Filed on behalf of SPEAKWARE, INC.
`By: DOVEL & LUNER, LLP
`
`Sean A. Luner
`
`sean@dovel.com
`
`Simon Franzini
`
`simon@dovel.com
`
`201 Santa Monica Blvd., Suite 600
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`Santa Monica, CA 90401
`
`Telephone: (310) 656-7066
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`Facsimile: (310) 656-7069
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`
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SPEAKWARE, INC.,
`Patent Owner.
`
`__________________
`
`Case No. IPR2019-00874
`Patent 6,397,186
`__________________
`
`
`PATENT OWNER’S MOTION FOR PRO HAC VICE ADMISSION OF
`SIMON FRANZINI PURSUANT TO 37 C.F.R. § 42.10
`
`
`
`By: DOVEL & LUNER, LLP
`
`Sean A. Luner
`
`sean@dovel.com
`
`Simon Franzini
`
`simon@dovel.com
`
`201 Santa Monica Blvd., Suite 600
`
`Santa Monica, CA 90401
`
`Telephone: (310) 656-7066
`
`Facsimile: (310) 656-7069
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SPEAKWARE, INC.,
`Patent Owner.
`
`__________________
`
`Case No. IPR2019-00874
`Patent 6,397,186
`__________________
`
`
`PATENT OWNER’S MOTION FOR PRO HAC VICE ADMISSION OF
`SIMON FRANZINI PURSUANT TO 37 C.F.R. § 42.10
`
`
`
`
`Case No. IPR2019-00874
`
`Pursuant to 37 C.F.R. § 42.10 (c), Patent Owner SpeakWare, Inc.
`
`respectfully requests that the Board recognize Mr. Simon Franzini as counsel pro
`
`hac vice during this proceeding. This motion was authorized by the Board in Paper
`
`No. 3 of this proceeding (April 17, 2019 “Notice of Filing Date Accorded to
`
`Petition”).
`
`I.
`
`Time for Filing
`
`This Motion for Pro Hac Vice Admission is being filed no sooner than
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`twenty one (21) days after service of the petition.
`
`II.
`
`Statement of Facts
`
`The following statement of facts shows that there is good cause for the
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`Board to recognize Mr. Franzini pro hac vice.
`
`Mr. Franzini is an experienced litigation attorney and has been involved in
`
`numerous patent infringement litigations in District Courts across the country. He
`
`has experience in jury trials, Markman hearings, Federal Circuit appeals, and
`
`International Trade Commission investigations in patent infringement litigation
`
`matters.
`
`U.S. Patent 6,397,186 is the subject of a co-pending patent infringement case
`
`in the Central District of California (“the co-pending litigation”): SpeakWare, Inc.
`
`v. Microsoft Corporation, et al, Case No. 8:18-cv-01293-DOC (DFM)
`
`(consolidated from five separate cases involving the same patent-in-suit:
`
`
`
`
`
`Case No. IPR2019-00874
`
`SpeakWare, Inc. v. Microsoft Corporation, Case No. 8:18-cv-01293-DOC (DFM);
`
`SpeakWare, Inc. v. Google LLC, Civil Action No. 8:18-cv-01299-DOC (DFM);
`
`SpeakWare, Inc. v. Samsung Electronics Co., Ltd. and Samsung Electronics
`
`America, Inc., Case No. 8:18-cv-01300-DOC (DFM); SpeakWare, Inc. v. Apple
`
`Inc., Case No. 8:18-cv-01302-DOC (DFM); and SpeakWare, Inc. v. Amazon.com,
`
`Inc., Case No. 8:18-cv-01303-DOC (DFM)). Mr. Franzini is lead counsel for
`
`SpeakWare, Inc. in the co-pending litigation and, as such, has an established
`
`familiarity with the subject matter at issue in this proceeding. In the co-pending
`
`litigation, Mr. Franzini prepared the case-initiating Complaints asserting
`
`infringement claims against the five Defendants, prepared SpeakWare’s brief
`
`opposing Google’s Motion to Dismiss on the grounds that U.S. Patent 6,397,186 is
`
`not directed to patentable subject matter under 35 U.S.C. § 101, and successfully
`
`argued against this Motion to Dismiss. Going forward, Mr. Franzini will also be
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`heavily involved in forming claim construction positions and drafting claim
`
`construction briefs in the co-pending litigation. This experience is directly relevant
`
`to the issue of unpatentability that is central to Microsoft Corporation’s petition
`
`requesting inter partes review of U.S. Patent 6,397,186.
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`Therefore, Petitioner respectfully submits that there is good cause for the
`
`Board to recognize Mr. Franzini as counsel pro hac vice during this proceeding.
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`
`
`
`
`III. Affidavit or Declaration of Individual Seeking to Appear
`This Motion for Pro Hac Vice Admission is accompanied by an Affidavit of
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`Case No. IPR2019-00874
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`Mr. Simon Franzini.
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`
`
`
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`By:
`
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`Respectfully submitted,
`
`
`
`/s/ Sean A. Luner
`Sean A. Luner
`Registration No. 36,588
`sean@dovel.com
`DOVEL & LUNER, LLP
`Santa Monica, CA 90401
`Telephone: (310) 656-7066
`Facsimile: (310) 656-7069
`
`Lead Counsel for Patent Owner
`
`Date: May 31, 2019
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`
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`Case No. IPR2019-00874
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`AFFIDAVIT OF MR. SIMON FRANZINI IN SUPPORT OF MOTION FOR
`PRO HAC VICE ADMISSION
`
`Pursuant to 37 C.F.R. § 1.68, I, Simon Franzini, hereby attest that all
`
`
`
`statements made to my knowledge are true and all statements made on information
`
`and belief are believed to be true.
`
`
`
`1.
`
`I am a member in good standing of the Bar of California, as well as
`
`the following Federal Courts:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`
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`(a) U.S. Court of Appeals for the Federal Circuit;
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`(b) U.S. District Court for the Eastern District of Texas
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`(c) U.S. District Court for the Northern District of California; and
`
`(d) U.S. District Court for the Central District of California.
`
`2.
`
`I have not been suspended or disbarred from practice before any court
`
`or administrative body;
`
`
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`3.
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`I have never had an application for admission to practice before any
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`court or administrative body denied;
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`
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`4.
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`No sanction or contempt citation has been imposed against me by any
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`court or administrative body;
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`
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`
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`Case No. IPR2019-00874
`
`
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`5.
`
`I have 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.
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`
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`6.
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`I will be subject to the USPTO Code of Professional Responsibility
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`set forth in 37 C.F.R. §§ 10.20 et seq. and disciplinary jurisdiction under 37 C.F.R.
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`§§ 11.19(a);
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`
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`7.
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`I have applied to appear pro hac vice before this Office in seven co-
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`pending inter partes review proceedings (IPR2019-00340 and IPR2019-00342,
`
`both filed by Google LLC; IPR2019-00495, filed by Unified Patents, Inc.;
`
`IPR2019-00758 and IPR2019-00792, both filed by Microsoft Corporation;
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`IPR2019-00875, also filed by Apple Inc.; and IPR2019-00999, filed by
`
`Amazon.com, Inc.) challenging the claims of the same patent at issue in this
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`proceeding (U.S. Patent 6,397,186); and
`
`
`
`8.
`
`I am an experienced litigation attorney with experience in numerous
`
`litigations involving patent infringement in District Courts across the country,
`
`including experience in jury trials, Markman hearings, Federal Circuit appeals, and
`
`International Trade Commission investigations in patent infringement litigation
`
`matters. I am counsel for SpeakWare, Inc. in a co-pending patent infringement
`
`case in the Central District of California (“the co-pending litigation”): SpeakWare,
`
`Inc. v. Microsoft Corporation, et al, Case No. 8:18-cv-01293-DOC (DFM)
`
`
`
`
`
`Case No. IPR2019-00874
`
`(consolidated from five separate cases involving the same patent-in-suit:
`
`SpeakWare, Inc. v. Microsoft Corporation, Case No. 8:18-cv-01293-DOC (DFM);
`
`SpeakWare, Inc. v. Google LLC, Civil Action No. 8:18-cv-01299-DOC (DFM);
`
`SpeakWare, Inc. v. Samsung Electronics Co., Ltd. and Samsung Electronics
`
`America, Inc., Case No. 8:18-cv-01300-DOC (DFM); SpeakWare, Inc. v. Apple
`
`Inc., Case No. 8:18-cv-01302-DOC (DFM); and SpeakWare, Inc. v. Amazon.com,
`
`Inc., Case No. 8:18-cv-01303-DOC (DFM)). I am therefore familiar with the
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`subject matter at issue in this proceeding, including the prior art on which
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`Petitioner relies in this request, as well as the issues of claim construction that will
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`be briefed in the co-pending litigation.
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`
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`
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`Pursuant to 28 U.S.C. § 1746, I declare under penalty of perjury that the
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`foregoing is true and correct.
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`Date: May 31, 2019
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`/s/ Simon Franzini
`Simon Franzini
`simon@dovel.com
`DOVEL & LUNER, LLP
`Santa Monica, CA 90401
`Telephone: (310) 656-7066
`Facsimile: (310) 656-7069
`
`
`
`
`
`
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`Case No. IPR2019-00874
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`CERTIFICATE OF FILING AND SERVICE
`I hereby certify that a true and correct copy of the foregoing PATENT
`
`OWNER MANDATORY NOTICE INFORMATION PURSUANT TO 37
`
`C.F.R. 42.8 is being filed via PTAB E2E and served by electronic mail this 31st
`
`day of May, 2019 on counsel for Petitioner as follows:
`
`Adam P. Seitz
`ERISE IP, P.A.
`7015 College Blvd., Ste. 700
`Overland Park, Kansas 66211
`Adam.Seitz@eriseip.com
`
`Jennifer C. Bailey
`ERISE IP, P.A.
`7015 College Blvd., Ste. 700
`Overland Park, Kansas 66211
`Jennifer.Bailey@eriseip.com
`
`Paul R. Hart
`ERISE IP, P.A.
`5600 Greenwood Plaza Blvd., Ste. 200
`Greenwood Village, Colorado 80111
`Paul.Hart@eriseip.com
`
`
`
`
`
`
`
`
`/s/ Sean A. Luner
`Sean A. Luner
`Registration No. 36,588
`sean@dovel.com
`DOVEL & LUNER, LLP
`Santa Monica, CA 90401
`Telephone: (310) 656-7066
`Facsimile: (310) 656-7069
`
`Lead Counsel for Patent Owner
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`Date: May 31, 2019
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