`Tel: 571-272-7822
`
`Paper 15
`Entered: April 4, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`QUALCOMM INC.,
`Patent Owner.
`____________
`
`Case IPR2018-01279
`Patent 7,844,037 B2
`____________
`
`Before DANIEL N. FISHMAN, MICHELLE N. WORMMEESTER, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`HOWARD, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Patent Owner’s Motion for Pro Hac Vice Admission of
`Puneet Kohli
`37 C.F.R. § 42.10
`
`
`
`
`
`
`
`IPR2018-01279
`Patent 7,844,037 B2
`
`
`Patent Owner filed a Motion requesting pro hac vice admission of
`Puneet Kohli in the instant proceeding, and provided a Declaration from
`Mr. Kohli in support of the request. Paper 14; Ex. 2003. Patent Owner’s
`lead counsel, Mr. Brian Oaks, is a registered practitioner. See Paper 14, 5.
`Petitioner did not oppose the motion within the allotted time for such an
`opposition. Based on the facts set forth in the Motion and Declaration, we
`conclude that Patent Owner has established good cause for Mr. Kohli’s pro
`hac vice admission. See 37 C.F.R. § 42.10(c); Unified Patents, Inc. v.
`Parallel Iron, LLC, Case IPR2013-00639, slip op. at 3–4 (PTAB Oct. 15,
`2013) (Paper 7) (setting forth the requirements for pro hac vice admission).
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner’s Motion for pro hac vice admission of
`Puneet Kohli is granted, and Mr. Kohli is authorized to represent Petitioner
`only as back-up counsel in the instant proceeding;
`FURTHER ORDERED that Patent Owner is to continue to have a
`registered practitioner as lead counsel in the instant proceeding;
`FURTHER ORDERED that Mr. Kohli is to comply with the Office
`Patent Trial Practice Guide (77 Fed. Reg. 48,756 (Aug. 14, 2012)), as
`updated by the Trial Practice Guide Update (83 Fed. Reg. 39,989 (Aug. 13,
`2018)), and also with the Board’s Rules of Practice for Trials, as set forth in
`Part 42 of Title 37, Code of Federal Regulations;
`FURTHER ORDERED that Mr. Kohli is subject to the USPTO Rules
`of Professional Conduct set forth in 37 C.F.R. §§ 11.101–11.901 and the
`Office’s disciplinary jurisdiction under 37 C.F.R. § 11.19(a);
`
`2
`
`
`
`IPR2018-01279
`Patent 7,844,037 B2
`
`
`FURTHER ORDERED that Patent Owner shall file updated
`Mandatory Notices in accordance with 37 C.F.R. § 42.8(b)(3), identifying
`Mr. Kohli as back-up counsel; and
`FURTHER ORDERED that, within ten (10) business days of the
`issuance of this Order, Patent Owner shall submit a Power of Attorney for
`Mr. Kohli in accordance with 37 C.F.R. § 42.10(b).
`
`
`
`
`3
`
`
`
`IPR2018-01279
`Patent 7,844,037 B2
`
`PETITIONER:
`
`W. Karl Renner
`Thomas A. Rozylowicz
`Timothy W. Riffe
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`rozylowicz@fr.com
`riffe@fr.com
`PTABInbound@fr.com
`
`
`PATENT OWNER:
`
`Brian W. Oaks
`Chad Walters
`Charles Yeh
`Eliot Williams
`Joseph Akalski
`Jessica Lin
`BAKER BOTTS L.L.P.
`brian.oaks@bakerbotts.com
`chad.walters@bakerbotts.com
`charles.yeh@bakerbotts.com
`eliot.williams@bakerbotts.com
`joe.akalski@bakerbotts.com
`jessica.lin@bakerbotts.com
`
`
`
`4
`
`
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