF FRANK P. COTÉ UNDER 37 C.F.R § 42.10(C)
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`UPDATED EXHIBIT LIST
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`Exhibit Number
`1001
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`Document
`U.S. Patent No. 6,088,802 (“the ’802 Patent”)
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`1014
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`Summons Returned as Executed, SPEX Techs., Inc. v.
`Western Digital Corp., Case No. 8:16-cv-01799 (C.D. Cal.
`filed Oct. 31, 2016)
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`File History of the ’802 Patent
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`U.S. Patent No. 5,887,145 to Harari et al. (“Harari”)
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`U.S. Patent No. 6,199,163 to Dumas et al. (“Dumas”)
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`Don Anderson, PCMCIA SYSTEM ARCHITECTURE: 16-
`BIT PC CARDS (MindShare, Inc., 2nd ed. 1995)
`(“PCMCIA Architecture”)
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`U.S. Patent No. 5,822,196 to Hastings et al. (“Hastings”)
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`U.S. Patent No. 5,922,060 to Goodrum (“Goodrum”)
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`U.S. Patent No. 5,941,965 to Moroz et al. (“Moroz”)
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`U.S. Patent No. 5,943,482 to Culley et al. (“Culley”)
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`U.S. Patent No. 6,009,151 to Staples (“Staples”)
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`Windows Developers Journal, Vol. 7, No. 8 (Aug. 1996)
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`Claim Construction Briefing in SPEX Techs., Inc. v.
`Western Digital Corp., Case No. 16-cv-01799 (C.D. Cal.)
`(“SPEX Claim Construction Brief”)
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`Tentative Order Regarding Claim Construction in SPEX
`Techs., Inc. v. Western Digital Corp., Case No. 16-cv-
`01799 (C.D. Cal.) (“Tentative Construction”)
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`1015
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`Declaration of Dr. Martin Kaliski, Ph.D. (“Kaliski Decl.”)
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`2
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`Exhibit Number
`1016
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`Document
`Exhibit A (Updated) to Defendants’ Reply Claim
`Construction Brief
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`1017
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`1018
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`1019
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`1020
`1021
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`1025
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`1023
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`1024
`1025
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`Reporter’s Transcript of Proceedings in SPEX Techs, Inc. v.
`Kingston Tech. Corp., et al., Case No. 16-cv-01790 (C.D.
`Cal.) (“Markman Hearing Transcript”)
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`Declaration of Sylvia Hall-Ellis, Ph.D. (“Hall-Ellis Decl.”)
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`U.S. Patent No. 5,765,027 to Wang et al. (“Wang”)
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`MARC Record
`Hearing Transcript dated February 8, 2018
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`Excerpts from the April 20, 2018 Deposition of Dr. V.
`Thomas Rhyne
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`Excerpts from the April 25, 2018 Deposition of Mr. Miguel
`Gomez
`Supplemental Declaration of Dr. Martin Kaliski
`Declaration of Frank P. Cote in Support of Petitioner’s
`Motion for Pro Hac Vice Admission
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`I.
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`RELIEF REQUESTED
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`Pursuant to 37 C.F.R. § 42.10(c), Petitioner, by and through its attorneys,
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`respectfully requests that the Board admit Frank P. Coté pro hac vice in this
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`proceeding. Patent Owner’s counsel has indicated that Patent Owner does not
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`oppose this motion.
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`II. GOVERNING LAW, RULES, AND PRECEDENT
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`Section 42.10(c) of 37 C.F.R. provides as follows:
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`The Board may recognize counsel pro hac vice during a proceeding upon a
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`showing of good cause, subject to the condition that lead counsel be a registered
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`practitioner and to any other conditions as the Board may impose. For example,
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`where the lead counsel is a registered practitioner, a motion to appear pro hac vice
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`by counsel who is not a registered practitioner may be granted upon showing that
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`counsel is an experienced litigating attorney and has an established familiarity with
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`the subject matter at issue in the proceeding.
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`The Board has specified that a motion for pro hac vice admission shall be in
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`filed in accordance with the “ORDER-AUTHORIZING MOTION FOR PRO HAC
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`VICE ADMISSION – 37 C.F.R. § 42.10” in Unified Patents, Inc. v. Parallel Iron,
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`LLC, Case No. IPR2013-00639 (“Representative Order”). The Representative
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`Order states that the motion must “[c]ontain a statement of facts showing there is
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`good cause for the Board to recognize counsel pro hac vice during the proceeding”
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`and “[b]e accompanied by an affidavit or declaration of the individual seeking to
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`appear” that attests to a number of facts concerning the counsel seeking admission
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`pro hac vice specified in the Representative Order. Accompanying this motion as
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`Exhibit 1025 is the Declaration of Frank P. Cote in Support of this Motion for
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`Admission Pro Hac Vice (“Cote Decl.”)
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`III. STATEMENT OF FACTS
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`1.
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`Petitioner’s lead counsel, Brian M. Buroker, is a registered
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`practitioner (Reg. No. 39,125).
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`2. Mr. Coté is Of Counsel at the law firm Gibson Dunn & Crutcher.
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`(Cite Decl. ¶ 2) (Ex. 1025).
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`3. Mr. Coté is an experienced litigating attorney and has been litigating
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`cases relating to patents for the past eighteen years. (Id.).
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`4. Mr. Coté is a member in good standing of the California State Bar,
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`and among other courts, including U.S. District Courts for the Central, Northern,
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`Southern, and Eastern Districts of California; the Eastern District of Texas; and the
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`United States Courts of Appeals for the Ninth and Federal Circuits. (Id. ¶ 3).
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`5. Mr. Coté has never been suspended or disbarred from practice before
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`any court or administrative body. (Id. ¶ 5).
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`6.
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`No application filed under Mr. Coté for admission to practice before
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`any court or administrative body has ever been denied. (Id. ¶ 6).
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`7.
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`No sanctions or contempt citations have been imposed against Mr.
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`Coté by any court or administrative body. (Id. ¶ 7).
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`8. Mr. Coté has read and agrees to comply with the Office Patent Trial
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`Practice Guide and the Board's Rules of Practice for Trials set forth in part 42 of 37
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`C.F.R. (Id. ¶ 8).
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`9. Mr. Coté understands that he will be subject to the USPTO Rules of
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`Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary
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`jurisdiction under 37 C.F.R. § 11.19(a). (Id. ¶ 9).
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`10. Mr. Coté has not appeared pro hac vice before the Patent Trial and
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`Appeal Board in the last three years. (Id. ¶ 10).
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`11. Mr. Coté has an established familiarity with the subject matter at issue
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`in this proceeding, which he gained from working closely with Brian M. Buroker,
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`lead counsel for Petitioner in this matter. (Id. ¶ 11)
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`12. Additionally, Mr. Coté has carefully reviewed and has developed
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`extensive familiarity with the matters involved in and implicated by these
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`proceedings, including challenged U.S. Patent No. 6,088,802 (“the ’802 patent”)
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`and its file history, the prior art presented in the petition, and the legal and factual
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`issues raised by the Patent Owner in this proceeding. Mr. Coté is also counsel of
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`record for Petitioner in co-pending district court litigation, SPEX Technologies,
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`Inc. v. Western Digital Corporation, et al., Case No. 8:16-cv-01799-JVS-AGR
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`(Central District of California – Southern Division), in which the ’802 patent is
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`asserted. As a result, Mr. Coté has acquired substantial understanding of the
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`underlying legal and technological issues at stake in this proceeding. (Id.).
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`IV. GOOD CAUSE EXISTS FOR PRO HAC VICE ADMISSION OF
`FRANK P. COTE
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`The facts outlined above in the Statement of Facts, supported by the
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`Declaration of Frank P. Cote (Ex. 1025), establish there is good cause to admit Mr.
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`Cote pro hac vice in this proceeding under 37 C.F.R. § 42.10. Petitioner’s lead
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`counsel, Brian M. Buroker, is a registered practitioner in good standing before the
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`Board. Mr. Coté is an attorney in good standing in the State Bar of California and
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`in the U.S. District Courts for the Central, Northern, Southern, and Eastern
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`Districts of California; the Eastern District of Texas; and the United States Courts
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`of Appeals for the Ninth and Federal Circuits. Mr. Cote has extensive experience
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`litigating patents, including the ’802 patent, which is the subject of this proceeding.
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`As a result, Mr. Coté is familiar with the subject matter at issue in this proceeding.
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`Furthermore, Mr. Coté has carefully reviewed the ’802 patent at issue in this
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`proceeding, its licensing history, the prior art, the grounds advanced by the Patent
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`Owner and other aspects of the record in this proceeding, and is familiar with these
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`matters. Mr. Coté will be replacing Blair A. Silver, who is currently a counsel of
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`record in this proceeding but is seeking authorization to withdraw. In addition, Mr.
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`Coté is needed to attend the imminent deposition of Patent Owner’s expert. Based
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`on his experience and knowledge, there is good cause to admit Mr. Coté pro hac
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`vice in this proceeding.
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`V. CONCLUSION
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`In light of the foregoing, Petitioner respectfully requests that the Board
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`admit Mr. Coté pro hac vice in this proceeding.
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`DATED: September 27, 2018
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`Respectfully submitted,
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`/s/ Brian M. Buroker/
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`Brian M. Buroker (Reg. No. 39,125)
`Blair Silver (Reg. No. 68,003)
`GIBSON, DUNN & CRUTCHER LLP
`1050 Connecticut Ave., N.W.
`Washington, D.C. 20036-5306
`Tel: 202.955.8500
`bburoker@gibsondunn.com
`bsilver@gibsondunn.com
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`Frank P. Coté (pro hac vice)
`GIBSON, DUNN & CRUTCHER LLP
`3161 Michelson Drive
`Irvine, CA 92612-4412
`Tel: 949.451.4090
`fcote@gibsondunn.com
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`Attorneys for Petitioners
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`CERTIFICATE OF SERVICE
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`The undersigned certifies service pursuant to 37 C.F.R. § 42.6(e) on the
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`Patent Owner via e-mail a copy of Petitioner’s Motion for Pro Hac Vice Admission
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`of Frank P. Coté Under 37 C.F.R. § 42.10(C):
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`Peter Lambrianakos, plambrianakos@brownrudnick.com
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`Alfred R. Fabricant, afabricant@brownrudnick.com
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`Vincent J. Rubino, III, vrubino@brownrudnick.com
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`Enrique W. Iturralde, eiturralde@brownrudnick.com
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`DATED: September 27, 2018
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`/s/ Brian M. Buroker
`Brian M. Buroker (Reg. No. 39,125)
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`Attorney for Petitioner
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