UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner
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`v.
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`COMARCO WIRELESS TECHNOLOGIES, INC.,
`Patent Owner
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`1
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`Case IPR2015-01879
`Patent 8,492,933
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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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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner
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`v.
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`COMARCO WIRELESS TECHNOLOGIES, INC.,
`Patent Owner
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`1
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`Case IPR2015-01879
`Patent 8,492,933
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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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`Petitioner’s Motion for Pro Hac Vice Admission
`Proceeding No.: IPR2015-01879
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`I.
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`INTRODUCTION
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`Pursuant to 37 C.F.R. § 42.10(c), Petitioner Apple Inc. (“Petitioner” or
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`“Apple”) respectfully requests that the Board recognize Brett J. Williamson as
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`counsel pro hac vice in this proceeding. Petitioner’s lead counsel in this
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`proceeding is a registered practitioner and, as illustrated below, Mr. Williamson
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`is an experienced litigator with an established familiarity with this proceeding’s
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`subject matter. Thus, there is good cause for the Board to recognize Mr.
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`Williamson pro hac vice in this proceeding. 37 C.F.R. § 42.10(c).
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`II. TIME FOR FILING
`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. (Unified Patents, Inc. v. Parallel
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`Iron, LLC, Case IPR 2013-00639, Paper No. 7 (PTAB Oct. 15, 2013).)
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`III. STATEMENT OF FACTS
`This motion is authorized by the Notice of Filing Date Accorded to
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`Petition and Time for Filing Patent Owner Preliminary Response that was
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`mailed on September 17, 2015 (Paper No. 3). Petitioner’s lead and back-up
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`counsel are registered practitioners.
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`Where lead counsel is a registered practitioner, the Board may permit a
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`non-registered practitioner to appear pro hac vice “upon a showing that counsel
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`is an experienced litigating attorney and has established familiarity with the
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`2
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`Petitioner’s Motion for Pro Hac Vice Admission
`Proceeding No.: IPR2015-01879
`subject matter at issue in the proceeding.” 37 C.F.R. §42.10(c); Unified Patents,
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`Case IPR2013-00639 (Paper 7) (setting forth requirements for pro hac vice
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`admission). As set forth in his Declaration submitted herewith (Ex. Apple
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`1020), Mr. Williamson is an experienced litigator. He is a Partner with
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`O’Melveny & Myers LLP with over 25 years’ experience representing clients in
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`patent and technology related litigation including matters involving similar
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`technology to that at issue in this proceeding. Mr. Williamson has litigated
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`patent matters through trial and appeal and has argued complex claim
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`construction and invalidity issues at both the district court and appeals level.
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`Mr. Williamson is also familiar with the subject matter of this
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`proceeding. He is lead counsel for Petitioner in the underlying district court
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`litigation on the patent at issue in this Inter Partes Review proceeding, U.S.
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`Patent No. 8,492,933 (“’933 Patent”). As such, he has reviewed and analyzed
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`the ’933 Patent, its file history, the patent holder’s infringement contentions,
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`and the petitioner’s located prior art. Mr. Williamson was involved in drafting
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`and signed the petitioner’s invalidity contentions in the district court litigation,
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`which include the same references and grounds asserted in this proceeding.
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`He has also advised Petitioner regarding claim construction positions for both
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`the district court litigation and this proceeding. Mr. Williamson has also been
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`involved in preparing the petition for Inter Partes Review submitted in this
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`proceeding, including working with Dr. Davis, the petitioner’s expert declarant.
`3
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`Petitioner’s Motion for Pro Hac Vice Admission
`Proceeding No.: IPR2015-01879
`Based on his work in the underlying litigation, involvement with the
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`petition in this proceeding, and the other facts detailed in his declaration, Mr.
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`Williamson has significant familiarity with the subject matter in this proceeding.
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`Petitioner wishes to apply Mr. Williamson’s knowledge of the patent and
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`litigation experience by employing him as counsel in this proceeding.
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`Admission of Mr. Williamson pro hac vice will enable Petitioner to avoid
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`unnecessary expense and duplication of work in this proceeding and between it
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`and the co-pending litigation. Because Mr. Williamson is an experienced
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`practitioner with an established familiarity with the subject matter of this
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`proceeding, Petitioner respectfully submits that there is good cause under 37
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`C.F.R. § 42.10(c) to recognize Mr. Williamson as counsel pro hac vice during this
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`proceeding.
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`IV. DECLARATION OF INDIVIDUAL SEEKING TO APPEAR
`This motion for pro hac vice admission is supported by the accompanying
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`Declaration of Brett J. Williamson (Ex. Apple 1020), as required by the Unified
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`Patents, Case IPR2013-00639, Paper 7.
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`Respectfully submitted,
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`/s/ Xin-Yi Zhou
`Xin-Yi Zhou (Reg. No. 63,366)
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`4
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`Petitioner’s Motion for Pro Hac Vice Admission
`Proceeding No.: IPR2015-01879
`PETITIONER’S UPDATED LIST OF EXHIBITS
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`Apple 1001 ……… U.S. Patent No. 8,492,933 (“the ’933 Patent”)
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`Apple 10021 ……… File History for U.S. Patent Application No. 13/707,119,
`which ultimately issued as U.S. Patent No. 8,492,933
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`Apple 1003 ……… U.S. Patent No. 7,243,246 (“Allen”)
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`Apple 1004 ……… U.S. Patent No. 7,296,164 (“Breen”)
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`Apple 1005 ……… U.S. Patent No. 6,054,846 (“Castleman”)
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`Apple 1006 ……… European Patent Application Publication EP 1487081A2
`(“Veselic”)
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`Apple 1007 ……… U.S. Patent No. 5,649,001 (“Thomas”)
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`Apple 1008 ……… Universal Serial Bus Specification (Revision 2.0) (Apr. 27,
`2000)
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`Apple 1009 ……… Dallas Semiconductor DS2501-UNW/DS2502-UNW
`UniqueWareTM Add Only Memory Datasheet (1995)
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`Apple 1010 ……… Declaration of Nathaniel J. Davis IV, Ph.D. in Support of
`Apple Inc.’s Petition for Inter Partes Review of U.S. Patent
`No. 8,492,933
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`Apple 1011 ……… Comarco Wireless Technologies, Inc.’s Disclosures Pursuant
`to Rules 2.1 and 2.2 of Judge Guilford’s Standing Patent Rules
`served in Comarco Wireless, Inc. v. Apple Inc., Case No. 8:15-cv-
`00145-AG (C.D. Cal. Apr. 14, 2015)
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`Apple 1012 ……… U.S. Patent No. 6,429,622 (“Svensson”)
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`Apple 1013 ……… U.S. Patent No. 5,297,015 (“Miyazaki”)
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`Apple 1014 ……… U.S. Patent No. 5,648,711 (“Hakkarainen”)
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`Apple 1015 ……… U.S. Patent No. 6,934,561 (“Burrus”)
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`1 For ease of reference, Apple has added consecutive page numbers to the bottom of each page of exhibits
`that lack consecutive page numbering, such as Apple 1002.
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`Petitioner’s Motion for Pro Hac Vice Admission
`Proceeding No.: IPR2015-01879
`Apple 1016 ……… U.S. Patent Application Publication 2003/0025401 Al
`(“Popescu-Stanesti”)
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`Apple 1017 ……… Curriculum vitae of Nathaniel J. Davis IV, Ph.D.
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`Apple 1018 ……… U.S. Patent Application No. 10/758,933
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`Apple 1019 ……… Comarco Wireless Technologies, Inc.’s Objections and
`Responses to Apple Inc.’s First Set of Interrogatories
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`Apple 1020
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`Declaration of Brett J. Williamson In Support of Petitioner’s
`Motion For Pro Hac Vice Admission
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`6
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`Petitioner’s Motion for Pro Hac Vice Admission
`Proceeding No.: IPR2015-01879
`CERTIFICATE OF SERVICE
`I hereby certify that on September 30, 2015, I caused a true and correct
`copy of the foregoing materials:
`• Petitioner’s Motion For Pro Hac Vice Admission Pursuant To 37 C.F.R.
`§42.10(c) and
`• Exhibit Apple 1020, Declaration of Brett J. Williamson In Support of
`Petitioner’s Motion For Pro Hac Vice Admission
`to be served via electronic mail and Express Mail or an equivalent service on
`the following attorney of record per the Patent Owner’s Mandatory Notices
`and Power of Attorney:
`Ethan Fitzpatrick; Charles Quinn
`GRAHAM CURTIN, P.A.
`4 Headquarters Plaza
`Morristown NJ 07962
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`/s/Scot Rives___
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`Scot Rives (Reg. No. 70849)
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`7
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