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`Paper No.
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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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`SIERRA WIRELESS AMERICA, INC., SIERRA WIRELESS, INC.;
`and RPX CORP.
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`Petitioner
`v.
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`M2M SOLUTIONS LLC
`Patent Owner
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`Patent No. 8,648,717
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`PETITIONER’S MOTION FOR SUBSTITUTION OF COUNSEL
`AND PRO HAC VICE ADMISSION OF RONALD F. LOPEZ
`UNDER 37 C.F.R. § 42.10
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`U.S. Patent No. 8,648,717
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`I.
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`Relief Requested
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`Pursuant to 37 C.F.R. § 42.10(c), Petitioner respectfully moves the Board to
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`recognize counsel Ronald F. Lopez (“Mr. Lopez”) pro hac vice for purposes of the
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`above-captioned inter partes review. Pursuant to 37 C.F.R. § 42.10(e), Petitioners
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`respectfully request that Mr. Robert E. Krebs withdraw as counsel for Petitioners
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`and substitute Mr. Lopez as back-up counsel for Mr. Krebs.
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`Patent Owner does not oppose the Motion.
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`II. Authorization for This Motion
`The Board authorized Petitioners to file this Motion on May 6, 2016.
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`III. Statement Showing Good Cause to Recognize Mr. Lopez pro hac vice
`Good cause exists to recognize Mr. Lopez pro hac vice. The undersigned
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`lead counsel, Jennifer Hayes, is a registered practitioner. As set forth in the
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`accompanying Affidavit In Support Of Motion for Pro Hac Vice Admission of
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`Ronald F. Lopez (Ex. A), Mr. Lopez is an experienced patent litigation attorney
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`with an established familiarity with the subject matter at issue in this inter partes
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`review. (Ex A at ¶¶ 10-11.) U.S. Patent No. 8,648,717 is currently asserted
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`against Petitioners Sierra Wireless and Sierra Wireless America, Inc. in a co-
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`pending litigation, M2M SOLUTIONS LLC v. SIERRA WIRELESS AMERICA,
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`INC., et al., C.A. No. 1:14-cv-01102-RGA. The co-pending litigation is currently
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`1
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`U.S. Patent No. 8,648,717
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`stayed. Mr. Lopez is lead counsel for Sierra Wireless and Sierra Wireless America
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`in the co-pending litigation and, as such, has an established familiarity with the
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`subject matter at issue in this proceeding. In the co-pending litigation, Mr. Lopez
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`reviewed prior art references and claim charts for invalidity contentions and was
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`involved in forming claim construction positions. My. Lopez is also lead counsel
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`for Sierra Wireless and Sierra Wireless America in a co-pending litigation
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`involving two patents related to the patent at issue, M2M SOLUTIONS LLC v.
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`SIERRA WIRELESS AMERICA, INC., et al., C.A. No. 1:12-cv-00030-RGA. In
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`that co-pending litigation of the two related patents, Mr. Lopez reviewed prior art
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`references and claim charts for invalidity contentions, was involved in forming
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`claim construction positions and drafting claim construction briefs, and was
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`involved in drafting summary judgment motions relating to invalidity and non-
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`infringement.
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`Mr. Lopez is a member in good standing of the bar of the state of California.
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`(Ex A at ¶ 3.) Mr. Lopez 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 (Ex A at ¶ 7), and
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`further understands that he will be subject to the USPTO Code of Professional
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`Responsibility. (Ex A at ¶ 8.)
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`Petitioner respectfully submits that there is good cause for the Board to
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`recognize Mr. Lopez as counsel pro hac vice during this proceeding.
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`U.S. Patent No. 8,648,717
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`IV. Statement Showing Good Cause for the Board to Authorize Withdrawal
`and Substitution of Counsel
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`Mr. Robert E. Krebs is currently designated as back-up counsel on behalf of
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`Petitioners. Mr. Krebs passed away unexpectedly last month. Accordingly, for
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`good cause, Petitioners request that the current designed back-up counsel, Mr.
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`Krebs, be deemed withdrawn from the present proceeding. There is no change to
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`lead counsel for Petitioners.
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`As set forth above, good cause exists to recognize Mr. Lopez pro hac vice
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`during this proceeding. For good cause, Petitioners request the Board to substitute
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`Mr. Lopez as back-up counsel for Petitioners.
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`VI. Conclusion
`Petitioners respectfully request that the Board grant its motion to recognize
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`Mr. Lopez pro hac vice during this proceeding and authorize withdrawal of back-
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`up counsel and permit substitution of Mr. Lopez as back-up counsel. Upon grant
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`of this motion, Petitioners will promptly file Substitute Powers of Attorney.
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`U.S. Patent No. 8,648,717
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`Respectfully submitted,
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`Dated: May 9, 2016
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`By:
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`/Jennifer Hayes/
`Reg. No. 50,845
`Nixon Peabody LLP
`P.O. Box 60610
`Palo Alto, CA 94306
`Tel. (650) 320-7725
`Fax (650) 320-7701
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`U.S. Patent No. 8,648,717
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that above-captioned Petitioner’s Substitution
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`of Counsel and Motion for Pro Hac Vice Admission Under 37 C.F.R. § 42.10 (c)
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`was served in its entirety on May 9, 2016, by e-mail on the following individuals:
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`Jeffrey Costakos
`jcostakos@foley.com
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`Michelle Moran
`mmoran@foley.com
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`By: /Jennifer Hayes/
`Lead Counsel for Petitioners
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`5
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