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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`DATASPEED INC.,
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`Petitioner,
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`v.
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`SUCXESS LLC,
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`Patent Owner.
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`____________
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`Case IPR2020-00116
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`Patent 9,871,671
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`____________
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`PATENT OWNER'S MOTION FOR PRO HAC VICE ADMISSION OF
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`MAXWELL GOSS
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`Case IPR2020-00116
`Patent 9,871,671
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`Pursuant to 37 C.F.R. § 42.10(c), Patent Owner Sucxess LLC (“Patent
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`Owner”) respectfully requests the pro hac vice admission of attorney Maxwell
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`Goss in this proceeding. Patent Owner has conferred with Petitioner Dataspeed Inc.
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`(“Petitioner”), and Petitioner does not oppose this motion.
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`I.
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`Applicable Rules
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`The Board may recognize counsel pro hac vice during an inter partes review
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`proceeding upon a showing of good cause, “subject to the condition that lead
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`counsel be a registered practitioner and to any other conditions as the Board may
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`impose.” 37 C.F.R. § 42.10(c). “For example, where the lead counsel is a
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`registered practitioner, a motion to appear pro hac vice by counsel who is not a
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`registered practitioner may be granted upon showing that counsel is an experienced
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`litigating attorney and has an established familiarity with the subject matter at issue
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`in the proceeding.” Id. The PTAB set forth the required contents of a motion for
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`admission pro hac vice in Unified Patents, Inc. v. Parallel Iron, LLC, Case
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`IPR2013-00639, Paper 7 (“Order – Authorizing Motion for Pro Hac Vice
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`Admission – 37 C.F.R. §42.10”) (PTAB Oct. 15, 2013). Such a motion must
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`contain a statement of facts showing good cause for the Board to recognize counsel
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`pro hac vice during the proceeding, and must be accompanied by a declaration or
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`affidavit of the individual seeking pro hac vice admission attesting to the
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`Case IPR2020-00116
`Patent 9,871,671
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`following: (1) membership in good standing of the Bar of at least one State or the
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`District of Columbia; (2) no suspensions or disbarments from any practice before
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`any court or administrative body; (3) no application for admission to practice
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`before any court or administrative body ever denied; (4) no sanctions or contempt
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`citations imposed by any court or administrative body; (5) the individual seeking to
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`appear has read and will comply with the Office Patent Trial Practice Guide and
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`the Board’s Rules of Practice for Trials set forth in part 42 of 37 C.F.R.; (6) the
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`individual will be subject to the USPTO Rules of Professional Conduct set forth in
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`37 C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction under 37 C.F.R. §
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`11.19(a); (7) all other proceedings before the Office for which the individual has
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`applied to appear pro hac vice in the last three (3) years; and (8) familiarity with
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`the subject matter at issue in the proceeding. Id. at 3.
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`II.
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`Statement of Facts Showing Good Cause
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`Petitioner filed its Petition for Inter Partes Review on October 31, 2019. The
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`Petition relates to U.S. Patent No. 9,871,671 (“’671 Patent”). Lead counsel for
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`Patent Owner, Bernd Axel Nix, is a registered practitioner (Reg. No. 59184).
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`Maxwell Goss seeks admission pro hac vice on behalf of Patent Owner. As set
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`forth herein and in the accompanying Declaration of Maxwell Goss in Support of
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`Motion to Appear Pro Hac Vice (“Goss Decl.,” Exhibit 2001), the facts here
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`Case IPR2020-00116
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`establish good cause for the Board to recognize Mr. Goss pro hac vice in this
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`proceeding.
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`Mr. Goss is a member in good standing of the State Bar of Michigan (Bar
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`No. P78594). and the State Bar of Texas (Bar No. 24069813). Mr. Goss is also a
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`member in good standing of the United States District Court for the Eastern
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`District of Michigan; the United States District Court for the Western District of
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`Michigan; the United States District Court for the Eastern District of Texas; the
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`United States District Court for the Western District of Texas; the United States
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`District Court for the Northern District of Texas; the United States District Court
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`for the Southern District of Texas; the United States District Court for the District
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`of Colorado; the United States District Court for the Northern District of Illinois;
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`the United States District Court for the Northern District of Ohio; and the United
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`States Court of Appeals for the Sixth Circuit. See Exhibit 2001, ¶ 2.
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`Mr. Goss has never been suspended or disbarred from practice before any
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`court or administrative body. See Exhibit 2001, ¶ 3. None of Mr. Goss' applications
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`for admission to practice before any court or administrative body have ever been
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`denied. See id., ¶ 4. Mr. Goss has not been sanctioned nor has he had a contempt
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`citation imposed on him by any court or administrative body. See id., ¶ 5.
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`Mr. Goss has declared that he has read and will comply with the Office
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`Patent Trial Practice Guide and the Board’s Rules of Practice for Trial set forth in
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`part 42 of 37 C.F.R. See Exhibit 2001, ¶ 6. Mr. Goss has acknowledged and agrees
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`that he will be subject to the USPTO Rules of Professional Conduct set forth in 37
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`C.F.R. § 11.101 et. seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
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`See id., ¶ 7. Mr. Goss has not applied to appear pro hac vice before the Patent Trial
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`and Appeal Board in the last three years. See id., ¶8.
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`Mr. Goss has been a practicing attorney for ten years in the area of patent
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`litigation. He has been involved in numerous patent infringement cases in district
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`courts across the country, including the United States District Courts for the
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`Eastern District of Texas, the Northern District of California, the District of
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`Delaware, the District of Colorado, the District of Minnesota, and elsewhere. He
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`has worked with infringement, validity, claim construction, fact and expert
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`discovery, and other issues. See Exhibit 2001, ¶ 9.
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`Mr. Goss is familiar with the subject matter at issue. He represented Patent
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`Owner in Sucxess LLC v. Voyage Auto, Inc., Civil Action No. 1:19-cv-00679, in
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`the United States District Court for the District of Delaware, which related to U.S.
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`Patent No. 9,871,671, the patent at issue in this proceeding. Mr. Goss represents
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`the Patent Owner in five lawsuits now pending in the United States District Court
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`for the District of Delaware, which relate to two other patents in the same family,
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`U.S. Patent Nos. 10,027,505 and 10,454,707. See Exhibit 2001, ¶ 9, 11. Mr. Goss
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`has studied and analyzed the field of technology relevant to the ’671 Patent, as well
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`as the claims, specification and prosecution history of the ’671 Patent.
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`Accordingly, Mr. Goss has become very familiar with both the particular subject
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`matter and substantive issues concerning the ’671 Patent. See id., ¶ 10.
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`In view of Mr. Goss’s knowledge of the subject matter at issue in this
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`proceeding and his experience working with Patent Owner in litigating the ’671
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`Patent, Patent Owner has a substantial need for Mr. Goss’s pro hac vice admission
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`and his involvement in this proceeding. In addition, pro hac vice admission of Mr.
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`Goss will enable Patent Owner to avoid unnecessary expense and duplication of
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`work between this proceeding and the case mentioned above. See 77 Fed. Reg.
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`48,612, 48,661 (Aug. 14, 2012) (Office’s comment on final rule discussing
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`concerns about efficiency and costs where an entity has already engaged counsel
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`for parallel district court litigation).
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`III. Conclusion
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`For the foregoing reasons, Patent Owner respectfully requests that the Board
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`admit Maxwell Goss pro hac vice in this proceeding.
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`Case IPR2020-00116
`Patent 9,871,671
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`Date: 19 November 2019
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`Respectfully submitted,
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`By: /Axel Nix/
`Bernd Axel Nix
`Registration No. 59184
`Counsel for Patent Owner
`Sucxess LLC
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`Case IPR2020-00116
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`CERTIFICATE OF SERVICE
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`I hereby certify that a copy of this motion for pro hac vice admission was
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`served on Petitioner's counsel of record via electronic mail on November 19, 2019
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`at the following addresses:
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`Peter W. Gowdey - pgowdey@dbjg.com
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`Wayne M. Helge - whelge@dbjg.com
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`James T. Wilson - jwilson@dbjg.com
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`with a copy sent to ESong@dbjg.com
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`Date: 19 November 2019
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`Respectfully submitted,
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`By: /Axel Nix/
`Bernd Axel Nix
`Registration No. 59184
`Counsel for Patent Owner
`Sucxess LLC
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