United States Patent No. 7,844,037
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––
`
`Apple Inc.,
`Petitioner
`
`v.
`
`Qualcomm Inc.,
`Patent Owner
`
`––––––––––
`
`Inter Partes Review No. IPR2018-01279
`Patent 7,844,037
`
`––––––––––
`
`PATENT OWNER’S MOTION FOR PRO HAC VICE ADMISSION OF
`
`PUNEET KOHLI
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––
`
`Apple Inc.,
`Petitioner
`
`v.
`
`Qualcomm Inc.,
`Patent Owner
`
`––––––––––
`
`Inter Partes Review No. IPR2018-01279
`Patent 7,844,037
`
`––––––––––
`
`PATENT OWNER’S MOTION FOR PRO HAC VICE ADMISSION OF
`
`PUNEET KOHLI
`
`
`
`United States Patent No. 7,844,037
`
`EXHIBIT LIST
`
`Patent Owner’s Exhibits
`
`2001
`
`2002
`
`2003
`
`Disclaimer in Patent Under 37 CFR 1.321(a)
`
`U.S. Patent No. 6,219,413 to Burg
`
`Declaration of Puneet Kohli in Support of Motion for Pro Hac Vice
`Admission
`
`
`
`United States Patent No. 7,844,037
`
`I.
`
`RELIEF REQUESTED
`
`In the Notice of Filing Date Accorded to Petition (“Notice”) mailed August
`
`6, 2018, the Board authorized the parties to file motions for pro hac vice
`
`admission under 37 C.F.R. § 42.10(c). The Notice requires that such motions be
`
`filed in accordance with the “Order – Authorizing Motion for Pro Hac Vice
`
`Admission” in Case IPR2013-00639, Paper No. 7 (“Order”).
`
`Patent Owner respectfully requests that the Board recognize Mr. Puneet
`
`Kohli as counsel pro hac vice during this proceeding.
`
`II.
`
`NO OPPOSITION TO THIS MOTION
`
`Patent Owner has conferred with Petitioner with regard to this Motion, and
`
`Petitioner has declined to take any position on the Motion at this time.
`
`III. GOVERNING LAWS, RULES, AND PRECEDENT
`
`The Board may recognize counsel pro hac vice during a proceeding on a
`
`showing of good cause. “[W]here lead counsel is a registered practitioner, a
`
`motion to appear pro hac vice may be granted upon a showing that counsel is an
`
`experienced litigation attorney and has an established familiarity with the subject
`
`matter at issue in the proceeding.” 37 C.F.R. § 42.10(c).
`
`1
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`United States Patent No. 7,844,037
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`IV.
`
`STATEMENT OF FACTS
`
`Based on the following statement of facts, and supported by the
`
`Declaration of Puneet Kohli submitted herewith as Exhibit 2003, Patent Owner
`
`submits that a showing of good cause has been made and respectfully requests
`
`the pro hac vice admission of Puneet Kohli in this proceeding:
`
`1. Patent Owner’s lead counsel, Brian Oaks, is a registered
`
`practitioner (Reg. No. 44,981).
`
`2. Mr. Kohli is an experienced litigating attorney and has been litigating
`
`patent cases for over five (5) years. (Ex. 2003,¶ 2).
`
`3. Mr. Kohli is a member in good standing of the Texas State Bar. (Ex.
`
`2003, ¶ 4).
`
`4. Mr. Kohli has never been suspended or disbarred from practice before
`
`any court or administrative body, nor has he ever been the subject of any ethical
`
`grievance procedure or investigation. (Ex. 2003,¶ 5).
`
`5. No application filed by Mr. Kohli for admission to practice before any
`
`court or administrative body has ever been denied. (Ex. 2003,¶ 6).
`
`6. No sanctions or contempt citations have been imposed against Mr.
`
`Kohli by any court or administrative body. (Ex. 2003,¶ 7).
`
`2
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`United States Patent No. 7,844,037
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`7. Mr. Kohli has read and agrees to comply with the Office Patent Trial
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`Practice Guide and the Board’s Rules of Practice for Trials set forth in part 42 of
`
`Title 37 of the C.F.R. (Ex. 2003,¶ 8).
`
`8. Mr. Kohli understands that he will be subject to the USPTO Rules of
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`Professional Conduct as set forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary
`
`jurisdiction under 37 C.F.R. § 11.19(a). (Ex. 2003,¶ 9).
`
`9. Mr. Kohli has an established familiarity with the subject matter at issue
`
`in this proceeding. He assisted in drafting the Preliminary Response to the
`
`Petition for Inter Partes Review filed in this matter. Mr. Kohli has substantively
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`reviewed all materials filed in this proceeding, including the Petition and all
`
`accompanying exhibits, and the Preliminary Response and all accompanying
`
`exhibits. (Ex. 2003,¶ 10).
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`3
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`United States Patent No. 7,844,037
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`V.
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`GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION OF
`
`MR. KOHLI IN THIS PROCEEDING
`
`The Board may recognize counsel pro hac vice during a proceeding upon a
`
`showing of good cause, subject to the condition that lead counsel be a registered
`
`practitioner and any other conditions as the Board may impose. 37 C.F.R. §
`
`42.10(c). Patent Owner’s lead counsel, Brian Oaks, is a registered practitioner.
`
`Based on the facts contained herein, as supported by Mr. Kohli’s declaration (Ex.
`
`2003), good cause exists to admit Mr. Kohli pro hac vice as backup counsel in
`
`this proceeding. Patent Owner has a substantial need for Mr. Kohli’s pro hac vice
`
`admission and his involvement in depositions and other issues arising from this
`
`proceeding. Admission of Mr. Kohli will also ease the burden on Patent Owner’s
`
`lead counsel in this proceeding.
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`VIII. CONCLUSION.
`
`For the foregoing reasons as well as the reasons contained in the attached
`
`declaration, Patent Owner respectfully requests admission of Puneet Kohli as
`
`counsel pro hac vice as backup counsel in this proceeding.
`
`4
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`
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`United States Patent No. 7,844,037
`
`Date: March 19, 2019
`
`
`
`Respectfully submitted,
`
`/s/Brian W. Oaks
`Brian W. Oaks, Reg. No. 44,981
`brian.oaks@bakerbotts.com
`Baker Botts L.L.P.
`98 San Jacinto Blvd., Suite 1500
`Austin, Texas 78701
`Tel.: 512.322.5470; Fax: 512.322.3621
`
`Lead Counsel for Patent Owner
`
`Jessica W. Lin, Reg. No. 69,920
`jessica.lin@bakerbotts.com
`Baker Botts L.L.P.
`30 Rockefeller Plaza
`New York, NY 10112
`Tel.: 212.408.2563; Fax: 212.259.2563
`
`Back-Up Counsel for Patent Owner
`
`5
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`
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`United States Patent No. 7,844,037
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), this is to certify that I
`
`caused to be served a true and correct copy of the foregoing “PATENT OWNER’S
`
`MOTION FOR PRO HAC VICE ADMISSION OF PUNEET KOHLI” and
`
`“EXHIBIT 2003” thereto via the PTAB’s E2E system and sent via email as
`
`detailed below.
`
`Date of service:
`
`March 19, 2019
`
`Documents served: PATENT OWNER’S MOTION FOR PRO
`HAC VICE ADMISSION OF PUNEET KOHLI
`
`Person Served:
`
`W. Karl Renner
`IPR39521-0050IP1@fr.com
`
`Thomas A. Rozylowicz
`Timothy W. Riffe
`PTABInbound@fr.com
`
`axf-ptab@fr.com
`rozylowicz@fr.com
`riffe@fr.com
`
`Date: March 19, 2019
`
`Respectfully Submitted,
`
`
`/s/ Brian W. Oaks
`Registration No. 44,981
`Lead Counsel for Patent Owner
`
`6
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`
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