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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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`REACTIVE SURFACES LTD., LLP
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`Petitioner
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`v.
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`TOYOTA MOTOR CORPORATION
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`Patent Owner
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`CASE: IPR2016-01914
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`Patent No. 8,394,618 B2
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`PETITIONER’S UNOPPOSED MOTION FOR ADMISSION PRO HAC VICE
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`MARK A.J. FASSOLD AND JORGE MARES
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`Jonathan D. Hurt, Reg. No. 44,790
`McDaniel & Associates, PC
`300 West Avenue, #1316
`Austin, Texas 78701
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`David O. Simmons, Reg. No. 43,124
`IVC Patent Agency
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`7637 Parkview Circle
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`Austin, Texas 78731
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`Dated: November 8, 2016
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`IPR2016-‐01914
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`Pursuant to 37 C.F.R § 42.10(c) and the Board’s authorization provided in
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`Paper No. 3, Notice of Filing Date Accorded to Petition and Time for Filing Patent
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`Owner Preliminary Response, Petitioner requests that the board grant this
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`Unopposed Motion to Admit Mark Fassold and Jorge Mares pro hac vice in this
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`proceeding.
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`The Board may recognize counsel pro hac vice during a proceeding on a
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`showing of good cause. “[W]here lead counsel is a registered practitioner, a motion
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`to appear pro hac vice may be granted upon a showing that counsel is an
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`experienced litigation attorney and has an established familiarity with the subject
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`matter at the issue in the proceeding.” 37 C.F.R. § 42.10(c).
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`Here, both lead and back-up counsel, David O. Simmons and Jonathan D.
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`Hurt, are registered practitioners. Mr. Fassold has over seventeen years of litigation
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`experience, with a focus on commercial litigation, including patent litigation, the
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`majority of his career. Moreover, over the span of the last year, Mr. Fassold has
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`become deeply familiar with both petitioner’s technology and petitioner’s
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`intellectual property, including patents, patent applications, and the patent in
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`dispute in this Inter Partes Review proceeding as well as the reasons for its
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`invalidity. Accompanying this motion is the Declaration of Mark Fassold, where
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`Mr. Fassold attests to his experience and familiarity. See generally Fassold Decl.
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`(Ex. 1014). Specifically, Mr. Fassold attests that:
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`IPR2016-‐01914
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`• He has been a practicing litigation attorney for over seventeen years. His
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`practice has been primarily commercial litigation, including intellectual
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`property litigation;
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`• He has been admitted and licensed to practice as an Attorney and Counselor-
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`at-Law in the United States Court of International Trade;
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`• He is a member in good standing of the State Bar of Texas;
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`• He is a participating member of the team that is preparing the petitioners’
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`IPR petition in this case and several other IPR petitions which challenge
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`patents owned by the same patent owner that cover the same or similar
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`technology and same or similar claimed subject matter as Patent No.
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`8,394,618 B2
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`Id. ¶¶ 1-3, 10.
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`Additionally, Mr. Mares is a practicing litigation attorney with Watts Guerra
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`LP. Mr. Mares primarily focuses on commercial litigation, including intellectual
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`property litigation. Over the span of the last year, Mr. Mares has become familiar
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`with Petitioner’s technology, intellectual property, and the patent in dispute in this
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`Inter Partes Review, including the reasons for its invalidity. Accompanying this
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`motion is the Declaration of Jorge Mares, where Mr. Mares attests to his
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`experience and familiarity with the subject matter of this Inter Partes Review. See
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`generally Mares Decl. (Ex. 1015). Specifically, Mr. Mares attests that:
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`IPR2016-‐01914
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`• He is a litigation attorney and is admitted to practice in all state courts in the
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`state of Texas, as well as the United States District Court for the Eastern,
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`Western, and Southern District of Texas;
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`• His practice is primarily commercial litigation, including intellectual
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`property;
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`• He is familiar with the subject matter in this proceeding; and
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`• He is a participating member of the team that is preparing the petitioners’
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`Inter Partes Review petition in this case and several other Inter Partes
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`Review petitions which challenge patents owned by the same patent owner
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`that cover the same or similar technology and same or similar claimed
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`subject matter as Patent No. 8,394,618 B2.
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`Accordingly, these facts establish good cause to recognize Mr. Fassold and
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`Mr. Mares in this proceeding. Thus, Petitioner requests that the Board admit Mr.
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`Fassold and Mr. Mares pro hac vice in this proceeding.
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`Respectfully submitted,
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`/s/David O. Simmons, Reg. No. 43,124
`David O. Simmons
`USPTO Reg. No. 43,124
`IVC Patent Agency
`7637 Parkview Circle
`Austin, Texas 78731
`Counsel for Petitioner
`Reactive Surfaces Ltd., LLP
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`IPR2016-‐01914
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and true correct copy of the foregoing
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`PETITIONER’S UNOPPOSED MOTION FOR ADMISSION PRO HAC VICE
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`OF MARK A.J. FASSOLD AND JORGE MARES was served on November 8,
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`2016 by email on the following counsel of record for Patent Owner:
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`Joshua A. Lorentz (joshua.lorentz@dinsmore.com)
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`Richard H. Schabowsky (richard.schabowsky@dinsmore.com)
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`Respectfully submitted,
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`/s/David O. Simmons
`David O. Simmons
`Reg. No. 43,124
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`Counsel for Petitioner
`Reactive Surfaces Ltd., LLP
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`Dated: November 8, 2016
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