`U.S. Patent No. 8,677,494
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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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`SYMANTEC CORP.
`Petitioner
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`v.
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`FINJAN, INC.
`Patent Owner
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`Case: IPR2015-01892
`U.S. Patent No. 8,677,494
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`SYMANTEC CORPORATION’S UNOPPOSED MOTION FOR
`PRO HAC VICE ADMISSION OF ALEXANDER WALDEN
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`
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`Case IPR2015-01892
`U.S. Patent No. 8,677,494
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`I.
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`RELIEF REQUESTED
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`Pursuant
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`to 37 C.F.R. § 42.10(c), Petitioner Symantec Corporation
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`(“Symantec”) respectfully requests the expedited pro hac vice admission of
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`Alexander Walden in this proceeding. Symantec has conferred with Patent Owner
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`Finjan, Inc. (“Finjan”) and Finjan does not have any objections to Symantec’s
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`request.
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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
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`proceeding upon a showing of good cause, subject
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`to the
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`condition that lead counsel be a registered practitioner and to
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`any other conditions as the Board may impose. For example,
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`where the lead counsel is a registered practitioner, a motion to
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`appear pro hac vice by counsel who is not a registered
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`practitioner may be granted upon showing that counsel is an
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`experienced litigating attorney and has an established familiarity
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`with the subject matter at issue in the proceeding.
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`The Board has stated that motions 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
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`Motion for Pro Hac Vice Admission” entered in Case IPR2013-00010 (MPT)
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`Case IPR2015-01892
`U.S. Patent No. 8,677,494
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`(“Motorola Order”). In accordance with the Motorola Order, this motion is being
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`filed no sooner than twenty-one (21) days after service of the petition.
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`The Motorola Order requires that such motions (1) “[c]ontain a statement of
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`facts showing there is good cause for the Board to recognize counsel pro hac vice
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`during the proceeding; and (2) [b]e accompanied by an affidavit or declaration of
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`the individual seeking to appear attesting to the following”:
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`i.
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`Membership in good standing of the Bar of at least one
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`State or the District of Columbia;
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`ii.
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`No suspensions or disbarments from practice before
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`any court or administrative body;
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`iii.
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`No application for admission to practice before any
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`court or administrative body ever denied;
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`iv.
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`No sanctions or contempt citations imposed by any
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`court or administrative body;
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`v.
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`The individual seeking to appear has read and will
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`comply with the Office Patent Trial Practice Guide and the
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`Board’s Rules of Practice for Trials set forth in part 42 of the
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`C.F.R.;
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`U.S. Patent No. 8,677,494
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`vi.
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`The individual will be subject to the USPTO Code of
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`Professional Responsibility set forth in 37 C.F.R. §§ 10.20 et
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`seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a);
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`vii. All other proceedings before the Office for which the
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`individual has applied to appear pro hac vice in the last three
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`(3) years; and
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`viii. Familiarity with the subject matter at issue in the proceeding.
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`III.
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`STATEMENT OF FACTS
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`Based on the following facts, and supported by the Affidavit of Alexander
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`Walden (Symantec 1025) submitted herewith, Symantec requests the expedited pro
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`hac vice admission of Alexander Walden in this proceeding:
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`1.
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`Symantec’s lead counsel, Joseph J. Richetti, is a registered
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`practitioner (Reg. No. 47,024).
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`2.
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`Mr. Walden is an associate at the law firm Bryan Cave LLP.
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`(Symantec 1025, ¶ 3).
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`3.
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`Mr. Walden is an experienced litigating attorney and has
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`been a litigating attorney for more than six years. (Id.). Mr. Walden
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`has been litigating patent cases for over five years. (Id.).
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`4.
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`Mr. Walden has an established familiarity with the subject
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`matter at issue in this proceeding. (Id., ¶ 8). Mr. Walden has litigated
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`Case IPR2015-01892
`U.S. Patent No. 8,677,494
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`patent cases in the area of electrical engineering, computer science,
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`and electronic devices since 2009. (Id.). He began representing and
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`advising Symantec in matters relating to patent strategy in early 2013.
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`(Id.). Since that time he has become very familiar with U.S. Patent
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`No. 8,677,494 and with its prosecution file history.
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`(Id.).
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`In
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`particular, Mr. Walden has assisted Symantec in preparing its petition
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`and other submissions in this proceeding (Id.).
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`5.
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`Mr. Walden is a member in good standing of the State Bar of
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`New York. (Id., ¶ 4).
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`6.
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`Mr. Walden has never been suspended or disbarred from
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`practice before any court or administrative body. (Id.).
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`7.
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`No application of Mr. Walden’s for admission to practice
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`before any court or administrative body has ever been denied. (Id.).
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`8.
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`No sanctions or contempt citations have ever been imposed
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`against Mr. Walden by any court or administrative body. (Id.).
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`9.
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`Mr. Walden has read and will comply with the Office Patent
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`Trial Practice Guide and the Board’s Rules of Practice for Trials set
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`forth in part 42 of the Code of Federal Regulators. (Id., ¶ 5).
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`10. Mr. Walden understands that he will be subject to the USPTO
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`Code of Professional Responsibility set forth in 37 C.F.R. §§ 10.20 et
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`U.S. Patent No. 8,677,494
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`seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
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`(Id., ¶
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`6).
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`11. Mr. Walden was admitted pro hac vice in Case IPR2014-00090
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`on October 30, 2014 (Paper No. 28). Mr. Walden also applied for pro
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`hac vice admission in Case IPR2014-00088 and, while the Board
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`stated on a telephone conference it had no objection to the requested
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`pro hac vice admission, no written Order issued in that proceeding.
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`Mr. Walden has not otherwise applied to appear in any proceedings
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`before the Office in the last three (3) years. (Id., ¶ 7).
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`IV. GOOD CAUSE EXISTS FOR THE EXPEDITED PRO HAC VICE
`ADMISSION OF MR. WALDEN IN THIS PROCEEDING
`The Board may recognize counsel pro hac vice during a proceeding upon
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`a showing of good cause, subject
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`to the condition that
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`lead counsel be a
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`registered practitioner and to any other conditions as the Board may impose. 37
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`C.F.R. § 42.10(c). Symantec’s lead counsel, Joseph J. Richetti, is a registered
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`practitioner. Based on the facts contained herein, as supported by Mr. Walden’s
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`Affidavit, good cause exists to expeditiously admit Mr. Walden pro hac vice in
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`this proceeding.
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`As supported by his Affidavit, Mr. Walden is an experienced litigating
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`attorney with over five years of patent litigation experience. Mr. Walden also has
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`U.S. Patent No. 8,677,494
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`an established familiarity with the subject matter at issue in this proceeding, as he
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`has been representing and advising Symantec in matters related to patent strategy
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`since early 2013,
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`including in connection with Symantec’s Petition for this
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`proceeding.
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`In view of Mr. Walden’s extensive knowledge of the precise subject matter
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`at issue in this proceeding, and in view of his involvement in advising Symantec in
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`connection with this and other related proceedings, Symantec has a substantial
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`need for Mr. Walden’s pro hac vice admission and involvement in this proceeding.
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`In addition, the admission of Mr. Walden pro hac vice will enable Symantec to
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`avoid unnecessary expense and duplication of work in connection with the
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`upcoming depositions in this proceeding. See 77 Fed. Reg. 157 (Aug. 14, 2012), at
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`48661 (Office’s comment on final rule discussing concerns about efficiency and
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`costs and indicating that the economic impact on the party should be considered in
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`determining whether to allow counsel to appear pro hac vice).
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`Given Mr. Walden’s extensive experience with the involved patent and
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`parties, and Symantec’s desire to be represented by the counsel of its choice, the
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`need for admission of Mr. Walden substantially outweighs any potential prejudice
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`to Patent Owner. Moreover, Symantec has conferred with Patent Owner
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`concerning its request, and Patent Owner has indicated that it does not have any
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`objections to the pro hac vice admission of Mr. Walden in this proceeding.
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`U.S. Patent No. 8,677,494
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`V.
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`CONCLUSION
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`For the foregoing reasons, Symantec respectfully requests that Mr. Walden
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`be expeditiously 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 02-4467.
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`Date: April 19, 2016
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`Respectfully submitted,
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`By: /Joseph J. Richetti/
`Joseph J. Richetti (Reg. No. 47,024)
`BRYAN CAVE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`General Tel: (212) 541-2000
`Direct Tel: (212) 541-1092
`Fax: (212) 541-4630
`Email: joe.richetti@bryancave.com
`
`Attorney for Petitioner– Symantec
`Corporation
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`7
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`Case IPR2015-01892
`U.S. Patent No. 8,677,494
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies
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`that
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`the
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`foregoing SYMANTEC
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`CORPORATION’S UNOPPOSED MOTION FOR PRO HAC VICE ADMISSION
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`OF ALEXANDER WALDEN was served electronically via e-mail on April 19,
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`2016, in its entirety on the following:
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`James Hannah
`KRAMER LEVIN NAFTALIS &
`FRANKEL LLP
`990 Marsh Road
`Menlo Park, CA 94025
`jhannah@kramerlevin.com
`
`Michael Kim
`Finjan, Inc.
`2000 University Ave., Ste. 600
`E. Palo Alto, CA 94303
`mkim@finjan.com
`
`Jeffrey H. Price
`KRAMER LEVIN NAFTALIS &
`FRANKEL LLP
`1177 Avenue of the Americas
`New York, NY 10036
`jprice@kramerlevin.com
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`Date: April 19, 2016
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`Respectfully submitted,
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`By: /Joseph J. Richetti, Reg. No. 47024/
`Joseph J. Richetti (Reg. No. 47,024)
`BRYAN CAVE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`General Tel: (212) 541-2000
`Direct Tel: (212) 541-1092
`Fax: (212) 541-4630
`Email: joe.richetti@bryancave.com
`
`Attorney for Petitioner– Symantec
`Corporation