`U.S. Patent No. 8,155,298
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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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`YMAX CORPORATION
`Petitioner
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`v.
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`FOCAL IP, LLC
`Patent Owner
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`Case: IPR2016-01256
`U.S. Patent No. 8,155,298
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`YMAX CORPORATION’S UNOPPOSED MOTION FOR
`PRO HAC VICE ADMISSION OF ALEXANDER WALDEN
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`
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`Case No. IPR2016-01256
`U.S. Patent No. 8,155,298
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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 YMax Corporation
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`(“YMax”) respectfully requests the expedited pro hac vice admission of Alexander
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`Walden in this proceeding. YMax has conferred with Patent Owner Focal IP LLC
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`(“Focal IP”) and Focal IP does not have any objections to YMax’s request and will
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`not oppose this motion.
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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 IPR2013-000639 (“Unified
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`Case No. IPR2016-01256
`U.S. Patent No. 8,155,298
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`Patents Order”).
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`In accordance with the Unified Patents Order, this motion is
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`being filed no sooner than twenty-one (21) days after service of the petition.
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`The Unified Patents Order requires that such motions (1) “[c]ontain a
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`statement of facts showing there is good cause for the Board to recognize counsel
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`pro hac vice during the proceeding; and (2) [b]e accompanied by an affidavit or
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`declaration of 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. 8,155,298
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`vi.
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`The individual will be subject to the USPTO Rules of
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`Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq.
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`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 (YMax 1028) submitted herewith, YMax requests the expedited pro hac
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`vice admission of Alexander Walden in this proceeding:
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`1.
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`YMax’s lead counsel, Joseph J. Richetti,
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`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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`(YMax 1028, ¶ 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 seven years.
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`(Id.). Mr.
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`Walden has been litigating patent cases for over six 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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`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 YMax in matters relating to patent strategy in early 2017.
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`(Id.). Since that time he has become very familiar with U.S. Patent
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`No. 8,155,298 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 YMax in preparing its reply to the
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`patent owner’s response and other submissions in this proceeding
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`(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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`Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq.
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`and disciplinary jurisdiction under 37 C.F.R. § 11.19(a). (Id., ¶ 6).
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`11. Mr. Walden was admitted pro hac vice in Case No. IPR2016-
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`01433 on June 19, 2017 (Paper No. 15), in Case No. IPR2015-01892
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`on May 10, 2016 (Paper No. 18), and in Case IPR2014-00090 on
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`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 is also, concurrently herewith, applying for pro hac vice
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`admission in two related IPR proceedings, Case Nos. IPR2016-01258
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`and IPR2016-01260, involving the same parties. Mr. Walden has not
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`otherwise applied to appear in any proceedings before the Office in
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`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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`5
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`Case No. IPR2016-01256
`U.S. Patent No. 8,155,298
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`C.F.R. § 42.10(c). YMax’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 six years of patent litigation experience. Mr. Walden also has
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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 YMax in matters related to patent strategy
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`since early 2017, including in connection with YMax’s Reply to Patent Owner’s
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`Response submitted in this 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 YMax in
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`connection with this and other related proceedings, YMax has a substantial need
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`for Mr. Walden’s pro hac vice admission and involvement in this proceeding. In
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`addition, the admission of Mr. Walden pro hac vice will enable YMax to avoid
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`unnecessary expense and duplication of work in connection with the upcoming
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`depositions in this proceeding, including a deposition that is currently scheduled
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`for July 13, 2017. See 77 Fed. Reg. 157 (Aug. 14, 2012), at 48661 (Office’s
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`comment on final rule discussing concerns about efficiency and costs and
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`indicating that
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`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 YMax’s desire to be represented by the counsel of its choice, the need
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`for admission of Mr. Walden substantially outweighs any potential prejudice to
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`Patent Owner. Moreover, YMax has conferred with Patent Owner concerning its
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`request, and Patent Owner has indicated that it does not have any objections to the
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`pro hac vice admission of Mr. Walden in this proceeding.
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`V.
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`CONCLUSION
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`For the foregoing reasons, YMax respectfully requests that Mr. Walden be
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`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: July 7, 2017
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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
`Direct Tel: (212) 541-1092
`Email: joe.richetti@bryancave.com
`
`Attorney for Petitioner– YMax Corporation
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`Case No. IPR2016-01256
`U.S. Patent No. 8,155,298
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`CERTIFICATE OF SERVICE
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`The
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`undersigned
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`hereby
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`certifies
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`that
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`the
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`foregoing YMAX
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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 July 7, 2017,
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`in its entirety on the following:
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`Bren N. Bumgardner
`brent@nelbum.com
`John Murphy
`murphy@nelbum.com
`PAL-IPR@nelbum.com
`NELSON BUMGARDNER P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, TX 76107
`
`Victor Siber
`VSiber@SiberLaw.com
`Hanna Madbak
`HMadbak@SiberLaw.com
`SIBER LAW LLP
`28 West 44th Street, Suite 604
`New York, NY 10036
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`Date: July 7, 2017
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`Respectfully submitted,
`
`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
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`Attorney for Petitioner– YMax Corporation
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`