UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. Finjan, Inc., Petitioner v. FireEye, Inc.

Transcription

1 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Finjan, Inc., Petitioner v. FireEye, Inc., Patent Owner Inter Partes Review No. IPR Filing Date: January 14, 2014 Patent No. 8,291,499 PETITIONER S MOTION FOR PRO HAC VICE ADMISSION OF PAUL J. ANDRE UNDER 37 C.F.R (c)

2 I. Statement of Precise Relief Requested Pursuant to 37 C.F.R (c) and Paper No. 7 authorizing the parties to file motion for pro hac vice admission under 37 C.F.R (c), Petitioner Finjan, Inc. ( Finjan ), requests that the Patent Trial and Appeal Board (the Board ) admit Paul J. Andre pro hac vice in this proceeding, IPR In support of this motion, a declaration of Paul J. Andre is submitted as Exhibit 1 explaining that he satisfies all the criteria for pro hac vice admission as set forth in Case IPR , Paper 7 (Oct. 15, 2013). This motion is being filed no sooner than twenty one (21) days after service of the petition. II. Statement of Facts Based on the following facts, and supported by the Declaration of Paul J. Andre Declaration in Support of Pro Hac Vice Admission ( Andre Declaration ) submitted herewith as Exhibit 1, Finjan requests pro hac vice admission of Mr. Andre in this proceeding: 1. Lead counsel, James Hannah, is a registered practitioner (Reg. No 56,369). 2. Mr. Andre is a partner at the law firm Kramer Levin Naftalis & Frankel LLP. Andre Declaration, 1. 1

3 3. Mr. Andre is an experienced litigating attorney. Mr. Andre has been a litigating attorney for more than fifteen (15) years. Mr. Andre has been litigating patent cases during that entire time period. Id., Mr. Andre is a member in good standing of the State Bar of California, State Bar of New York, State Bar of Connecticut, and the Bar of District of Columbia. Id., Mr. Andre has never been suspended or disbarred from practice before any court or administrative body. Id., Mr. Andre s. was denied pro hac vice admission to the Patent Trial and Appeal Board for the Inter Partes Reexamination Appeal, Everbridge, Inc., Federal Signal Corp., Twitter, Inc. v. Copper Notification, Inc., Control No. 95/001,425, Appeal No other application by Mr. Andre for admission to practice before any court or administrative body has been denied. In fact, Mr. Andre been admitted pro hac vice to federal courts in over 25 states. Id., No sanctions or contempt citations have ever been imposed against Mr. Andre by any court or administrative body. Id., Mr. Andre has read and will comply with the Office Patent Trial Practice Guide and the Board s Rules of Practice for Trials set forth in part 42 of the 37 C.F.R. Id., 7. 2

4 9. Mr. Andre understands that he will be subject to the USPTO Code of Professional Responsibility set forth in 37 C.F.R et seq. and disciplinary jurisdiction under 37 C.F.R (a). Id., In the past three (3) years, Mr. Andre has applied once to appear pro hac vice before the United State Patent and Trademark Office in Everbridge, Inc., Federal Signal Corp., Twitter, Inc. v. Cooper Notification, Inc., Inter Partes Control No. 95/001,425, Appeal No Id., Mr. Andre has an established familiarity with the subject matter at issue in this proceeding. Id., 10. Mr. Andre has been litigating network and computer security patents for nine years. Id., Mr. Andre is Finjan s lead trial counsel in the related district court litigation against Patent Owner FireEye, Inc., Finjan, Inc. v. FireEye, Inc., Case No. 4:13-cv SBA (CAND), which involves the same computer and network security technology field. Id., Mr. Andre has previously represented Finjan in two network and computer security patent jury trials. Id., Counsel, Paul Andre, has reviewed U.S. Patent No. 8,291,499, and the petition already filed in this proceeding. 3

5 III. Good Cause Exists for Pro Hac Vice Admission In accordance with 37 C.F.R (c), the Board may recognize counsel pro hac vice during a proceeding upon showing of good cause, subject to the condition that lead counsel be a registered practitioner and to any other condition the Board may impose. Furthermore, Section 42.10(c) indicates that 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. First, Finjan s lead counsel, James Hannah, is a registered practitioner. Second, Mr. Andre been a litigating attorney for over fifteen years. For nine of those years, Mr. Andre has been litigating patents in the field of computer and networking security. This establishes that Mr. Andre is an experienced litigator. Third, Mr. Andre has developed a technical understanding and familiarity with computer and networking security patents. Mr. Andre has represented multiple clients through all stages of patent litigation on point with the subject matter in this proceeding. Furthermore, Mr. Andre has been Finjan s lead counsel through two jury trials and is currently the lead counsel in the related District Court Litigation between Finjan and FireEye. This establishes that Mr. Andre is an experience litigator and familiar with the subject matter of this proceeding. 4

6 IV. Conclusion The facts here supported by the attached Andre Declaration and the reasons stated above establish good cause for the Board to admit Paul J. Andre pro hac vice in this proceeding. Respectfully submitted, Dated: February 12, 2014 /s/ James Hannah James Hannah (Reg. No. 56,369) Kramer Levin Naftalis & Frankel LLP 990 Marsh Road Menlo Park, California Telephone: (650) Facsimile: (650) Michael Lee (Reg. No. 63,941) Kramer Levin Naftalis & Frankel LLP 990 Marsh Road Menlo Park, California Telephone: (650) Facsimile: (650) Attorneys for Petitioner Finjan, Inc. 5

7 Exhibit 1

8 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Finjan, Inc., Petitioner v. FireEye, Inc., Patent Owner Inter Partes Review No. IPR Filing Date: January 14, 2014 Patent No. 8,291,499 DECLARTION OF PAUL J. ANDRE IN SUPPORT OF PETITIONER S MOTION FOR PRO HAC VICE ADMISSION UNDER 37 C.F.R (c)

9 I, PAUL J. ANDRE, hereby declare as follows: 1. I am a partner at the law firm Kramer Levin Naftalis & Frankel LLP. I have personal knowledge of the facts set forth in this declaration and can testify competently to those facts. 2. I am an experienced litigating attorney with more than fifteen (15) years of patent litigation experience. I have been litigating patent cases during that entire time period. 3. I am a member in good standing of the State Bar of California, State Bar of New York, State Bar of Connecticut, and the Bar of District of Columbia. 4. I have never been suspended or disbarred from practice before any court or administrative body. 5. I was denied pro hac vice admission to the Patent Trial and Appeal Board for the Inter Partes Reexamination Appeal, Everbridge, Inc., Federal Signal Corp., Twitter Inc. v. Copper Notification, Inc., Control No. 95/001,425, Appeal No other application under my name for admission to practice before any court or administrative body has been denied. In fact, I have been admitted pro hac vice to federal courts in over 25 states. 6. No sanctions or contempt citations have ever been imposed against me by any court or administrative body. 1

10 7. I have read and will comply with the Office Patent Trial Practice Guide and the Board s Rules of Practice for Trials set forth in part 42 of 37 C.F.R. 8. I understand that I will be subject to the USPTO Code of Professional Responsibility set forth in 37 C.F.R et seq. and disciplinary jurisdiction under 37 C.F.R (a). 9. In the past three years I applied once to appear pro hac vice before the Office in the appeal of Everbridge, Inc., Federal Signal Corp., Twitter, Inc. v. Copper Notification, Inc., Control No. 95/001,425, Appeal I have an established familiarity with the subject matter at issue in this proceeding. I represent Finjan, Inc. ( Finjan ) as lead trial counsel in the related district court litigation against patent owner FireEye, Inc., Finjan, Inc. v. FireEye, Inc., C.A. 4:13-cv SBA (CAND). 11. In addition to currently representing Finjan against patent owner FireEye, I have actively been litigating patents for nine years in the same field of technology as U.S. Patent No. 8,291,499. These include representing M86 Security, Inc. in Symantec Corp. v. M86 Security, Inc., Case No. 8:10-cv JST-RNB (CDCA); representing Finjan in Finjan Software Ltd. v. Aladdin Knowledge Sys. Inc. et al., Case No. 1:08-cv GMS (DED); representing AVG Technologies, Inc. in Lodsys Group, LLC v. AVG Techs. USA, Inc. et al., Case No. 2:12-cv-290-JRG (TXED). 2

11 12. I have been the lead counsel in two computer and network security patent trials where I represented Finj an in Finjan Software, Ltd. v. Secure Computing C0rp., er al., Case No: 1:06-cv GMS (DED); and represented Finjan in Finjan, Inc. v. McAfee, Inc., et al., Case No. 1:10-cV GMS (DED). I declare under penalty of perjury under the laws of the State of California and the United States that the foregoing is true and correct. Executed on February 12, 2014, at Menlo Park, California. Q,/Q Paul J. Andre 990 Marsh Road Menlo Park, California Telephone: (650) Facsimile: (650) pandre@kramerlevin.com

12 CERTIFICATE OF SERVICE Pursuant to 37 CFR 42.6(e), the undersigned certifies that on February 12, 2014, a true and correct copy of the foregoing Petitioner s Motion for Pro Hac Vice Admission Of Paul J. Andre Under 37 C.F.R (c) was provided via overnight delivery, costs prepaid, to the lead counsel of record for Patent Owner addressed as follows: David L. McCombs HAYNES & BOONE, LLP 2323 Victory Ave., Suite 700 Dallas, TX /s/ James R. Hannah James R. Hannah Kramer Levin Naftalis & Frankel LLP 990 Marsh Road Menlo Park, CA (650)