UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`PRAXAIR DISTRIBUTION, INC.,
`Petitioner
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`v.
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`INO THERAPEUTICS LLC,
`Patent Owner
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`Case IPR No.: IPR2015-00529
`Patent 8,846,112 B2
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`Before LORA M. GREEN, TINA E. HUSLE, and ROBERT A. POLLOCK,
`Administrative Patent Judges
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`PRAXAIR DISTRIBUTION, INC.’S
`MOTION FOR PRO HAC VICE ADMISSION OF
`MICHAEL J. ABERNATHY PURSUANT TO 37 C.F.R. § 42.10
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`PRAXAIR DISTRIBUTION, INC.,
`Petitioner
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`v.
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`INO THERAPEUTICS LLC,
`Patent Owner
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`Case IPR No.: IPR2015-00529
`Patent 8,846,112 B2
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`Before LORA M. GREEN, TINA E. HUSLE, and ROBERT A. POLLOCK,
`Administrative Patent Judges
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`PRAXAIR DISTRIBUTION, INC.’S
`MOTION FOR PRO HAC VICE ADMISSION OF
`MICHAEL J. ABERNATHY PURSUANT TO 37 C.F.R. § 42.10
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`Case IPR2015-00529
`U.S. Patent No. 8,846,112
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`Pursuant to 37 C.F.R. § 42.10, Praxair Distribution, Inc. (“Petitioner”)
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`respectfully requests the Board to recognize Michael J. Abernathy as pro hac vice
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`counsel for this proceeding.
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`I.
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`Time for Filing
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`Pursuant to Paper 7, “Order Authorizing Motion for Pro Hac Vice
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`Admission,” in Case IPR2013-00639 (“Order”) and Paper 5, “Notice of Filing
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`Date Accorded to Petition and Time for Filing Patent Owner Preliminary
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`Response,” in the present case (IPR2015-00529) (“Notice”), this motion for pro
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`hac vice admission is authorized and is being filed no sooner than twenty-one (21)
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`days after service of the petition.
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`II. Good Cause for Additional Back-Up Counsel
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`Petitioner respectfully requests admission of Mr. Abernathy as additional
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`back-up counsel to promote attorney availability for the discovery period and trial
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`and to provide additional expertise in the discovery process. The Petition involves
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`19 claims and an expert declarant, and it is expected that the Patent Owner will
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`also use expert declarations requiring depositions. In order to facilitate an efficient
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`proceeding, Petitioner respectfully submits that there is a need for the admission of
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`a second back up counsel.
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`2
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`III. Statement of Facts
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`Case IPR2015-00529
`U.S. Patent No. 8,846,112
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`Pursuant to the Order, the following statement of facts, supported by the
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`attached Declaration of Mr. Abernathy, shows that there is good cause for the
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`Board to recognize Mr. Abernathy pro hac vice.
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`Lead counsel for this proceeding, Sanjay K. Murthy, is a registered
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`practitioner (Reg. No. 45,976).
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`Mr. Abernathy is an experienced litigation attorney and has served as first
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`chair trial counsel in numerous complex cases and patent infringement litigations
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`in various district and appellate courts, including the Supreme Court of the United
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`States. Mr. Abernathy has not been suspended or disbarred from practice, and he
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`has not had any application for admission to practice denied, or had any sanctions
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`or contempt citations imposed against him.
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`Mr. Abernathy is an active member in good standing of the bar of Illinois
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`and is admitted to practice before the United States Supreme Court, the United
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`States Court of Appeals for the Federal Circuit, as well as the First, Third, Fifth,
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`Seventh, Ninth, and Eleventh Circuits. He is also admitted to practice before the
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`United States District Court for the Eastern District of Michigan, the United States
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`District Court for the Eastern District of Wisconsin, and the United States District
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`Court for the Northern District of Illinois.
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`3
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`Case IPR2015-00529
`U.S. Patent No. 8,846,112
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`Mr. Abernathy’s mailing address is K&L Gates LLP, 70 W. Madison St.,
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`Suite
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`3100, Chicago
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`Illinois,
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`60602.
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` His
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`address
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`is
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`michael.abernathy@klgates.com and his direct dial phone number is 312-807-
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`4257. He is listed on the Power of Attorney that was filed by the Petitioner as
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`Paper 2 on January 5, 2015.
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`Mr. Abernathy is extremely familiar with the technology at issue in the
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`petition. He is familiar with the patent at issue and has extensive knowledge of the
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`assertions regarding the invalidity of the patent. Additionally, he is actively
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`involved in the currently pending litigation in the United States District Court for
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`the District of Delaware (1:15-cv-00170), which also involves the patent at issue.
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`He is also familiar with the Petitioner’s overall legal strategies and has in-depth
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`knowledge of issues that may arise over the course of the proceeding. Mr.
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`Abernathy has thus established familiarity with the subject matter at issue in this
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`proceeding.
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`Mr. Abernathy 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 part 42 of
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`37 C.F.R., and he agrees to be subject to the USPTO Rules of Professional
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`Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction under
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`37 C.F.R.§ 11.19( a). Mr. Abernathy applied to appear pro hac vice in IPR2014-
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`4
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`Case IPR2015-00529
`U.S. Patent No. 8,846,112
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`00899 on January 22, 2015, and the Board granted this motion on January 30,
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`2015.
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`Petitioner relies on Mr. Abernathy in the development of its legal strategy
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`with respect to this patent, and Petitioner wishes Mr. Abernathy to represent it in
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`this proceeding.
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`IV. Affidavit or Declaration of Individual Seeking to Appear
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`This motion for pro hac vice admission is accompanied by a Declaration of
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`Mr. Abernathy as required by the Order.
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`V. Conclusion
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`The facts contained in the Statement of Facts above, and contained in the
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`Declaration of Mr. Abernathy, establish that there is good cause to admit Mr.
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`Abernathy pro hac vice in this proceeding under 37 C.F.R. § 42.10(c).
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`Date: October 1, 2015
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`Respectfully submitted by
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`K&L Gates LLP,
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`/Sanjay K. Murthy/
`Sanjay K. Murthy
`Reg. No. 45,976
`Customer No. 24573
`K&L Gates LLP
`e-mail: sanjay.murthy@klgates.com
`telephone number: 312-807-4416
`fax number: 312-827-8196
`70 W. Madison Street, Suite 3100
`Chicago, IL 60602
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`5
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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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`PRAXAIR DISTRIBUTION, INC.,
`Petitioner
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`v.
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`INO THERAPEUTICS LLC,
`Patent Owner
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`Case IPR No.: IPR2015-00529
`Patent 8,846,112 B2
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`Before LORA M. GREEN, TINA E. HUSLE, and ROBERT A. POLLOCK,
`Administrative Patent Judge
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`DECLARATION OF MICHAEL J. ABERNATHY UNDER
`37 C.F.R. § 1.68 FOR PRO HAC VICE ADMISSION UNDER 37 C.F.R. § 42.10
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`I, Michael J. Abernathy, do hereby declare and say:
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`Case IPR2015-00529
`U.S. Patent No. 8,846,112
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`1.
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`2.
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`I am a citizen of the United States.
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`I am a member in good standing of the Bar of Illinois and I am admitted to
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`practice before the United States Supreme Court, the United States Court of
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`Appeals for the Federal Circuit, as well as the First, Third, Fifth, Seventh,
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`Ninth, and Eleventh Circuits. I am also admitted to practice before the United
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`States District Court for the Eastern District of Michigan, the United States
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`District Court for the Eastern District of Wisconsin, and the United States
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`District Court for the Northern District of Illinois.
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`3.
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`I have not been suspended or disbarred from practice before any court or
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`administrative body.
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`4.
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`I have not been denied an application for admission to practice before any
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`court or administrative body.
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`5. No sanctions or contempt citations have been imposed upon me by any court
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`or administrative body.
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`6.
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`I have read and will comply with the Office Patent Trial Practice Guide and
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`the Board’s Rules of Practice for Trials set forth in part 42 of 37 C.F.R.
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`7.
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`I agree to be subject to the USPTO Rules of Professional Conduct set forth in
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`37 C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction under 37 C.F.R. §
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`11.19(a).
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`8.
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`Case IPR2015-00529
`U.S. Patent No. 8,846,112
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`I applied to appear pro hac vice in IPR2014-00899 on January 22, 2015, and
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`the Board granted this motion on January 30. 2015.
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`9.
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`I am familiar with the subject matter at issue in this proceeding. I am familiar
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`with the patent and technology at issue. I am also familiar with Praxair
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`Distribution Inc.’s legal strategies regarding the patent. I also have extensive
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`knowledge of
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`the assertions regarding
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`the
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`invalidity of
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`the patent.
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`Additionally, I am actively involved in the currently pending litigation in the
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`United States District Court for the District of Delaware (1:15-cv-00170),
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`which also involves the patent at issue.
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`10. I declare that all statements made of my own knowledge are true and that all
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`statements made on information and belief are believed to be true, and that
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`these statements were made with the knowledge that willful false statements
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`and the like are punishable by fine or imprisonment, or both under section
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`1001 of Title 18 of the United States Code.
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`October 1, 2015
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`/Michael J. Abernathy/
`Michael J. Abernathy
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`Certification of Service Under 37 C.F.R. § 42.6(e)(4)
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`A copy of this Motion for Pro Hac Vice Admission of Michael J. Abernathy
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`and supporting materials have been served to counsel for the patent owner by filing
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`these document through the Patent Review Processing System as well as by
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`delivering a copy via electronic mail to the following email addresses:
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`/Sanjay K. Murthy/
`By:
`Reg. No. 45,976
`Customer No. 29200
`Date: October 1, 2015
`K&L Gates LLP
`e-mail: sanjay.murthy@klgates.com
`telephone number: 312-807-4416
`fax number 312-827-8196
`70 W. Madison Street, Suite 3100
`Chicago, IL 60602
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`dconde@fchs.com
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`rmandra@fchs.com
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`wsolander@fchs.com
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`October 1, 2015
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