PATENT OWNER’S MOTION FOR PRO HAC VICE ADMISSION
`OF NICHOLAS J. NOWAK UNDER 37 C.F.R. § 42.10(c)
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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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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`JDS UNIPHASE CORPORATION
`Petitioner
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`v.
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`CAPELLA PHOTONICS, INC.
`Patent Owner
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`____________________
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`Case IPR2015-00739
`Patent RE42,678
`____________________
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`OF NICHOLAS J. NOWAK UNDER 37 C.F.R. § 42.10(c)
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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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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`JDS UNIPHASE CORPORATION
`Petitioner
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`v.
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`CAPELLA PHOTONICS, INC.
`Patent Owner
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`____________________
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`Case IPR2015-00739
`Patent RE42,678
`____________________
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`Case IPR2015-00739
`Patent RE42,678
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`Exhibit List
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`Description
`Defendant’s Motion to Transfer Venue, Capella Photonics, Inc. v.
`Cisco Systems, Inc., Case Number: 1:14-cv-20529-PAS, Docket No.
`19, April 4, 2014.
`Capella Photonics Launches Dynamically Reconfigurable
`Wavelength Routing Subsystems, Offering Unprecedented Operating
`Cost Savings and Flexibility for Telecom Service Providers,
`BUSINESS WIRE (June 2, 2003, 8:16 AM),
`http://www.businesswire.com/news/home/20030602005554/en/Cap
`ella-Photonics-Launches-Dynamically-Reconfigurable-Wavelength-
`Routing. (“Business Wire”)
`WavePath 4500 Product Brief, Capella,
`http://www.capellainc.com/downloads/WavePath%204500%20Prod
`uct%20Brief%20030206B.pdf. (“WavePath”)
`U.S. Provisional Patent Application No. 60/183,155. (“’155
`Provisional)
`Cisco Systems, Inc. v. Capella Photonics, Inc., IPR2014-01276,
`Transcript of Deposition of Dr. Dan M. Marom, Ex. 2005 (P.T.A.B.
`May 18, 2015). (“Marom Depo. Tr.”)
`Benjamin B. Dingel & Achyut Dutta, Photonic Add-Drop
`Multiplexing Perspective for Next Generation Optical Networks,
`4532 SPIE 394 (2001). (“Dingel”)
`Tze-Wei Yeow, K. L. Eddie Law, & Andrew Goldenberg, MEMS
`Optical Switches, 39 IEEE Comm’n Mag. no. 11, 158 (2001).
`(“Yeow”)
`Clifford Holliday, Components for R-OADMs ’05 (B & C Consulting
`Services & IGI Consulting Inc. 2005). (“Holliday R-OADMs”)
`Patrick B. Chu et al., MEMS: the Path to Large Optical
`Crossconnects, 40 IEEE COMM’N MAG. no. 3, 80 (2002). (“Chu”)
`Clifford Holliday, Switching the Lightwave: OXC’s – The
`Centerpiece of All Optical Network (IGI Consulting Inc. & B & C
`Consulting Services 2001). (“Holliday OXC”)
`An Vu Tran et al., Reconfigurable Multichannel Optical Add-Drop
`Multiplexers Incorporating Eight-Port Optical Circulators and Fiber
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`Ex. No.
`2001
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`2002
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`2003
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`2004
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`2005
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`2006
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`2007
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`2008
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`2009
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`2010
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`2011
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`- i -
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`Case IPR2015-00739
`Patent RE42,678
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`Ex. No.
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`2012
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`2013
`2014
`2015
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`Description
`Bragg Gratings, 13 Photonics Tech. Letters, IEEE, no. 10, 1100
`(2001). (“Tran”)
`Jungho Kim & Byoungho Lee, Bidirectional Wavelength Add-Drop
`Multiplexer Using Multiport Optical Circulators and Fiber Bragg
`Gratings, 12 IEEE Photonics Tech. Letters no. 5, 561 (2000).
`(“Kim”)
`U.S. Patent No. 6,984,917 (filed Jun. 6, 2002). (“Marom ’917”)
`U.S. Patent No. 6,657,770 (filed Aug. 31, 2001). (“Marom ’770”)
`Affidavit of Nicholas J. Nowak in Support of Pro Hac Vice
`Admission Under 37 C.F.R. § 42.10(c)
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`Case IPR2015-00739
`Patent RE42,678
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`I. RELIEF REQUESTED
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`Pursuant to 37 C.F.R. § 42.10(c) and the Notice of Filing Date Accorded to
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`Petition (Paper 3), Patent Owner Capella Photonics, Inc. (“Patent Owner”)
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`respectfully requests the pro hac vice admission of Nicholas J. Nowak in this
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`proceeding.
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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
`proceeding upon a showing of good cause, subject to the
`condition that lead counsel be a registered practitioner and to any
`other conditions as the Board may impose. For example, 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.
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`The Board has stated that any motion 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 Motion
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`for Pro Hac Vice Admission” entered in Case IPR2013-00639 (“Unified Patents
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`Order”). (See Unified Patents Order, p. 2.)
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`The Unified Patents Order requires that such motions (1) “[c]ontain a
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`statement of facts showing there is good cause for the Board to recognize counsel
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`Case IPR2015-00739
`Patent RE42,678
`pro hac vice during the proceeding;” and (2) “[b]e accompanied by an affidavit or
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`declaration of the individual seeking to appear attesting to the following”:
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`ii.
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`i. Membership in good standing of the Bar of at least one State or
`the District of Columbia;
`No suspensions or disbarments from practice before any court or
`administrative body;
`iii. No application for admission to practice before any court or
`administrative body ever denied;
`iv. No sanctions or contempt citations imposed by any court or
`administrative body;
`The individual seeking to appear 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 37 C.F.R.;
`The individual will be subject to the USPTO Rules of
`Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and
`disciplinary jurisdiction under 37 C.F.R. § 11.19(a);
`vii. All other proceedings before the Office for which the individual
`has applied to appear pro hac vice in the last three (3) years; and
`viii. Familiarity with the subject matter at issue in the proceeding.
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`v.
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`vi.
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`III. STATEMENT OF FACTS
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`Based on the following facts, and supported by the Affidavit of Mr. Nowak,
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`submitted herewith as Ex. 2015, Patent Owner requests the pro hac vice admission
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`of Nicholas J. Nowak in this proceeding:
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`Case IPR2015-00739
`Patent RE42,678
`Patent Owner’s lead counsel, Jason D. Eisenberg, is a registered
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`1.
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`practitioner (Reg. No. 43,447).
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`2. Mr. Nowak is Of Counsel at the law firm of Sterne, Kessler, Goldstein
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`and Fox P.L.L.C. (Ex. 2015 at ¶ 3.)
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`3. Mr. Nowak is an experienced patent litigation attorney. Mr. Nowak has
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`been a patent litigation attorney for 13 years. (Id. at 4.) Mr. Nowak has
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`been litigating patent cases during the entire time period, and has
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`litigated numerous patent infringement actions involving a variety of
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`technologies. He has significant experience in all aspects of patent
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`litigation, including depositions, claim construction proceedings, and
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`various stages of trial. (Id.)
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`4. Mr. Nowak is a member of good standing of the Bars of:
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`Massachusetts, New York, the District of Columbia, the United States
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`Court of Appeals for the Federal Circuit, and the United States District
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`Court for the Southern District of New York. (Id. at 5.)
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`5. Mr. Nowak has never been suspended or disbarred from practice before
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`any court or administrative body. (Id.)
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`6.
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`No application of Mr. Nowak for admission to practice before any court
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`or administrative body has ever been ultimately denied. (Id. at 6.)
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`Case IPR2015-00739
`Patent RE42,678
`No sanctions or contempt citations have ever been imposed against Mr.
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`7.
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`Nowak by any court or administrative body. (Id. at 7.)
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`8. Mr. Nowak 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 37 C.F.R. (Id. at 8.)
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`9. Mr. Nowak understands that he will be subject to the USPTO Rules of
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`Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and
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`disciplinary jurisdiction under 37 C.F.R. § 11.19(a). (Id. at 9.)
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`10. Mr. Nowak is concurrently seeking pro hac vice admission to appear in
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`a co-pending, related matter against the Patent Owner, Case
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`IPR2015-007311. Mr. Nowak has previously been admitted to appear
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`pro hac vice in three proceedings before the Patent Trial and Appeal
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`Board: Cases IPR2014-01166 (related matter), IPR2014-01276 (related
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`matter), and IPR2014-01546. Mr. Nowak has not applied to appear pro
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`hac vice in any other proceedings before the Office in the last three (3)
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`years. (Id. at 13.)
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`1 Case IPR2015-00731, also filed by the JDS Uniphase Corporation
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`(“Petitioner”), challenges claims of related U.S. Patent No. RE42,368 (“the ’368
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`patent”).
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`Case IPR2015-00739
`Patent RE42,678
`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION OF
`MR. NOWAK IN THIS PROCEEDING
`The Board may recognize counsel pro hac vice during a proceeding upon a
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`showing of good cause, subject to the condition that lead counsel be a registered
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`practitioner and to any other conditions as the Board may impose. 37 C.F.R. §
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`42.10(c). Patent Owner’s lead counsel, Jason D. Eisenberg, is a registered
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`practitioner. Based on the facts contained herein, as supported by Mr. Nowak’s
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`Affidavit, good cause exists to admit Mr. Nowak pro hac vice in this proceeding.
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`As supported by his affidavit, Mr. Nowak is an experienced litigating attorney
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`with over 13 years of patent litigation experience. Mr. Nowak also has an
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`established familiarity with the subject matter at issue in this proceeding. (Ex. 2015
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`at ¶¶ 10-12.)
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`Mr. Nowak has reviewed in detail the pleadings submitted by Petitioner and
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`Patent Owner in this proceeding. (Id. at 11.) Mr. Nowak has reviewed in detail the
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`patent-in-suit, U.S. Patent No. RE42,678 (“the ’678 patent”). (Id. at 10.) He has
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`also reviewed in detail the relevant references asserted by Petitioner. (Id.) Mr.
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`Nowak has engaged in many hours of strategic and substantive discussions
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`regarding this proceeding with counsel for Patent Owner in this proceeding. (Id. at
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`11.)
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`Based on the facts contained herein, as supported by Mr. Nowak’s Affidavit,
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`good cause exists to admit Mr. Nowak pro hac vice in this proceeding.
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`Case IPR2015-00739
`Patent RE42,678
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`V. CONCLUSION
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`For the foregoing reasons, Patent Owner respectfully requests that Mr. Nowak
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`be 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 19-0036 (Customer ID No. 45324).
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`Respectfully submitted,
` STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`/Jason D. Eisenberg/
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`Jason D. Eisenberg
`Registration No. 43,447
`Attorney for Patent Owner
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`Date: September 17, 2015
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`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`(202) 371-2600
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`Case IPR2015-00739
`Patent RE42,678
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
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`
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`The undersigned hereby certifies that the foregoing PATENT OWNER’S
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`MOTION FOR PRO HAC VICE ADMISSION OF NICHOLAS J. NOWAK
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`UNDER 37 C.F.R. § 42.10(c) and associated Exhibit 2015 were electronically
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`served via e-mail on September 17, 2015, in their entireties on the following:
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`Walter C. Linder (Lead Counsel)
`Ken Liebman (Back-up Counsel)
`Paul Sherburne (Back-up Counsel)
`
`walter.linder@FaegreBD.com
`ken.liebman@FaegreBD.com
`paul.sherburne@FaegreBD.com
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`FAEGRE BAKER DANIELS LLP
`90 South Seventh Street
`2200 Wells Fargo Center
`Minneapolis, MN 55402
`
`
` STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`/Jason D. Eisenberg/
`
`Jason D. Eisenberg
`Registration No. 43,447
`Attorney for Patent Owner
`
`Date: September 17, 2015
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`(202) 371-2600
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