UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`APPLE INC., HTC CORPORATION, and HTC AMERICA, INC.
`Petitioners,
`
`v.
`
`PARTHENON UNIFIED MEMORY ARCHITECTURE,
`Patent Owner
`
`Patent No. 5,812,789
`____________________
`
`Inter Partes Review No. IPR2016-00923
`__________________________________________________________________
`
`
`PETITIONER HTC’S MOTION FOR ADMISSION PRO HAC VICE OF
`CURT HOLBREICH PURSUANT TO 37 C.F.R. § 42.10(c)
`
`
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`
`
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`APPLE INC., HTC CORPORATION, and HTC AMERICA, INC.
`Petitioners,
`
`v.
`
`PARTHENON UNIFIED MEMORY ARCHITECTURE,
`Patent Owner
`
`Patent No. 5,812,789
`____________________
`
`Inter Partes Review No. IPR2016-00923
`__________________________________________________________________
`
`
`PETITIONER HTC’S MOTION FOR ADMISSION PRO HAC VICE OF
`CURT HOLBREICH PURSUANT TO 37 C.F.R. § 42.10(c)
`
`
`
`
`
`
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`IPR2016-00923
`
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` HTC’s Mot. for PHV of Curt Holbreich
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`Petitioners HTC Corporation and HTC America, Inc. (collectively,
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`“HTC”) respectfully request the Board recognize Curt Holbreich, Esq. as counsel
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`pro hac vice during this proceeding.1 HTC has conferred with Petitioner
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`Apple and Patent Owner, neither of which oppose this motion.
`
`I.
`
`BACKGROUND
`
`HTC’s Motion for Admission Pro Hac Vice is being filed pursuant to and in
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`compliance with the Notice of Filing Date Accorded to Petition and Notice For
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`Setting The Time Period For Filing Patent Owner Preliminary Response for this
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`Petition, which was mailed April 22, 2016 (Paper 4) (the “Notice”). The Notice
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`authorizes the parties to file motions for pro hac vice admission under 37 C.F.R.
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`§ 42.10(c). Further to the Notice, such “motions shall be filed in accordance with
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`the ‘Order – Authorizing Motion for Pro Hac Vice Admission’ in Case IPR2013-
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`00639, Paper 7” (the “Order”).
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`II. TIME OF FILING
`This Motion is being filed in accordance with the Notice authorizing the
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`immediate filing of the Motion for Pro Hac Vice admission.
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`1 A corresponding motion for Pro Hac Vice admission is being concurrently filed in
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`co-pending Inter Partes Review Case No. IPR2016-00924.
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`2
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`IPR2016-00923
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`III. STATEMENT OF FACTS
`As required by the Order, the following statement of facts, supported by the
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` HTC’s Mot. for PHV of Curt Holbreich
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`attached Declaration of Curt Holbreich in Support of Motion for Pro Hac Vice
`
`Admission (“Holbreich Decl.”) (Ex. 1041), shows that there is good cause for the
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`Patent Trial and Appeal Board (“Board”) to recognize Mr. Holbreich pro hac vice
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`in this proceeding.
`
`Lead counsel for HTC, Joseph A. Micallef, is a registered practitioner and is
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`experienced in proceedings before the USPTO.
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`Mr. Holbreich is an experienced litigation attorney. Mr. Holbreich has been
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`a litigating attorney for more than twenty years, and has been involved in numerous
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`patent litigation cases in federal courts and before the International Trade
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`Commission. Mr. Holbreich’s experience includes representing a wide range of
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`clients in complex intellectual property litigation, and he is currently counsel for
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`HTC in the related district court litigation involving the 789 Patent. Mr.
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`Holbreich is a member in good standing of the California State Bar, with no
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`suspensions or disbarments from practice, nor any application for admission to
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`practice denied, nor any sanctions or contempt citations, and is admitted to
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`practice in the United States Courts of Appeals for the Federal Circuit, Second
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`Circuit, and Ninth Circuit, as well as the United States District Courts for the
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`Eastern District of California, Northern District of California, Southern District of
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`3
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`IPR2016-00923
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`California, District of Colorado, and the Eastern District of Texas. His mailing
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` HTC’s Mot. for PHV of Curt Holbreich
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`address is at Sidley Austin LLP, 555 California Street Suite 2000, San Francisco,
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`CA 94104, his email address is cholbreich@sidley.com, and his direct dial is
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`(415) 772-7446.
`
`Mr. Holbreich has worked with lead counsel in all aspects of HTC’s
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`participation in this proceeding. As such, he has reviewed and is familiar with
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`(i) the 789 patent, (ii) the prior art relied upon, and (iii) the legal and factual
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`arguments at issue. Mr. Holbreich has also been involved in a number of other
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`proceedings before the Board and is familiar with its established practices.
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`Accordingly, he has established familiarity with the subject matter at issue in
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`this proceeding and the conduct of the proceeding to date.
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`Mr. Holbreich has read and will comply with the Office Patent Trial
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`Practice Guide and the Board’s Rules for Practice for Trials set forth in part 42
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`of 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.P.R. §§11.01 et seq., and to disciplinary jurisdiction
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`under 37 C.P.R. §11.19(a). Mr. Holbreich has not applied to appear pro hac
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`vice in any other proceedings before the Office in the last three years.
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`IV. ANALYSIS
`The facts contained in the Statement of Facts above, and contained in the
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`Holbreich Declaration (Ex. 1041), establish that there is good cause to admit Mr.
`
`
`
`4
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`IPR2016-00923
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`Holbreich pro hac vice in this proceeding under 37 C.F.R. § 42.10(c). HTC’s lead
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` HTC’s Mot. for PHV of Curt Holbreich
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`counsel is a registered practitioner, Mr. Holbreich is an experienced litigating
`
`attorney, and Mr. Holbreich has an established familiarity with the subject matter
`
`at issue in the proceeding. Therefore, HTC respectfully submits that there is good
`
`cause for the Board to recognize Mr. Holbreich as pro hac vice counsel during this
`
`proceeding.
`
`V. CONCLUSION
`For these reasons, HTC respectfully submits there is good cause for the
`
`Board to recognize Mr. Holbreich as counsel pro hac vice during this proceeding.
`
`
`Dated: November 14, 2016
`
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`Respectfully submitted,
`
`
`
`
`/Joseph Micallef/
`Joseph A. Micallef
`Reg. No. 39,772
`Sidley Austin LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`(202) 736-8914
`Attorney for Petitioner
`
`5
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`IPR2016-00923
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` HTC’s Mot. for PHV of Curt Holbreich
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`Exhibit List
`
`Description
`U.S. Patent No. 5,812,789 (“the ’789 patent”)
`File History for U.S. Patent No. 5,812,789
`Reserved
`ISO/IEC 11172-2: 1993: Information technology—Coding of moving
`pictures and associated audio for digital storage media at up to about
`1,5 Mbit/s—Part 2: Video, (1st ed. August 1, 1993) (“MPEG
`Standard”)
`S. Rathnam et al., “An Architectural Overview of the Programmable
`Multimedia Processor, TM-1,” IEEE Proceedings of COMPCON ’96,
`pp. 319-326 (1996) (“Rathnam”)
`R.J. Gove, “The MVP: A Highly-Integrated Video Compression Chip,”
`Proceedings of the IEEE Data Compression Conference (DCC ’94), pp.
`215-224 (March 29-31, 1994)
`U.S. Patent No. 5,774,676 (“Stearns”)
`Reserved
`Reserved
`WorldCat Entry for Rathnam
`Patent Owner Claim Construction Brief in Case No. 2: 14-cv-690,
`April 7, 2015
`Patent Owner Claim Construction Brief in Case No. 2: 14-cv-902, June
`18, 2015
`Reserved
`Brad Hansen, The Dictionary of Multimedia, 1997
`U.S. Patent No. 8,681,164
`Excerpt of File History for U.S. Patent No. 8,681,164
`Reserved
`Reserved
`Shanley, et al., “PCI System Architecture,”' Addison-Wesley
`Publishing Company, 1995 (3rd ed.) (“Shanley”)
`Stone, H., “Microcomputer Interfacing,” Addison-Wesley Publishing
`Company, 1982
`
`Exhibit
`1001
`1002
`1003
`1004
`
`1005
`
`1006
`
`1007
`1008
`1009
`1010
`1011
`
`1012
`
`1013
`1014
`1015
`1016
`1017
`1018
`1019
`
`1020
`
`
`
`
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` HTC’s Mot. for PHV of Curt Holbreich
`
`Description
`
`Reserved
`Reserved
`U.S. Patent No. 5,797,028 (“Gulick 028”)
`“Accelerated Graphics Port Interface Specification,” Intel Corporation,
`July 31, 1996 (Revision 1.0) (“AGP”)
`VESA Unified Memory Architecture Hardware Specifications
`Proposal, Version 1.0p (“VUMA”)
`Reserved
`Reserved
`Reserved
`Curriculum Vitae of Dr. Harold Stone
`Expert Declaration of Dr. Harold Stone (“Stone Decl.”)
`Reserved
`U.S. Patent No. 5,682,484 (“Lambrecht”)
`Reserved
`Slavenburg, G., “The TriMedia VLIW-Based PCI Multimedia
`Processor,” Microprocessor Forum 1995, Oct. 10-11, 1995
`(“Slavenburg”)
`G. Moore, “Cramming more components onto integrated circuits,”
`Electronics, Vol. 38, No. 8, Apr. 19, 1965 (“Moore”)
`U.S. Patent No. 5,579,052 (“Artieri”)
`Reserved
`Reserved
`Reserved
`Reserved
`Declaration of Curt Holbreich in Support of Motion for Pro Hac Vice
`Admission
`
`IPR2016-00923
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`Exhibit
`1021
`1022
`1023
`1024
`
`1025
`
`1026
`1027
`1028
`1029
`1030
`1031
`1032
`1033
`1034
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`1035
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`1036
`1037
`1038
`1039
`1040
`1041
`[NEW]
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`IPR2016-00923
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` HTC’s Mot. for PHV of Curt Holbreich
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on this 14th day
`
`of November, 2016, I caused to be served a true and correct copy of the
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`foregoing and any accompanying exhibits by e-mail on the following counsel:
`
`Masood Anjom, manjom@azalaw.com
`Amir Alavi, aalavi@azalaw.com
`Scott Clark, sclark@azalaw.com
`Michael McBride, mmcbride@azalaw.com
`
`
`
`Dated:
`
`November 14, 2016
`
`Respectfully submitted,
`
`/Joseph Micallef/
`Joseph A. Micallef
`Reg. No. 39,772
`Attorney for Petitioner
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