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`Paper No.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________________
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`APPLE INC.,
`Petitioner,
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`v.
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`PARTHENON UNIFIED MEMORY ARCHITECTURE LLC,
`Patent Owner
`
`_____________________
`
`
`
`Case IPR2016-01135
`Patent No. 5,812,789
`
`_____________________
`
`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
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`IPR2016-01135 (Patent No. 5,812,789)
`Apple Inc. respectfully moves that the Board recognize Mr. Yakov
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`
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`Zolotorev as counsel pro hac vice during this proceeding. Patent Owner does not
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`oppose this Motion.
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`1. Time for Filing
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`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. See Notice of Filing Date,
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`IPR2016-01135, paper no. 3, at 1.
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`2. Statement of Facts Showing Good Cause for Counsel Pro Hac Vice
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`Petitioner has been authorized to file motions seeking admission pro hac
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`vice under 37 C.F.R. 42.10(c). Id. at 2. Petitioner’s lead and back-up counsel are
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`registered practitioners:
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`Lead Counsel: Andrew S. Ehmke, USPTO Reg. No. 50,271;
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`Backup Counsel: David W. O’Brien, USPTO Reg. No. 40,107;
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`Michael S. Parsons, USPTO Reg. No. 58,767;
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`Adam C. Fowles, USPTO Reg. No. 65,005; and
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`David L. Alberti, USPTO Reg. No. 43,465.
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`The following statement of facts shows that there is good cause for the
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`Board to recognize Mr. Zolotorev pro hac vice on behalf of Petitioner.
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`Mr. Zolotorev is an experienced litigator that has established familiarity with
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`the subject matter at issue in this proceeding from his representation of the
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`-2-
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`Petitioner’s Motion for Pro Hac Vice Admission
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`IPR2016-01135 (Patent No. 5,812,789)
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`Petitioner in Parthenon Unified Memory Architecture LLC v. Apple Inc., Case No.
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`2:15-cv-00621-JRG (E.D. Tex. filed May 1, 2015) (“the co-pending litigation”),
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`where U.S. Patent No. 5,812,789 (“the ’789 patent”) is being asserted against the
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`Petitioner. The co-pending litigation involves the same subject patent, and if
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`admitted, Mr. Zolotorev will be involved in the depositions that occur in this
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`proceeding.
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`Mr. Zolotorev has analyzed prior art references and claim charts in
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`connection with invalidity contentions and has been involved in forming claim
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`construction positions related to the claimed inventions, all of which are relevant to
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`this inter partes review proceeding. Petitioner wishes to apply Mr. Zolotorev’s
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`knowledge of the ’789 patent by employing him as counsel in this proceeding.
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`Admission of Mr. Zolotorev pro hac vice will enable Petitioner to avoid
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`unnecessary expense and duplication of work between this proceeding and the co-
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`pending litigation.
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`Petitioner’s lead and backup counsel are registered practitioners and Mr.
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`Zolotorev is an experienced litigation attorney having familiarity with the subject
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`matter at issue in this proceeding. Therefore, Petitioner respectfully submits that
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`there is good cause for the Board to recognize Mr. Zolotorev as counsel pro hac
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`vice during this proceeding.
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`-3-
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`Petitioner’s Motion for Pro Hac Vice Admission
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`IPR2016-01135 (Patent No. 5,812,789)
`3. Declarations of Individuals Seeking to Appear
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`
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`This Motion for Pro Hac Vice Admission is supported by the Declarations
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`Respectfully submitted,
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` /
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`
`
` Andrew S. Ehmke/
`Andrew S. Ehmke
`Registration No. 50,271
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`
`
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`of Mr. Zolotorev (Ex. 1021).
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`Dated: February 15, 2017
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`
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`-4-
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`Petitioner’s Motion for Pro Hac Vice Admission
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`IPR2016-01135 (Patent No. 5,812,789)
`PETITIONER’S UPDATED EXHIBIT LIST
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`
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`
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`February 15, 2017
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`U.S. Patent No. 5,812,789
`Prosecution History of U.S. Patent No. 5,812,789
`Declaration of Robert Colwell, Ph.D., Under 37 C.F.R. § 1.68
`Curriculum Vitae of Robert Colwell, Ph.D.
`U.S. Patent No. 5,546,547 to Bowes et al. (“Bowes”)
`Texas Instruments, Inc., Houston, TX, “TMS320C8x System Level
`Synopsis,” (September 1995) (Literature Ref. SPRU113) (“TMS”)
`U.S. Patent No. 5, 001,625 to Thomas et al. (“Thomas”)
`R. Gove, “The MVP: A Highly-Integrated Video Compression
`Chip”, IEEE 1994 (“Gove”)
`U.S. Patent No. 5,768,533 to Ran (“Ran”)
`U.S. Patent No. 5,742,797 to Celi et al. (“Celi”)
`Joint Claim Construction and Prehearing Statement, Parthenon
`Unified Memory Architecture LLC v. Apple Inc., case no. 2:15-cv-
`632-JRG-RSP (Feb. 16, 2016, E.D. Tex.)
`Decision of Institution of Inter Partes Review, Samsung Elec. Co.,
`Ltd., et al. v. Parthenon Unified Memory Architecture LLC,
`IPR2015-01944 (Paper No. 7)
`Claim Construction Memorandum Opinion and Order, Parthenon
`Unified Memory Architecture LLC v. ZTE Corp. et al., No. 2:15-
`CV-00225 (E.D. Tex.)
`Claim Construction Memorandum Opinion and Order, Parthenon
`Unified Memory Architecture LLC v. Samsung Elecs. Co. Ltd. et
`al., No. 2:14-CV-00902 (E.D. Tex.)
`Claim Construction Memorandum Opinion and Order, Parthenon
`Unified Memory Architecture LLC v. HTC Corp. et al., 2:14-CV-
`00690 (E.D. Tex.)
`Claim Construction Memorandum Opinion and Order, ST
`Microelectronics, Inc. v. Motorola, Inc. et al., No. 4:03-CV-00276
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`-5-
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`Ex. 1001
`Ex. 1002
`Ex. 1003
`Ex. 1004
`Ex. 1005
`Ex. 1006
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`Ex. 1007
`Ex. 1008
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`Ex. 1009
`Ex. 1010
`Ex. 1011
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`Ex. 1012
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`Ex. 1013
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`Ex. 1014
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`Ex. 1015
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`Ex. 1016
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`
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`Petitioner’s Motion for Pro Hac Vice Admission
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`IPR2016-01135 (Patent No. 5,812,789)
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`Ex. 1017
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`Ex. 1018
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`Ex. 1019
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`Ex. 1020
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`Ex. 1021
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`(E.D. Tex.)
`“Pentium and Pentium Pro Processors and Related Products,” ISBN
`1-55512-265-5
`Parthenon Unified Memory Architecture LLC v. Apple Inc., case no.
`2:15-cv-632-JRG-RSP, Document No. 10 (June 16, 2015, E.D.
`Tex.)
`Texas Instruments, Inc., Houston, TX, “TMS320C80 to
`TMS320C82 Software Compatibility, User’s Guide,” (November
`1995) (Literature Ref. SPRU154)
`Bader Declaration (including Appendix A)
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`Declaration of Yakov Zolotorev in Support of Motion for Pro Hac
`Vice Admission
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`-6-
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`Petitioner’s Motion for Pro Hac Vice Admission
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`IPR2016-01135 (Patent No. 5,812,789)
`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), this is to certify that I
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`
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`caused to be served a true and correct copy of the foregoing “PETITIONER’S
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`MOTION FOR PRO HAC VICE ADMISSION PURSUANT TO 37 C.F.R. §
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`42.10(C)” as detailed below:
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`Date of service February 15, 2017
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`Manner of service Electronic Mail to: manjom@azalaw.com
`aalavi@azalaw.com; sclark@azalaw.com; and
`mmcbride@azalaw.com
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`Documents served PETITIONERS’ MOTION FOR PRO HAC VICE
`ADMISSION PURSUANT TO 37 C.F.R. § 42.10(C);
`Petitioner’s Updated Exhibit List; and Exhibit 1021
`
`Masood Anjom
`Amir Alavi
`Scott Clark
`Michael McBride
`AHMAD, ZAVITSANOS, ANAIPAKOS, ALAVI &
`MENSING P.C.
`1221 McKinney, Suite 2500
`Houston, TX 77010
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`Persons served
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`/Andrew S. Ehmke/
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`Andrew S. Ehmke
`Registration No. 50,271
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`-7-
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