`Tel: 571-272-7822
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` Paper: 28
`Entered: July 31, 2019
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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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`APPLE INC.,
`Petitioner,
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`v.
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`QUALCOMM INCORPORATED,
`Patent Owner.
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`
`Case IPR2018-01279
`Patent 7,844,037 B2
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`
`
`Before DANIEL N. FISHMAN, MICHELLE N. WORMMEESTER, and
`SCOTT B. HOWARD, Administrative Patent Judges.
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`HOWARD, Administrative Patent Judge.
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`ORDER
`Granting Petitioner’s Motion for Pro Hac Vice Admission of
`Sara C. Fish
`37 C.F.R. § 42.10
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`Case IPR2018-01279
`Patent 7,844,037 B2
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`On July 18, 2019, Petitioner filed a motion requesting pro hac vice
`admission of Sara C. Fish. Paper 27 (“Motion”). Petitioner submitted a
`Declaration from Ms. Fish in support of the Motion. Ex. 1015. Petitioner
`attests that Patent Owner does not oppose the Motion. Motion 1.
`In accordance with 37 C.F.R. § 42.10(c), we may recognize counsel
`pro hac vice during a proceeding upon a showing of good cause. In
`authorizing a motion for pro hac vice admission, the Board requires the
`moving party to provide a statement of facts showing there is good cause for
`the Board to recognize counsel pro hac vice and an affidavit or declaration
`of the individual seeking to appear in the proceeding. See Paper 5, 2 (citing
`Unified Patents, Inc. v. Parallel Iron, LLC, Case IPR2013-00639 (PTAB
`Oct. 15, 2013) (Paper 7) (representative “Order – Authorizing Motion for
`Pro Hac Vice Admission”)).
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`Based on the facts set forth in the Motion and the accompanying
`Declaration, we conclude that Ms. Fish has sufficient legal and technical
`qualifications to represent Petitioner in this proceeding and has demonstrated
`sufficient familiarity with the subject matter of this proceeding. See
`Ex. 1015 ¶¶ 8–9. Accordingly, Petitioner has established good cause for pro
`hac vice admission of Ms. Fish.
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`In consideration of the foregoing, it is hereby
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`ORDERED that Petitioner’s Motion for pro hac vice admission of
`Sara C. Fish is granted;
`FURTHER ORDERED that Petitioner must file, within ten (10)
`business days, an updated mandatory notice identifying Ms. Fish as back-up
`counsel in accordance with 37 C.F.R. § 42.8(b)(3);
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`Case IPR2018-01279
`Patent 7,844,037 B2
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`FURTHER ORDERED that Petitioner must file, within ten (10)
`business days, a Power of Attorney for the instant proceeding for Ms. Fish in
`accordance with 37 C.F.R. § 42.10(b);
`FURTHER ORDERED that Petitioner continue to have a registered
`practitioner represent it as lead counsel for the instant proceeding, but that
`Ms. Fish is authorized to act as back-up counsel;
`FURTHER ORDERED that Ms. Fish comply with the Office Patent
`Trial Practice Guide, including the August 2018 Update (83 Fed. Reg.
`39,989 (Aug. 13, 2018)) and the July 2019 Update (84 Fed. Reg. 33,925
`(July 16, 2019)), and the Board’s Rules of Practice for Trials, as set forth in
`Part 42 of Title 37, Code of Federal Regulations; and
`FURTHER ORDERED that Ms. Fish is subject to the Office’s
`disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and the USPTO Rules
`of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq.
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`Case IPR2018-01279
`Patent 7,844,037 B2
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`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
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`