UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HILTI AKTIENGESELLSCHAFT
`
`Petitioner,
`
`v.
`
`SPECIFIED TECHNOLOGIES INC.,
`
`Patent Owner.
`
`Case No. IPR2024-00193
`
`U.S. Patent No. 10,143,868
`
`PETITIONER’S MOTION FOR ADMISSION
`PRO HAC VICE OF W. COOK ALCIATI
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HILTI AKTIENGESELLSCHAFT
`
`Petitioner,
`
`v.
`
`SPECIFIED TECHNOLOGIES INC.,
`
`Patent Owner.
`
`Case No. IPR2024-00193
`
`U.S. Patent No. 10,143,868
`
`PETITIONER’S MOTION FOR ADMISSION
`PRO HAC VICE OF W. COOK ALCIATI
`
`
`
`LIST OF EXHIBITS
`
`U.S. Patent No. 10,143,868 to Lopes et al.
`File History of U.S. Patent No. 10,143,868
`Declaration of Milosh Puchovsky
`WO2013/160776 to Ramorino et al.
`U.S. Patent No. 8,739,482 to Feil, III et al.
`3M Fire Protection Products Publication
`STI’s Opening Claim Construction Brief
`STI’s Supplemental Infringement Contentions
`STI’s EZDR Product Data Sheet
`U.S. Patent Publication No. 2015/0251028 to Klein et al.
`U.S. Patent Publication No. 2014/0318064 to Reinhardt
`WO2012/009211 to Zernach
`GB2490598 to Rigollet et al.
`GB2349189 to Gardner
`U.S. Patent No. 4,373,235 to Korgaonkar
`Declaration of Michael A. Dorfman
`U.S. Patent No. 8,069,623 to Colwell et al.
`U.S. Patent Publication No. 2012/0242083 to Blocher et al.
`Declaration of Sebastian Simon
`STI’s Objections and Responses to Hilti’s Second Set of Interrogatories
`Sotera Stipulation
`
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`1011
`1012
`1013
`1014
`1015
`1016
`1017
`1018
`1019
`1020
`1021
`
`i
`
`
`
`1022
`
`1023
`
`Screen capture of The Wayback Machine Archive of the below URL:
`https://web.archive.org/web/20151123164531/http:/multimedia.3m.co
`m/mws/media/446191O/3mtm-fire-barrier-pass-through-device.pdf
`Declaration of W. Cook Alciati in Support of Motion for Admission
`Pro Hac Vice
`
`ii
`
`
`
`I. RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. § 42.10, Petitioner Hilti Aktiengesellschaft requests
`
`that the Board admit W. Cook Alciati pro hac vice in this proceeding. Patent
`
`Owner has indicated that they will not oppose this motion.
`
`II. GOVERNING RULE
`
`Pursuant to 37 C.F.R. §42.10(c), the 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.
`
`III.
`
`SHOWING UNDER 37 C.F.R. §42.10(c)
`
`The undersigned is a registered practitioner and is experienced in inter
`
`partes proceedings before the Board. W. Cook Alciati is a member in good
`
`standing of the New York State Bar, with no suspensions or disbarments from
`
`practice, nor any application for admission to practice denied, nor any sanctions or
`
`contempt citations, and is admitted to practice in the United States District Court
`
`for the Western District of New York, the United States District Court for the
`
`Western District of Wisconsin, the United States District Court for the District of
`
`Colorado, and the United States Court of Appeals for the Federal Circuit. (Ex.
`
`1
`
`
`
`1023 at ¶¶2-5). Mr. Alciati has been litigating patent cases for approximately
`
`thirteen years and has been involved in several inter partes reviews and
`
`reexamination proceedings. (Id. at ¶1).
`
`Mr. Alciati has familiarity with the subject matter at issue in the proceeding.
`
`Mr. Alciati has reviewed U.S. Patent No. 10,143,868. Mr. Alciati is also counsel
`
`for Plaintiff in the related district court litigation Hilti Aktiengesellschaft v.
`
`Specified Technologies Inc., No. 1:22-cv-01248-CJB (D. Del). Moreover, Mr.
`
`Alciati has reviewed the Petition for Inter Partes review, the declaration of Milosh
`
`Puchovsky, the declaration of Sebastian Simon, as well as the primary references
`
`at issue in the Petition – Ramorino, Feil, Rigollet, and 3M Publication. (Id. at ¶8).
`
`Therefore, Mr. Alciati has familiarity with the subject matter at issue in the
`
`proceeding. Mr. Alciati has also been admitted pro hac vice before the Board in
`
`IPR2014-01235, IPR2015-00249, IPR2017-01809, IPR2017-01810, IPR2019-
`
`00405, IPR2019-00408, IPR2019-00409, IPR2022-00527, IPR2022-00528,
`
`IPR2022-00574, IPR2022-00757, IPR2022-00758, IPR2022-01566, and IPR2023-
`
`00852. (Id. at ¶7).
`
`IV. CONCLUSION
`
`For the foregoing reasons, Patent Owner respectfully requests that the Board
`
`admit W. Cook Alciati pro hac vice as back-up counsel in this proceeding.
`
`2
`
`
`
`Dated: February 13, 2024
`
`Respectfully submitted,
`
`By: /s/ Michael A. Dorfman
`
`Michael A. Dorfman (Lead Counsel)
`USPTO Reg. No. 46,669
`GARDELLA GRACE P.A.
`2502 North Clark Street, Suite 222
`Chicago, IL 60614
`Phone: 773-755-4942
`Fax: 703-740-4541
`mdorfman@gardellagrace.com
`
`Natalie J. Grace (Back-up Counsel)
`Reg. No. 65,803
`GARDELLA GRACE P.A.
`80 M Street SE, 1st Floor
`Washington, DC 20003
`Phone: 703-740-4538
`Fax: 703-740-4541
`ngrace@gardellagrace.com
`
`Attorneys for Petitioner
`HILTI AKTIENGESELLSCHAFT
`
`3
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that the foregoing PETITIONER’S MOTION
`
`FOR ADMISSION PRO HAC VICE OF W. COOK ALCIATI and EXHIBIT 1023
`
`were served in their entireties by filing the documents through the Patent Trial and
`
`Appeal Case Tracking System (P-TACTS) as well as providing courtesy copies via
`
`e-mail to the following attorneys of record for the Petitioner listed below:
`
`Lead Counsel:
`
`
`
`Ryan North Miller (Reg. No. 68,262)
`rmiller@foxrothschild.com
`
`Back-up Counsel:
`
`Jeff E. Schwartz (Reg. No. 39,019)
`Carol E. Thorstad-Forsyth (Reg. No. 56,455)
`Lukas Toft (Reg. No. 75,311)
`P. Marshall Ticer (Reg. No. 74,653)
`Bradley T. Edgington (Reg. 77,575)
`John Edwin Ryan R. Guerrero (Reg. No. 82,155)
`jeschwartz@foxrothschild.com
`cforsyth@foxrothschild.com
`ltoft@foxrothschild.com
`mticer@foxrothschild.com
`bedgington@foxrothschild.com
`jguerrero@foxrothschild.com
`
`Dated: February 13, 2024
`
`By: /s/ Michael A. Dorfman
`Michael A. Dorfman
`
`GARDELLA GRACE P.A.
`
`
`
`
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