`Petitioner’s Motion for Pro Hac Vice Admission of Michael J. Sacksteder
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`Filed on behalf of Supercell Oy
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`By:
`JENNIFER R. BUSH, Reg. No 50,784
`MICHAEL J. SACKSTEDER
`FENWICK & WEST LLP
`801 California Street
`Mountain View, CA 94041
`Telephone: 650.988.8500
`Facsimile: 650.938.5200
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
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`SUPERCELL OY,
`Petitioner
`
`v.
`
`GREE, INC.,
`Patent Owner.
`
`
`Case PGR2018-00047
`Patent 9,770,659
`_______________
`
`PETITIONER SUPERCELL OY’S MOTION FOR
`PRO HAC VICE ADMISSION OF
`MICHAEL J. SACKSTEDER PURSUANT TO 37 C.F.R. § 42.10(c)
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`PGR2018-00047
`Petitioner’s Motion for Pro Hac Vice Admission of Michael J. Sacksteder
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`I.
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`RELIEF REQUESTED
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`Pursuant to the authorization provided by the Board in Paper No. 3 at
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`page 2, Petitioner Supercell Oy petitions under 37 C.F.R. § 42.10(c) for the
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`pro hac vice admission of Michael J. Sacksteder in this proceeding.
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`II. GOVERNING LAWS, RULES, AND PRECEDENT
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`Section 42.10(c) states as follows:
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`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. STATEMENT OF FACTS
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`Based on the following statement of facts, and supported by the Declaration
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`of Michael J. Sacksteder submitted herewith as Exhibit 1009 (“Ex. 1009”),
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`Petitioner submits that a showing of good cause has been made and respectfully
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`requests the pro hac vice admission of Michael J. Sacksteder in this proceeding:
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`1
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`PGR2018-00047
`Petitioner’s Motion for Pro Hac Vice Admission of Michael J. Sacksteder
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`1.
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`This authorized petition is filed more than twenty-one (21) days after
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`Petitioner’s service of the PETITION FOR POST-GRANT REVIEW OF U.S.
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`PATENT 9,770,659 (Paper No. 1) and after the filing of PATENT OWNER’S
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`MANDATORY NOTICES (Paper No. 4).
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`2.
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`Petitioner’s current lead counsel, Jennifer R. Bush, is a registered
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`practitioner (Reg. No 50,784).
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`3. Mr. Sacksteder is a partner at the law firm of Fenwick & West LLP.
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`Ex. 1009 ¶ 3.
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`4. Mr. Sacksteder is an experienced litigating attorney and has been
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`litigating cases relating to patents for over twenty years. Ex. 1009 ¶ 4.
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`5. Mr. Sacksteder has an established familiarity with the subject matter
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`at issue in this proceeding. Ex. 1009 ¶ 11. He is serving as a consulting attorney
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`in a related, co-pending action before the Tokyo District Court. Patent No.
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`9,770,659 (the “’659 patent”) is a continuation of U.S. Serial No. 15/253,964,
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`which is a continuation of 14/291,358, which claims the benefit of Japanese Patent
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`Application No. 2013-116039 filed on May 31, 2013, which published as JP
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`6,125,128. JP 6,125,128 is asserted by GREE against Supercell Oy and Supercell
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`K.K. in the following patent infringement lawsuit: GREE, Inc. v. Supercell K.K.,
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`Case 2017 (Yo) No. 22165 Petition for Provisional Disposition before Civil
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`2
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`PGR2018-00047
`Petitioner’s Motion for Pro Hac Vice Admission of Michael J. Sacksteder
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`Department 29 of the Tokyo District Court. The ’659 patent is a continuation of
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`U.S. Patent 9,636,583, which is the subject of a Post Grant Review petition filed by
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`Petitioner on February 1, 2018, assigned Post Grant Review No. PGR2018-00029.
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`Ex. 1009 ¶ 11.
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`6. Mr. Sacksteder is a member in good standing of the California State
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`Bar. Ex. 1009 ¶ 5.
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`7. Mr. Sacksteder has never been suspended or disbarred from practice
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`before any court or administrative body. Ex. 1009 ¶ 5.
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`8.
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`No application filed by Mr. Sacksteder for admission to practice
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`before any court or administrative body has ever been denied. Ex. 1009 ¶ 6.
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`9.
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`No sanctions or contempt citations have been imposed against
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`Mr. Sacksteder by any court or administrative body. Ex. 1009 ¶ 7.
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`10. Mr. Sacksteder has read and agrees to comply with the Office Patent
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`Trial Practice Guide and the Board’s Rules of Practice for Trials set forth in part 42
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`of 37 C.F.R. Ex. 1009 ¶ 8.
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`11. Mr. Sacksteder understands that he will be subject to the USPTO
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`Rules of Professional Conduct 37 C.F.R. §§ 11.101 et seq. and disciplinary
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`jurisdiction under 37 C.F.R. § 11.19(a). Ex. 1009 ¶ 9.
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`12. Mr. Sacksteder has applied and been admitted to appear pro hac vice
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`3
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`PGR2018-00047
`Petitioner’s Motion for Pro Hac Vice Admission of Michael J. Sacksteder
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`in nine inter partes review proceedings and one post grant review proceeding
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`before the Office within the last three (3) years. Petitioner is also concurrently
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`moving for Mr. Sacksteder to appear pro hac vice in PGR2018-00029. Ex. 1009
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`¶ 10.
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`IV. GOOD CAUSE EXISTS FOR THE ADMISSION PRO HAC VICE OF
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`MR. SACKSTEDER IN THIS PROCEEDING
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`The facts outlined above in the Statement of Facts, and contained in the
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`Declaration of Michael J. Sacksteder (Ex. 1009), establish that there is good cause
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`to admit Mr. Sacksteder pro hac vice in this proceeding under 37 C.F.R. § 42.10.
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`Mr. Sacksteder is an experienced litigating attorney, and Mr. Sacksteder has an
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`established familiarity with the subject matter at issue.
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`V.
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`CONCLUSION
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`For the foregoing reasons as well as the reasons in the attached declaration,
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`Petitioner Supercell Oy respectfully requests the pro hac vice admission of
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`Michael J. Sacksteder in this proceeding.
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`
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`Dated: May 17, 2018
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`Respectfully submitted,
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`/Jennifer R. Bush/
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`JENNIFER R. BUSH
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`PGR2018-00047
`Petitioner’s Motion for Pro Hac Vice Admission of Michael J. Sacksteder
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`Reg. No. 50,784
`Attorney for Petitioner
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`5
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`PGR2018-00047
`Petitioner’s Motion for Pro Hac Vice Admission of Michael J. Sacksteder
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`CERTIFICATION OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on May 17, 2018,
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`a copy of the foregoing document, PETITIONER’S MOTION FOR PRO HAC
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`VICE ADMISSION OF MICHAEL J. SACKSTEDER PURSUANT TO
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`37 C.F.R. § 42.10(c), and supporting EXHIBIT 1009 were served on Patent
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`Owner’s lead and backup counsel in their entirety by electronic service by email at
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`the email addresses provided below:
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`John C. Alemanni (Reg. No.47,384)
`Kilpatrick Townsend & Stockton LLP
`4208 Six Forks Road, Suite 1400
`Raleigh, NC 27609
`Telephone: (919) 420-1724
`Fax: (919) 420-1800
`Email:
`jalemanni@kilpatricktownsend.com
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`Andrew W. Rinehart (Reg. No. 75,537)
`Kilpatrick Townsend & Stockton LLP
`1001 West Fourth Street
`Winston-Salem, NC 27101
`Telephone: (336) 607-7312
`Fax: (336) 607-7500
`Email:
`arinehart@kilpatricktownsend.com
`
`Scott E. Kolassa (Reg. No. 55,337)
`Kilpatrick Townsend & Stockton LLP
`1080 Marsh Road
`Menlo Park, CA 94025
`Telephone: (650) 324-6349
`Fax: (650) 326-2422
`Email:
`skolassa@kilpatricktownsend.com
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`Dated: May 17, 2018
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`Fenwick & West LLP
`801 California Street
`Mountain View, CA 94041
`Tel: (650) 988-8500
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`PGR2018-00047
`Petitioner’s Motion for Pro Hac Vice Admission of Michael J. Sacksteder
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`
`FENWICK & WEST LLP
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`/Jennifer R. Bush/
`JENNIFER R. BUSH
`Reg. No. 50,784
`Attorney for Petitioner
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