`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`FUJITSU SEMICONDUCTOR LIMITED,
`FUJITSU SEMICONDUCTOR AMERICA, INC.,
`ADVANCED MICRO DEVICES, INC., RENESAS ELECTRONICS
`CORPORATION, RENESAS ELECTRONICS AMERICA, INC.,
`GLOBALFOUNDRIES U.S., INC., GLOBALFOUNDRIES DRESDEN
`MODULE ONE LLC & CO. KG, GLOBALFOUNDRIES DRESDEN
`MODULE TWO LLC & CO. KG, TOSHIBA AMERICA ELECTRONIC
`COMPONENTS, INC., TOSHIBA AMERICA INC., TOSHIBA
`AMERICA INFORMATION SYSTEMS, INC.,
`TOSHIBA CORPORATION, and
`THE GILLETTE COMPANY,
`Petitioner
`
`v.
`
`ZOND, INC.
`Patent Owner
`____________________________________________
`
`Case IPR2014-007811
`U.S. PATENT NO. 7,147,759
`Title: HIGH-POWER PULSED MAGNETRON SPUTTERING
`____________________________________________
`
`
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`PETITIONER’S MOTION FOR PRO HAC VICE
`ADMISSION PURSUANT TO 37 C.F.R. § 42.10(C)
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`1 Cases IPR2014-01047, IPR2014-00985, and IPR2014-00845 have been joined with the instant
`proceeding.
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`Petitioner’s Motion for Pro Hac Vice Admission
`IPR2014-00781 (U.S. 7,147,759)
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`I.
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`Relief Requested
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`This Motion for Pro Hac Vice admission is filed solely on behalf of
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`Petitioner GLOBALFOUNDRIES U.S., Inc., GLOBALFOUNDRIES Dresden
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`Module One LLC & Co. KG, and GLOBALFOUNDRIES Dresden Module Two
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`LLC & Co. KG (collectively, “GlobalFoundries” or “Petitioner”).
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`GlobalFoundries respectfully requests that the Board recognize Mr. Brett C.
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`Rismiller as counsel pro hac vice during this proceeding.
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`II. 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. IPR2013-00639, Paper No. 7.
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`III. Statement of Facts Showing Good Cause for the Board to Recognize
`Counsel Pro Hac Vice During the Proceedings
`Petitioner has been authorized to file motions seeking admission pro hac
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`vice under 37 C.F.R. 42.10(c). (Paper No. 4). Petitioner’s lead and back-up
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`counsel are registered practitioners.
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`In accordance with 37 C.F.R. § 42.10(c), the Board may recognize counsel
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`pro hac vice during a proceeding upon a showing of good cause, subject to the
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`condition that lead counsel be a registered practitioner and to any other conditions
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`that the Board may impose. The facts here establish good cause for the Board to
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`recognize Brett C. Rismiller pro hac vice on behalf of Petitioner during this
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`1
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`proceeding.
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`Petitioner’s Motion for Pro Hac Vice Admission
`IPR2014-00781 (U.S. 7,147,759)
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`In summary, Mr. Rismiller is an experienced litigator, has established
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`familiarity with the subject matter at issue in this proceeding from his participation
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`in co-pending litigation involving the subject patent, and, if admitted, will be
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`involved in the depositions that occur in this proceeding. Specifically, U.S. Patent
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`No. 7,147,759 is currently asserted against Petitioner in co-pending litigation, in
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`the District of Massachusetts, 1:13-cv-11577-LTS (Zond v. AMD, et al.) (“the co-
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`pending litigation”). Mr. Rismiller is a member of the California bar in good
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`standing and works closely with the team representing the Petitioner in the co-
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`pending litigation.
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`Mr. Rismiller has analyzed prior art references and claim charts in
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`connection with invalidity contentions and has been involved in forming claim
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`construction positions related to the claimed inventions, all of which are relevant to
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`the petition requesting inter partes review of U.S. Patent No. 7,147,759. Petitioner
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`wishes to apply Mr. Rismiller’s knowledge of the patent by employing him as
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`counsel in this proceeding. Admission of Mr. Rismiller pro hac vice will enable
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`Petitioner to avoid unnecessary expense and duplication of work between this
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`proceeding and the co-pending litigation.
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`Petitioner’s lead and backup counsel are registered practitioners and Mr.
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`Rismiller is an experienced litigation attorney having familiarity with the subject
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`2
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`matter at issue in this proceeding. Therefore, Petitioners respectfully submit that
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`Petitioner’s Motion for Pro Hac Vice Admission
`IPR2014-00781 (U.S. 7,147,759)
`
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`there is good cause for the Board to recognize Mr. Rismiller as counsel pro hac
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`vice during this proceeding.
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`IV. Affidavit of Individual Seeking to Appear
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`This Motion for Pro Hac Vice Admission is supported by an Affidavit of
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`Mr. Rismiller (Ex. 1239).
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`Respectfully submitted,
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`
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`/s/ David M. Tennant
`David M. Tennant
`Lead Counsel for Petitioner
`GlobalFoundries
`Registration No. 48,362
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`3
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`Date: April 7, 2015
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`Petitioner’s Motion for Pro Hac Vice Admission
`IPR2014-00781 (U.S. 7,147,759)
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`Petitioner’s Updated Exhibit List
`December 15, 2014
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`Exhibit
`1201
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`U.S. Patent No. 7,147,759
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`a)
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`Description
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`1202
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`Kortshagen Declaration
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`1203
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`1204
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`1205
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`1206
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`1207
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`1208
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`1209
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`1210
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`1211
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`D.V. Mozgrin, et al, High-Current Low-Pressure Quasi-
`Stationary Discharge in a Magnetic Field: Experimental
`Research, Plasma Physics Reports, Vol. 21, No. 5, pp. 400-
`409, 1995 (“Mozgrin”)
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`A. A. Kudryavtsev and V.N. Skerbov, Ionization relaxation in
`a plasma produced by a pulsed inert-gas discharge, Sov. Phys.
`Tech. Phys. 28(1), pp. 30-35, January 1983 (“Kudryavtsev”)
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`U.S. Pat. No. 6,413,382 (“Wang”)
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`Plasma Etching: An Introduction, by Manos and Flamm, pp.
`185-258, Academic Press (1989) (“Manos”)
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`File History for U.S. Pat. No. 7,147,759, Response of June 14,
`2004 (“06/14/04 Response”)
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`File History for U.S. Pat. No. 7,147,759, Office Action of
`August 30, 2004 (“08/30/04 Office Action”)
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`File History for U.S. Pat. No. 7,147,759, Response of
`February 24, 2005 (“02/24/05 Response”)
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`File History for U.S. Pat. No. 7,147,759, Office Action of
`May 27, 2005, (“05/27/05 Office Action”)
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`File History for U.S. Pat. No. 7,147,759, Request for
`Continued Examination of October 27, 2005 (“10/27/05
`RCE”)
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`4
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`Petitioner’s Motion for Pro Hac Vice Admission
`IPR2014-00781 (U.S. 7,147,759)
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`File History for U.S. Pat. No. 7,147,759, Office Action of
`January 11, 2006 (“01/11/06 Office Action”)
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`File History for U.S. Pat. No. 7,147,759,Response of May 2,
`2006 (“05/02/06 Response”)
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`File History for U.S. Pat. No. 7,147,759, Response of August
`28, 2006 (“08/28/2006 Response”)
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`File History for U.S. Pat. No. 7,147,759, Notice of Allowance
`Mailed October 11, 2006 (“10/11/2006 Allowance”)
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`Gas Discharge Physics, by Raizer, Table of Contents, pp. 1-
`35, Springer 1997 (“Raizer”)
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`Certified Translation of D.V. Mozgrin, High-Current Low-
`Pressure Quasi-Stationary Discharge in a Magnetic Field:
`Experimental Research, Thesis at Moscow Engineering
`Physics Institute, 1994 (“Mozgrin Thesis”)
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`Mozgrin Thesis (Original Russian)
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`Catalogue entry at the Russian State Library for the Mozgrin
`Thesis
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`Li et al, Low-temperature magnetron sputter-deposition,
`hardness, and electrical resistivity of amorphous and
`crystalline alumina thin films, J. Vac. Sci. Technol. A 18(5),
`pp. 2333-38, 2000 (“Li”)
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`U.S. Pat. No. 5,247,531 (“Muller-Horsche”)
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`European Patent No. 1 113 088 (“Yamaguchi”)
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`U.S. Pat. No. 6,306,265 (“Fu”)
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`1212
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`1213
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`1214
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`1215
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`1216
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`1217
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`1218
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`1219
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`1220
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`1221
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`1222
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`1223
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`5
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`Petitioner’s Motion for Pro Hac Vice Admission
`IPR2014-00781 (U.S. 7,147,759)
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`European Patent Application 1560943, Response of April 21,
`2008 (“04/21/08 Response in EP 1560943”)
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`Claim Chart based on Mozgrin and Kudryavtsev as used in
`1:13-cv-11570-RGS (“Claim Chart Based on Mozgrin and
`Kudryavtsev”)
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`Claim Chart based on Mozgrin, Kudryavtsev and Mozgrin
`Thesis as used in 1:13-cv-11570-RGS (“Claim Chart based on
`Mozgrin, Kudryavtsev and Mozgrin Thesis”)
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`Claim Chart based on Mozgrin, Kudryavtsev and Li as used
`in 1:13-cv-11570-RGS (“Claim Chart based on Mozgrin,
`Kudryavtsev and Li”)
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`Claim Chart based on Mozgrin, Kudryavtsev and Yamaguchi
`as used in 1:13-cv-11570-RGS(“Claim Chart based on
`Mozgrin, Kudryavtsev and Yamaguchi”)
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`Claim Chart based on Mozgrin, Kudryavtsev and Muller-
`Horsche as used in 1:13-cv-11570-RGS(“Claim Chart based
`on Mozgrin, Kudryavtsev and Muller-Horsche”)
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`Claim Chart based on Wang and Kudryavtsev as used in 1:13-
`cv-11570-RGS (“Claim Chart based on Wang and
`Kudryavtsev”)
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`Claim Chart based on Wang, Kudryavtsev and Li as used in
`1:13-cv-11570-RGS (“Claim Chart based on Wang,
`Kudryavtsev and Li”)
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`Claim Chart based on Wang, Kudryavtsev and Yamaguchi as
`used in 1:13-cv-11570-RGS (“Claim Chart based on Wang,
`Kudryavtsev and Yamaguchi”)
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`Claim Chart based on Wang, Kudryavtsev and Muller-
`Horsche as used in 1:13-cv-11570-RGS (“Claim Chart based
`on Wang, Kudryavtsev and Muller- Horsche”)
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`1224
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`1225
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`1226
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`1227
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`1228
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`1229
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`1230
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`1231
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`1232
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`1233
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`6
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`1234
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`1235
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`1236
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`1237
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`1238
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`1239
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`Petitioner’s Motion for Pro Hac Vice Admission
`IPR2014-00781 (U.S. 7,147,759)
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`Claim Chart based on Wang, Kudryavtsev and Mozgrin
`Thesis as used in 1:13-cv-11570-RGS (“Claim Chart based on
`Wang, Kudryavtsev and Mozgrin Thesis”)
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`List of Related Litigations
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`Affidavit of Anthony Fitzpatrick in Support of Petitioner’s
`Motion for Pro Hac Vice Admission
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`Stipulation of Voluntary Dismissal
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`CONFIDENTIAL BOARD ONLY – Zond TSMC Settlement
`Agreement
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`Affidavit of Brett C. Rismiller in Support of Petitioner’s
`Motion for Pro Hac Vice Admission
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`7
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`Petitioner’s Motion for Pro Hac Vice Admission
`IPR2014-00781 (U.S. 7,147,759)
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), this is to certify that I
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`caused to be served a true and correct copy of the foregoing “PETITIONER’S
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`MOTION FOR PRO HAC VICE ADMISSION PURSUANT TO 37 C.F.R. §
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`42.10(C)” as detailed below:
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`Date of service April 7, 2015
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`Manner of service Email: gonsalves@gonsalveslawfirm.com;
`bbarker@chsblaw.com; kurt@rauschenbach.com
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`Documents served PETITIONER’S MOTION FOR PRO HAC VICE
`ADMISSION PURSUANT TO 37 C.F.R. § 42.10(C)
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`Persons Served Dr. Gregory J. Gonsalves
`2216 Beacon Lane
`Falls Church, Virginia 22043
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`Bruce Barker
`Chao Hadidi Stark & Barker LLP
`176 East Mail Street, Suite 6
`Westborough, MA 01581
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`/s/ Anna Goodall
`Anna Goodall
`White & Case LLP
`3000 El Camino Real
`Five Palo Alto Square, 9th Floor
`Palo Alto, CA 94306
`Tel: (650) 213-0367
`Email: agoodall@whitecase.com
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`8