`U.S. Patent No. 8,217,902
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`________________
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`WINTEK CORPORATION
`Petitioner,
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`v.
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`TPK TOUCH SOLUTIONS INC.
`Patent Owner
`________________
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`Case IPR 2013-00568
`U.S. Patent No. 8,217,902
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`TPK TOUCH SOLUTIONS INC.’S UNOPPOSED MOTION FOR
`PRO HAC VICE ADMISSION OF DEREK TANG
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`
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`Case IPR 2013-00568
`U.S. Patent No. 8,217,902
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`I.
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`RELIEF REQUESTED
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`Pursuant to 37 C.F.R. § 42.10(c), Patent Owner TPK Touch Solutions
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`Inc. (“TPK”) respectfully requests the expedited pro hac vice admission of Derek
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`Tang in this proceeding. TPK has conferred with Petitioner Wintek Corporation
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`(“Wintek”) and Wintek does not have any objections to TPK’s request. In view of
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`upcoming depositions, currently scheduled for August 27, 2014 and early
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`September 2014, TPK respectfully requests an expedited decision on this motion.
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`II. GOVERNING LAW, 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
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`proceeding upon a showing of good cause, subject
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`to the
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`condition that lead counsel be a registered practitioner and to
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`any other conditions as the Board may impose. For example,
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`where the lead counsel is a registered practitioner, a motion to
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`appear pro hac vice by counsel who is not a registered
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`practitioner may be granted upon showing that counsel is an
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`experienced litigating attorney and has an established familiarity
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`with the subject matter at issue in the proceeding.
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`
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`Case IPR 2013-00568
`U.S. Patent No. 8,217,902
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`The Board has stated that motions for pro hac vice admission under 37
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`C.F.R. § 42.10(c) must be filed in accordance with the “Order - Authorizing
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`Motion for Pro Hac Vice Admission” entered in Case IPR2013-00010 (MPT)
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`(“Motorola Order”). In accordance with the Motorola Order, this motion is being
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`filed no sooner than twenty-one (21) days after service of the petition.
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`The Motorola Order requires that such motions (1) “[c]ontain a statement of
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`facts showing there is good cause for the Board to recognize counsel pro hac vice
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`during the proceeding; and (2) [b]e accompanied by an affidavit or declaration of
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`the individual seeking to appear attesting to the following”:
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`i.
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`Membership in good standing of the Bar of at least one
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`State or the District of Columbia;
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`ii.
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`No suspensions or disbarments from practice before
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`any court or administrative body;
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`iii.
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`No application for admission to practice before any
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`court or administrative body ever denied;
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`iv.
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`No sanctions or contempt citations imposed by any
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`court or administrative body;
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`v.
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`The individual seeking to appear has read and will
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`comply with the Office Patent Trial Practice Guide and the
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`Case IPR 2013-00568
`U.S. Patent No. 8,217,902
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`Board’s Rules of Practice for Trials set forth in part 42 of the
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`C.F.R.;
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`vi.
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`The individual will be subject to the USPTO Code of
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`Professional Responsibility set forth in 37 C.F.R. §§ 10.20 et
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`seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a);
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`vii. All other proceedings before the Office for which the
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`individual has applied to appear pro hac vice in the last three
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`(3) years; and
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`viii. Familiarity with the subject matter at issue in the proceeding.
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`III.
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`STATEMENT OF FACTS
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`Based on the following facts, and supported by the Affidavit of Derek Tang
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`(TPK 2026) submitted herewith, TPK requests the expedited pro hac vice
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`admission of Derek Tang in this proceeding:
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`1.
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`TPK’s
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`lead counsel,
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`Joseph J. Richetti,
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`is a registered
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`practitioner (Reg. No. 47,024).
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`2.
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`Mr. Tang is an associate at
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`the law firm Quinn Emanuel
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`Urquhart & Sullivan, LLP. (TPK 2026, ¶ 3).
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`Case IPR 2013-00568
`U.S. Patent No. 8,217,902
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`3.
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`Mr. Tang is an experienced litigating attorney and has been
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`a litigating attorney for more than 7 years. (Id.). Mr. Tang has been
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`litigating patent cases for over 4 years. (Id.).
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`4.
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`Mr. Tang has an established familiarity with the subject matter
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`at issue in this proceeding.
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`(Id., ¶ 8). Mr. Tang has litigated patent
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`cases in the area of electrical engineering and electronic devices since
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`2010.
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`(Id.). He began representing and advising TPK, the owner of
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`U.S. Patent No. 8,217,902, in matters relating to patent strategy no
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`later than 2013. (Id.). Since that time he has been very familiar with
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`U.S. Patent No. 8,217,902 and with its prosecution file history. (Id.).
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`In particular, Mr. Tang has assisted TPK in preparing its responses to
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`the petitions in these proceedings, as well as in a co-pending ex parte
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`reexamination of the ‘902 Patent, Control No. 90/012,869. (Id.).
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`5.
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`Mr. Tang is a member in good standing of the State Bars of
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`California and New York. (Id., ¶ 4).
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`6.
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`Mr. Tang has never been suspended or disbarred from practice
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`before any court or administrative body. (Id.).
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`7.
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`No application of Mr. Tang’s for admission to practice before
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`any court or administrative body has ever been denied. (Id.).
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`Case IPR 2013-00568
`U.S. Patent No. 8,217,902
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`8.
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`No sanctions or contempt citations have ever been imposed
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`against Mr. Tang by any court or administrative body. (Id.).
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`9.
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`Mr. Tang has read and will comply with the Office Patent Trial
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`Practice Guide and the Board’s Rules of Practice for Trials set forth in
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`part 42 of the Code of Federal Regulators. (Id., ¶ 5).
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`10. Mr. Tang understands that he will be subject to the USPTO
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`Code of Professional Responsibility set forth in 37 C.F.R. §§ 10.20 et
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`seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
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`(Id., ¶
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`6).
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`11.
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`TPK is concurrently seeking pro hac vice admission of Mr.
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`Tang to appear in a co-pending, related proceeding brought by
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`Petitioner against Patent Owner, Case No. IPR2013-00567/IPR2014-
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`00541 (joint proceeding),
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`in which Petitioner is also challenging
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`claims of U.S. Patent No. 8,217,902. Mr. Tang has not applied to
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`appear pro hac vice in any other proceedings before the Office in the
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`last three (3) years. (Id., ¶ 7).
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`IV. GOOD CAUSE EXISTS FOR THE EXPEDITED PRO HAC VICE
`ADMISSION OF MR. TANG IN THIS PROCEEDING
`The Board may recognize counsel pro hac vice during a proceeding upon
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`a showing of good cause, subject
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`to the condition that
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`lead counsel be a
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`Case IPR 2013-00568
`U.S. Patent No. 8,217,902
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`registered practitioner and to any other conditions as the Board may impose. 37
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`C.F.R. § 42.10(c). TPK’s lead counsel, Joseph J. Richetti, is a registered
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`practitioner. Based on the facts contained herein, as supported by Mr. Tang’s
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`Affidavit, good cause exists to expeditiously admit Mr. Tang pro hac vice in
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`this proceeding.
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`As supported by his Affidavit, Mr. Tang is an experienced litigating attorney
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`with over four years of patent litigation experience. Mr. Tang also has an
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`established familiarity with the subject matter at issue in this proceeding, as he has
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`been representing and advising TPK in matters related to patent strategy since
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`2013, including in connection with TPK’s responses for this proceeding, as well as
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`for two other co-pending proceedings involving the same patent U.S. Patent No.
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`8,217,902 that is at issue in this proceeding.
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`In view of Mr. Tang’s extensive knowledge of the precise subject matter at
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`issue in this proceeding, and in view of his involvement in advising TPK in
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`connection with this and other related proceedings, TPK has a substantial need for
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`Mr. Tang’s pro hac vice admission and involvement in this proceeding. And, in
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`view of upcoming depositions, currently scheduled for August 27, 2014 and early
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`September 2014, TPK respectfully requests an expedited decision on this motion.
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`In addition, the expedited admission of Mr. Tang pro hac vice will enable TPK to
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`Case IPR 2013-00568
`U.S. Patent No. 8,217,902
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`avoid unnecessary expense and duplication of work.
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`In addition, given that Mr.
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`Tang’s practice is based in California, closer to where the upcoming depositions
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`are expected to take place and where the declarants being deposed are located, his
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`admission will also enable TPK to avoid significant, additional travel costs and
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`expenses. See 77 Fed. Reg. 157 (Aug. 14, 2012), at 48661 (Office’s comment on
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`final rule discussing concerns about efficiency and costs and indicating that the
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`economic impact on the party should be considered in determining whether to
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`allow counsel to appear pro hac vice).
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`Given Mr. Tang’s extensive experience with the involved patent and parties,
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`and TPK’s desire to be represented by the counsel of its choice, the need for
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`admission of Mr. Tang substantially outweighs any potential prejudice to Wintek.
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`Moreover, TPK has conferred with Wintek concerning its request, and Wintek has
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`indicated that it does not have any objections to the pro hac vice admission of Mr.
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`Tang in this proceeding.
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`V.
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`CONCLUSION
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`For the foregoing reasons, TPK respectfully requests that Mr. Tang be
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`expeditiously admitted pro hac vice in this proceeding.
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`The Patent Trial and Appeal Board is hereby authorized to charge any fees
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`associated with this filing to Deposit Account 02-4467.
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`Case IPR 2013-00568
`U.S. Patent No. 8,217,902
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`Date: August 21, 2014
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`Respectfully submitted,
`
`By: /Joseph J. Richetti, Reg. No. 47024/
`Joseph J. Richetti, Reg. No. 47,024
`BRYAN CAVE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`General Tel: (212) 541-2000
`Direct Tel: (212) 541-1092
`Fax: (212) 541-4630
`Email: joe.richetti@bryancave.com
`
`David Bilsker, Reg. No. 39,611
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`50 California Street, 22nd Floor
`San Francisco, CA 94111
`General Tel: (415) 875-6600
`Direct Tel: (415) 875-6432
`Fax: (415) 875-6700
`Email: davidbilsker@quinnemanuel.com
`
`Attorneys for Patent Owner – TPK Touch
`Solutions Inc.
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`8
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`Case IPR 2013-00568
`U.S. Patent No. 8,217,902
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies
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`that
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`the foregoing TPK TOUCH
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`SOLUTIONS INC.’S UNOPPOSED MOTION FOR PRO HAC VICE
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`ADMISSION OF DEREK TANG was served electronically via e-mail on August
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`21, 2014, in its entirety on the following:
`
`Joseph E. Palys
`PAUL HASTINGS LLP
`875 15th Street, N.W.
`Washington, DC 20005
`josephpalys@paulhastings.com
`
`Naveen Modi
`PAUL HASTINGS LLP
`875 15th Street, N.W.
`Washington, DC 20005
`naveen.modi@paulhastings.com
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`Respectfully submitted,
`
`By: /Joseph J. Richetti, Reg. No. 47024/
`Joseph J. Richetti
`Lead Attorney for Patent Owner
`Reg. No. 47,024
`BRYAN CAVE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`General Tel: (212) 541-2000
`Direct Tel: (212) 541-1092
`Fax: (212) 541-4630
`Email: joe.richetti@bryancave.com
`
`Attorneys for Patent Owner – TPK Touch
`Solutions Inc.
`
`Date: August 21, 2014
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`