`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________________________
`
`
`GoFire, Inc.
`Petitioner
`
`v.
`
`Canopy Growth Corporation,
`Patent Owner.
`
`______________________________
`Case: PGR2020-00044
`
`U.S. Patent No. 10,327,479 B2
`______________________________
`
`MOTION FOR PRO HAC VICE ADMISSION OF JAMES G. SAWTELLE
`IN ACCORDANCE WITH 37 C.F.R.§ 42.10
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`Submitted electronically via the Patent Trial and Appeal Board End to End System
`
`
`51414372.3
`
`
`
`
`
`
`
`EXHIBIT LIST
`
`
`
`
`Ex. 1001 U.S. Patent No. 10,327,479 (“the ‘479 Patent”)
`Ex. 1002
`Prosecution History of the ‘479 Patent
`Ex. 1003 U.S. Patent Pub. 2018/0177231 (“Woodbine”)
`Ex. 1004 U.S. Patent Pub. 2018/0177231 (“Hawes”)
`Ex. 1005 U.S. Patent Pub. 2015/0122252 (“Frija”)
`Ex. 1006 U.S. Patent Pub. 2013/0220315 (“Conley”)
`Ex. 1007 U.S. Patent Pub. 2018/0043114 (“Bowen”)
`Ex. 1008 U.S. Patent Pub. 2015/0320116 (“Bleloch”)
`Ex. 1009 U.S. Patent Pub. 2014/0096782 (“Ampolini”)
`Ex. 1010 U.S. Patent Pub. 2014/0107815 (“LaMothe”)
`Ex. 1011 U.S. Patent Pub. 2016/0114407 (“Duncan”)
`Ex. 1012 U.S. Patent Pub. 2016/0106936 (“Kimmel”)
`Ex. 1013 Claim Chart for Invalidity of the ‘479 Patent
`Ex. 1014 Declaration of Joe Keenan
`Ex. 1015 Declaration of Dr. Vladislav Babinsky
`Ex. 1016 Declaration of James G. Sawtelle Regarding Motion for Admission
`to Practice Pro Hac Vice
`
`
`
`51414372.3
`
`
`
`
`
`
`
`GoFire, Inc. (“GoFire”) respectfully moves, under 37 C.F.R. § 42.10, for the pro
`
`hac vice admission of James G. Sawtelle to serve as back-up counsel for GoFire in its
`
`petition for post-grant review, filed herewith (the “Petition”), of U.S. Patent No.
`
`10,327,479 B2 (the “‘479 Patent”), which is assigned to Canopy Growth
`
`Corporation (“Canopy”).
`
`GoFire has satisfied all requirements, set forth in Unified Patents, Inc. v.
`
`Parallel Iron, LLC, U.S. Patent and Trademark Office Patent Trial and Appeal
`
`Board Case IPR2013-00639, Patent 7,197,662, Paper 7 at 2-3 (Oct. 15, 2013) (the
`
`“admission standards”), for Mr. Sawtelle’s pro hac vice admission to serve as
`
`back-up counsel for GoFire regarding the Petition.
`
`Mr. Sawtelle’s declaration, attached hereto as Exhibit 1016, demonstrates
`
`GoFire’s compliance with all of the standards for his pro hac vice admission.
`
`First, under ¶ 2(a) of the admission standards, GoFire has shown good cause for
`
`Mr. Sawtelle’s pro hac vice admission in this proceeding. (See Exh. 1019, ¶¶ 4-6.)
`
`37 C.F.R. § 42.10(a) requires any party filing a petition for inter partes review to
`
`“designate a lead counsel and at least one back-up counsel who can conduct
`
`business on behalf of the lead counsel.” Daniel W. Roberts, who is admitted to
`
`practice before the USPTO, is GoFire’s lead counsel with respect to the Petition,
`
`and he and GoFire have requested that Mr. Sawtelle serve as back-up counsel in
`
`this matter.
`
`51414372.3
`
`
`
`
`
`Mr. Sawtelle would be best suited to represent GoFire effectively and
`
`economically as back-up counsel, as he is serving as GoFire’s general outside
`
`litigation counsel and represents GoFire in connection With providing advice and
`
`counsel relating to the protection of its intellectual property assets.
`
`Hiring counsel other than Mr. Sawtelle to represent GoFire as back-up
`
`counsel regarding the Petition would impose excessive, duplicative, and
`
`unnecessary cost and labor burdens on GoF ire. Other than Mr. Roberts, no other
`
`lawyer is as familiar with the matters at issue in the Petition. (See EXh. 1016, 11 6.)
`
`Mr. Sawtelle’s Declaration (see 1d, 1111 7-14) also satisfies the remaining
`
`requirements of 11 2(b) of the admission standards.
`
`Accordingly, for the grounds specified above, GoFire requests that Mr.
`
`Sawtelle be admitted pro hac vice to represent GoFire as its back-up counsel with
`
`respecttothe IPRPetition. g/
`/,
`
`W V’Q
`
`DATED: March 23, 2020
`
`By:
`
`Daniel W. Roberts, Reg. No. 52,172
`Law Office of Daniel W. Roberts, LLC
`904 Topaz Street
`Superior, Colorado 80027
`Telephone: (720) 304—3026
`Facsimile: (720) 304—3026
`
`Attorney for GoFire, Inc.
`
`514143723
`
`
`
`CERTIFICATE OF
`
`SERVICE
`
`The undersigned, counsel with the law firm of Law Office of Daniel W.
`Roberts, LLC, hereby certifies that the following statements are true and correct
`under penalty of perjury, pursuant to 28 U.S.C. § 1746:
`
`On March 23, 2020, the within MOTION FOR PRO HAC VICE
`ADMISSION OF JAMES G. SAWTELLE IN ACCORDANCE WITH 37 C.F.R.§
`42.10 was served via Federal Express overnight mail upon the following party
`and/or attorney at the last known address indicated below:
`
`Stinson Leonard Street LLP
`
`Attention: Patent Group
`1201 Walnut Street, Suite 2900
`Kansas City, MO 64106-2150
`
`Attorneys for Patent Owner CANOPY GRO WTH CORPORA TION
`
`by depositing with Federal Express a true and correct copy of said papers,
`enclosed in a properly addressed, fully prepaid Federal Express envelope for
`overnight express delivery to the recipient addressed above.
`
`Dated. March 23, 2020
`
`@6122
`
`,7
`
`Daniel W. Roberts, Reg. No. 52,172
`Law Office of Daniel W. Roberts, LLC
`904 Topaz Street
`Superior, Colorado 80027
`Telephone: (720) 304-3026
`Facsimile: (720) 304-3026
`
`514143723
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
