`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`AQ TEXTILES, LLC,
`Petitioner,
`v.
`ARUN AGARWAL,
`Patent Owner.
`
`Case PGR2017-00041
`Patent 9,481,950
`
`PATENT OWNER’S UNOPPOSED MOTION TO APPEAR PRO
`HAC VICE UNDER 37 C.F.R. § 42.10
`BY JAMAL M. EDWARDS PC AND AJAY K. MAGO
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`Respondent respectfully requests that the Board recognize Messrs.
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`Jamal M. Edwards, P.C., and Ajay K. Mago as counsel pro hac vice during
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`this proceeding.
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`I.
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`TIME FOR FILING
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`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 as required by the Order re
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`NOTICE OF FILING DATE ACCORDED TO PETITION AND TIME FOR
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`Case PGR2017-00041
`FILING PATENT OWNER PRELIMINARY RESPONSE, entered August 8,
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`2017 (“the Initial Order”). (Paper #3).
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`II.
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`STATEMENT OF FACTS
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`As required by the Initial Order, the following statement of facts shows
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`that there is good cause for the Board to recognize each of Messrs. Edwards
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`and Mago pro hac vice. Respondent addresses each attorney below, in turn.
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`A. Mr. Edwards
`Mr. Edwards is a law partner of lead counsel and has an extensive
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`professional working relationship with lead counsel spanning almost two (2)
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`decades and involving multiple firms, including the undersigned law firm and
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`Kirkland & Ellis LLP, where he was previously a partner. Edwards is an
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`experienced litigation attorney, and has been involved in numerous litigations
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`involving patent infringement in District Courts across the country. He has
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`experience in jury and bench patent trials, Markman hearings, and Federal
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`Circuit oral arguments in patent infringement litigation matters, including
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`cases dating as early as 2004. Early in his career, Mr. Edwards served as a
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`judicial law clerk in a federal district court that hears a high volume of patent
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`cases, the United States District Court for the Eastern District of Virginia, and
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`Case PGR2017-00041
`also to the now Chief Judge of the United States Court of Appeals for the
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`Fourth Circuit, where he is a member in good standing of the appellate bar and
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`successful advocate recognized by a favorable and unanimous published
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`decision. He is also an experienced advocate and member of the bar of the
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`United States Court of Appeals for the Federal Circuit, since at least 2007.
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`The parties to the proceeding have a broader and more extensive dispute
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`amongst them, which has been pending since at least as early as 2015. The
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`litigation dispute began when Respondent filed a complaint naming Petitioner
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`and others as Respondents before the United States International Trade
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`Commission, Investigation No. 337-TA-976 (hereafter, the “ITC
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`Investigation”), alleging the unlawful importation into the United States, the
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`sale for importation into the United States and/or the sale within the United
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`States after importation, of woven textile fabrics and products containing the
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`same that infringe United States Patent No. 9,131,790 (“the ’790 patent”)
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`and/or falsely advertise the thread count of such products. Respondent
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`thereafter filed a civil action against Petitioner in the United States District
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`Court for the Eastern District of Texas, Marshall Division, styled as AAVN,
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`Inc. v. AQ Textiles, LLC; Case No. 2:15-cv-01527, alleging infringement of
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`Case PGR2017-00041
`the ‘790 Patent. (the “Texas Patent Case”). These actions collectively shall be
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`referred to as the “’790 Patent Litigation”).
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`The ’790 Patent Litigation was settled pursuant to a Confidential
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`Settlement Agreement and a General Exclusion Order entered by the ITC.
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`Recent conduct by Petitioner has raised questions regarding whether Petitioner
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`has violated the terms of the parties’ settlement agreement. At issue in the
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`analysis of this issue are Petitioner’s post-settlement conduct, including its
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`commercial and intellectual property activities, many of which involve or
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`relate to the subject matter of this Petition. Respondent has asked Mr.
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`Edwards to assist and strategically coordinate a resolution of the multiple
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`issues and disputes between the parties, thereby requiring him to become
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`intimately familiar with Respondent’s technology, products and processes,
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`including several of Respondent’s patents, including U.S. Patent No.
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`9,481,950 (’950 Patent), at issue in this proceeding. As such, Mr. Edwards
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`has reviewed the ’950 patent, the instant petition, and has been actively
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`working on matters involving several related patents, which Respondent is
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`evaluating and anticipates may become involved in the broader dispute
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`between the parties.
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`Case PGR2017-00041
`Specifically, Mr. Edwards has reviewed prior art references and claim
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`charts for invalidity contentions, and has been involved in forming
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`preliminary claim construction positions and other strategic matters, all of
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`which are relied upon by Respondent in preparing its responsive activities
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`regarding the Petition and other matters germane to the dispute between the
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`parties. These activities center on the same subject matter at issue in the
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`instant petition. Respondent has, accordingly, expended significant financial
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`resources in the matters, including with Mr. Edwards as counsel, and
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`Respondent wishes to continue using him as counsel in this proceeding.
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`B. Mr. Mago
`Mr. Mago is also a law partner of lead counsel, and has an extensive
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`professional working relationship spanning almost fifteen (15) years and
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`involving multiple firms, including the undersigned law firm and Duane
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`Morris LLP, where he was previously a partner. Early in his career, Mr. Mago
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`served as judicial law clerk in the Federal District Court in the Northern
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`District of Texas. As noted above, the parties are engaged in an on-going
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`dispute which spans several years and several tribunals. Mr. Mago has
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`represented Respondent throughout all those proceedings and prior, including
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`having actively participated in the ITC Investigation and the Texas Patent
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`Case PGR2017-00041
`Case, all of which involved the same subject matter as the instant petition.
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`Mr. Mago remains actively involved with enforcement of the ITC’s General
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`Exclusion Order.
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`Mr. Mago is an experienced attorney, and has been involved in
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`numerous litigations involving patent infringement, particularly on behalf of
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`Respondent, for whom he serves as the general outside corporate counsel. He
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`has appeared in litigation in several federal and state courts, including the
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`Texas Patent Case involving similar subject matter.
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`Given his long-standing representation of Respondent in patent and
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`other matters, Mr. Mago has reviewed prior art references and claim charts for
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`invalidity contentions, and has been involved in forming claim construction
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`positions and other strategic matters, all of which are relied upon by
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`Respondent in preparing its response to the Petition and other matters germane
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`to the dispute between the parties, which all center on the same subject matter
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`at issue in the instant petition. Respondent has expended significant financial
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`resources with Mr. Mago as counsel, and Respondent wishes to continue using
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`him as counsel in this proceeding.
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`Case PGR2017-00041
`Further, counsel for Petitioner does not oppose Messrs. Edwards and
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`Mago appearing pro hac vice during this proceeding. Therefore, Respondent
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`respectfully submits that there is good cause for the Board to recognize each
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`of Messrs. Edwards and Mago as counsel pro hac vice during this proceeding.
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`III. DECLARATIONS IN SUPPORT
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`This Motion for Pro Hac Vice Admission is accompanied by
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`Declarations, by each of Messrs. Edwards and Mago, as required by the Initial
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`Order.
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`CONCLUSION
`Respondent respectfully submits that there is good cause for the Board
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`to recognize each of Messrs. Edwards and Mago as counsel pro hac vice
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`during this proceeding, and respectfully requests entry of an order recognizing
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`each of them.
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`* * *
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`Dated: September 28, 2017
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`Case PGR2017-00041
`Respectfully Submitted
`
`Michelle W. Skinner
`Jamal M. Edwards PC (pro hac vice pending)
`Ajay K. Mago
`(pro hac vice pending)
`CULHANE MEADOWS PLLC
`30 S. Wacker Dr., 22nd Floor
`Chicago, IL 60606
`mskinner@culhanemeadows.com
`jedwards@culhanemeadows.com
`amago@culhanemeadows.com
`1-844-CULHANE (285-4263)
`
`Attorneys for Respondent
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`CERTIFICATE OF SERVICE
`The undersigned certifies that a true copy of the foregoing MOTION
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`FORPRO HAC VICE ADMISSION UNDER 37 C.F.R. § 42.10 was served
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`electronically via e-mail on September 28, 2017, in its entirety on the
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`following:
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`Dated: September 28, 2017
`
`/s/ Michelle Ware Skinner
`One of the Attorneys for Respondent
`
`Michelle W. Skinner
`Jamal M. Edwards PC (pro hac vice pending)
`Ajay K. Mago
`(pro hac vice pending)
`CULHANE MEADOWS PLLC
`30 S. Wacker Dr., 22nd Floor
`Chicago, IL 60606
`mskinner@culhanemeadows.com
`jedwards@culhanemeadows.com
`amago@culhanemeadows.com
`1-844-CULHANE (285-4263)
`
`Attorneys for Respondent
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`