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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Intel Corporation
`Petitioner
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`v.
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`Qualcomm Incorporated
`Patent Owner
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`IPR2018-01154
`U.S. Patent No. 8,698,558
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`PETITIONER’S UNOPPOSED MOTION FOR PRO HAC VICE
`ADMISSION OF JAMES M. DOWD
`PURSUANT TO 37 C.F.R § 42.10(c)
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`I. STATEMENT OF RELIEF REQUESTED
`Petitioner Intel Corporation (“Petitioner” or “Intel”) respectfully requests
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`IPR2018-01154
`U.S. Patent No. 8,698,558
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`that the Patent Trial and Appeal Board (“Board”) enter an order granting the pro
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`hac vice admission of James M. Dowd as back-up counsel for Intel in Case
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`IPR2018-01154. Intel has conferred with counsel for Patent Owner, who does not
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`oppose this motion.
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`II. APPLICABLE RULE
`Pursuant to 37 C.F.R. § 42.10(c), the “Board may recognize counsel pro hac
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`vice during a proceeding upon a showing of good cause, subject to the condition
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`that lead counsel be a registered practitioner and to any other conditions as the
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`Board may impose.” “[A] motion to appear pro hac vice by counsel who is not a
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`registered practitioner may be granted upon showing that counsel is an experienced
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`litigating attorney and has an established familiarity with the subject matter at issue
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`in the proceeding.”
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`The Board set forth requirements for filing motions for pro hac vice
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`admission in Unified Patents, Inc. v. Parallel Iron, LLC, Case IPR2013-00639,
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`Paper 7 (“Order – Authorizing Motion For Pro Hac Vice Admission – 37 C.F.R.
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`§42.10”) (PTAB Oct. 15, 2013). A motion seeking pro hac vice must be filed no
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`sooner than twenty-one (21) days after service of the petition, “must contain 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 must be accompanied by a declaration
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`IPR2018-01154
`U.S. Patent No. 8,698,558
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`or affidavit of the individual seeking pro hac vice admission.” Id. at 2-3. The
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`affidavit or declaration must attest to: (1) membership in good standing of the Bar
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`of at least one State or the District of Columbia; (2) no suspensions or disbarments
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`from any practice before any court or administrative body; (3) no application for
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`admission to practice before any court or administrative body ever denied; (4) no
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`sanctions or contempt citations imposed by any court or administrative body; (5)
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`the individual seeking to appear 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 forth in part 42
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`of 37 C.F.R.; (6) the individual will be subject to the USPTO Rules of Professional
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`Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction under
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`37 C.F.R. § 11.19(a); (7) 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 (3) years; and (8)
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`familiarity with the subject matter at issue in the proceeding.”
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`III. FACTS SHOWING GOOD CAUSE FOR THE BOARD TO RECOGNIZE
`COUNSEL PRO HAC VICE DURING THE PROCEEDING
`On June 28, 2018, Petitioner filed four inter partes review petitions in
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`IPR2018-01152, -01153, -01154, and -01240 directed to U.S. Patent No. 8,698,558
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`(“’588 patent”). Patent Owner was served on the same day. Petitioner’s lead
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`counsel, David L. Cavanaugh is a registered practitioner (Registration No. 36,476).
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`James M. Dowd, a partner at Wilmer Cutler Pickering Hale and Dorr LLP, seeks
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`IPR2018-01154
`U.S. Patent No. 8,698,558
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`pro hac vice admission in this proceeding. Accompanying this motion as Exhibit
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`1225 is the Declaration of James M. Dowd in Support of Motion for Admission
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`Pro Hac Vice (“Dowd Decl.”).
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`Mr. Dowd is a member of good standing of the State Bar of California, the
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`District of Columbia Bar, and the Virginia State Bar. Dowd Decl. ¶ 2 (Ex. 1225).
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`He has never been suspended or disbarred from practice before any court or
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`administrative body, and has never been denied admission to practice before any
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`court or administrative body. Dowd Decl. ¶¶ 5-6 (Ex. 1225). No court or
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`administrative body has ever imposed sanctions or contempt citations on Mr.
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`Dowd. Dowd Decl. ¶ 7 (Ex. 1225).
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`Mr. Dowd has read and will comply with the Office Patent Trial Practice
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`Guide and the Board’s Rules of Practice for Trials set forth in part 42 of 37 C.F.R.
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`Dowd Decl. ¶ 8 (Ex. 1225). Mr. Dowd understands that he will be subject to the
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`USPTO Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et. seq. and
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`disciplinary jurisdiction under 37 C.F.R. § 11.19(a). Dowd Decl. ¶ 9 (Ex. 1225).
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`Within the last three years, Mr. Dowd has applied to appear pro hac vice in
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`the following proceedings:
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` Apple, Inc. v. California Institute of Technology, Case IPR2017-00210;
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` Apple, Inc. v. California Institute of Technology, Case IPR2017-00219;
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` Apple, Inc. v. California Institute of Technology, Case IPR2017-002971;
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`IPR2018-01154
`U.S. Patent No. 8,698,558
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` Apple, Inc. v. California Institute of Technology, Case IPR2017-00700;
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` Apple, Inc. v. California Institute of Technology, Case IPR2017-00701;
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` Apple, Inc. v. California Institute of Technology, Case IPR2017-00728.
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`Dowd Decl. ¶ 10 (Ex. 1225).
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`As his accompanying declaration demonstrates, Mr. Dowd has an
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`established familiarity with the subject matter at issue in this proceeding. Mr.
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`Dowd is an experienced patent litigator with over 21 years of experience. Dowd
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`Decl. ¶ 2 (Ex. 1225). Mr. Dowd has reviewed the ’558 patent and its file history,
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`as well as the Petition, Institution Decision, and the exhibits in this proceeding.
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`Dowd Decl. ¶ 11 (Ex. 1225). Mr. Dowd has been involved in numerous patent
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`litigations, has litigated matters that concerned PTO rules and regulations, and has
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`previously appeared pro hac vice before the Board. Dowd Decl. ¶ 4 (Ex. 1225).
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`Furthermore, Mr. Dowd represents Apple Inc. (“Apple”), identified by Petitioner
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`Intel as a real party-in-interest in the Apple litigation, in Qualcomm Inc. v. Apple
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`Inc., No. 3:17-cv-1375 (S.D. Cal.) (the “Apple litigation”), which is a related
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`matter to this proceeding. Dowd Decl. ¶ 12 (Ex. 1225). In addition, Mr. Dowd
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`previously litigated the validity of the ’558 patent in Certain Mobile Electronic
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`1 IPR2017-00423 was consolidated with IPR2017-00297.
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`-4-
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`Devices and Radio Frequency and Processing Components Thereof, Investigation
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`IPR2018-01154
`U.S. Patent No. 8,698,558
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`No. 337-ITC-1065 (the “Apple ITC litigation”), which is also a related matter to
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`this proceeding). Dowd Decl. ¶ 13 (Ex. 1225). Through those litigations, Mr.
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`Dowd developed extensive experience with the subject matter at issue in this
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`proceeding. For example, he was involved in drafting briefing regarding claim
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`construction for, and the validity of, the ’558 patent in the related matters. Dowd
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`Decl. ¶ 13 (Ex. 1225). Mr. Dowd also took and defended expert depositions in the
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`related matters regarding invalidity of the ’558 patent. Dowd Decl. ¶ 13 (Ex.
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`1024).
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`IV. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that the Board
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`admit James M. Dowd pro hac vice in this proceeding.
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`Respectfully Submitted,
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`/Theodoros Konstantakopoulos/
`Theodoros Konstantakopoulos
`Registration No. 74,155
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`-5-
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`IPR2018-01154
`U.S. Patent No. 8,698,558
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`CERTIFICATE OF SERVICE
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`I hereby certify that on February 11, 2019, I caused a true and correct copy
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`of the foregoing materials, named below:
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` Petitioner’s Motion for Admission Pro Hac Vice of James M.
`Dowd
` Petitioner’s Updated Exhibit List
` Declaration of James M. Dowd in Support of Motion for
`Admission Pro Hac Vice
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`to be served via electronic mail on the following correspondents of record as listed
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`in Patent Owners’ Mandatory Notices:
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`Joseph M. Sauer (jmsauer@jonesday.com)
`David B. Cochran (dcochran@jonesday.com)
`Richard A. Graham (ragraham@jonesday.com)
`David M. Maiorana (dmaiorana@jonesday.com)
`Joshua R. Nightingale (jrnightingale@jonesday.com)
`Matthew W. Johnson (mwjohsnon@jonesday.com)
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`/Theodoros Konstantakopoulos/
`Theodoros Konstantakopoulos
`Registration No. 74,155
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`IPR2018-01154
`U.S. Patent No. 8,698,558
`PETITIONER’S UPDATED EXHIBIT LIST
`IPR2018-01154
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`Exhibit
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`Description
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`1201
`1202
`1203
`1204
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`1205
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`1206
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`1207
`1208
`1209
`1210
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`1211
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`1212
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`1213
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`1214
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`U.S. Patent No. 8,698,558
`File History for U.S. Patent No. 8,698,558
`Declaration of Dr. Alyssa B. Apsel
`Chu, W.Y. et al., “A 10 MHz bandwidth, 2 mV ripple PA regulator
`for CDMA transmitters,” IEEE Journal of Solid-State Circuits
`2809-2819 (2008) (“Chu”)
`Declaration of IEEE regarding Chu, Kwak, Kim, and Blanken
`(“IEEE Chu Decl.”)
`Choi, J. et al., “Envelope tracking power amplifier robust to battery
`depletion,” Microwave Symposium Digest (MTT), 2010 IEEE
`MTT-S International 1332-36 (2010) (“Choi 2010”)
`Declaration of IEEE regarding Choi 2010 (“IEEE Choi Decl.”)
`Declaration of Debabani Choudhury (“Choudhury Decl.”)
`Declaration of Jinsung Choi (“Choi Decl.”)
`Blanken, P.G. et al., “A 50MHz bandwidth multi-mode PA supply
`modulator for GSM, EDGE and UMTS application,” 2008 Radio
`Frequency Integrated Circuits Symposium (IEEE) 401-04 (2008)
`(“Blanken”)
`Kwak, T.W. et al., “A 2 W CMOS hybrid switching amplitude
`modulator for EDGE polar transmitters,” IEEE Journal of Solid-
`State Circuits 2666-76 (2007) (“Kwak”)
`U.S. Patent No. 5,929,702, “Method and Apparatus for High
`Efficiency High Dynamic Range Power Amplification,” to Myers
`et al. (“Myers”)
`Kim, D. et al., “High efficiency and wideband envelope tracking
`power amplifier with sweet spot tracking.” Radio Frequency
`Integrated Circuits Symposium (RFIC): 255-258 (2010) (“Kim”)
`U.S. Patent No. 6,300,826, “Apparatus and Method for Efficiently
`-7-
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`
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`IPR2018-01154
`U.S. Patent No. 8,698,558
`Amplifying Wideband Envelope Signals” (filed May 5, 2000)
`(“Mathe ’826”)
`Maxim Integrated Products, Inc., MAX9738 –16VP-P Class G
`Amplifier with Inverting Boost Converter, Datasheet 19-3700, Rev.
`0 (March 2008) (“Maxim”)
`Ertl, H. et al., “Basic considerations and topologies of switched-
`mode assisted linear power amplifiers,” IEEE Transactions on
`industrial electronics 44.1 (1997): 116-123 (“Ertl”)
`Kang, D. et al., “A multimode/multiband power amplifier with a
`boosted supply modulator” IEEE Transactions on Microwave
`Theory and Techniques 58.10 (2010): 2598-2608 (“Kang”)
`U.S. Patent No. 5,834,977, “Amplifying Circuit with Power Supply
`Switching Circuit” (filed October 30, 1996 and issued November
`10, 1998) (“Maehara”)
`U.S. Patent No. 5,870,340, “Multiplexer” (filed July 8, 1997 and
`issued February 9, 1999) (“Ohsawa”)
`U.S. Patent No. 6,566,935, “Power Supply Circuit With a Voltage
`Selector” (filed August 28, 2000 and issued May 20, 2003)
`(“Renous”)
`Certificate of Correction for U.S. Patent No. 8,698,558 (“558
`COC”)
`Qualcomm Incorporated’s Initial Claim Construction Brief, Certain
`Mobile Electronic Devices and Radio Frequency and Processing
`Components Thereof, Investigation No. 337-TA-1065 (“Qualcomm
`CC Brief”)
`Order No. 28: Construing Terms of the Asserted Patents, Certain
`Mobile Electronic Devices and Radio Frequency and Processing
`Components Thereof, Investigation No. 337-TA-1065 (“Markman
`Order”)
`Razavi, Design of Analog CMOS Integrated Circuits (2001)
`(“Razavi”) (excerpts)
`Declaration of James M. Dowd in Support of Motion for
`Admission Pro Hac Vice
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`-8-
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`1215
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`1216
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`1217
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`1218
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`1219
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`1220
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`1221
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`1222
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`1223
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`1224
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`1225
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