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 IPR2018-01281
`Patent 8,768,865
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`PETITIONER’S UNOPPOSED MOTION FOR PRO HAC VICE
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`ADMISSION OF NOAH C. GRAUBART
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`UNDER 37 C.F.R. § 42.10(c)
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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 IPR2018-01281
`Patent 8,768,865
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`PETITIONER’S UNOPPOSED MOTION FOR PRO HAC VICE
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`ADMISSION OF NOAH C. GRAUBART
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`UNDER 37 C.F.R. § 42.10(c)
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`PETITIONER’S UPDATED EXHIBIT LIST
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`Proceeding No.: IPR2018-01281
`Attorney Docket: 39521-0042IP1
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`APPLE-1001
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`U.S. Patent No. 8,768,865 to Narayanan, et al. (“the ‘865
`patent”)
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`APPLE-1002
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`Excerpts from the Prosecution History of the ‘865 Patent (“the
`Prosecution History”)
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`APPLE-1003
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`Declaration of Dr. James Allen
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`APPLE-1004
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`Curriculum Vitae of Dr. James Allen
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`APPLE-1005
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`APPLE-1006
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`APPLE-1007
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`APPLE-1008
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`APPLE-1009
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`Wang et al, “A Framework of Energy Efficient Mobile Sensing
`for Automatic User State Recognition”, Proceedings of the 7th
`international conference on Mobile systems, applications, and
`services, pp. 179-192 , Kraków, Poland — June 22 - 25, 2009
`(“Wang”)
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`“Qualcomm Incorporated Compliant for Patent Infringement,”
`filed on November 29th, 2017, from Case No. 3:17-cv-02402-
`WQH-MDD filed in S.D. CA. (“Compliant”)
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`Exhibit 865 of “Qualcomm Inc.’s Patent Initial Infringement
`Contentions,” filed on March 2nd, 2018, from Case No. 3:17-cv-
`02402-WQH-MDD filed in S.D. CA. (“Infringement
`Contentions”)
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` U.S. Patent Application Publication No. 2010/0217533 to
`Nadkarni et al. (“Nadkarni”)
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`U.S. Patent Application Publication No. 2008/0297513 to
`Greenhill et al. (“Greenhill”)
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`APPLE-1010
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`Webpage of “Nokia N95 8GB - Full phone specifications”
`(Archive.org version dated 05/26/2009,
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`i
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`Proceeding No.: IPR2018-01281
`Attorney Docket: 39521-0042IP1
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`http://web.archive.org/web/20090526054459/http://www.gsmar
`ena.com:80/nokia_n95_8gb-2088.php) (“Nokia N95”)
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`APPLE-1011
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`U.S. Patent No. US 8,676,224 to Louch (“Louch”)
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`APPLE-1012
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`U.S. Patent Application Publication No. 2011/0066383 to
`Jangle et al. (“Jangle”)
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`APPLE-1013
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`U.S. Patent No. 9575776 to De Andrade Cajahyba et al. (“De
`Andrade Cajahyba”)
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`APPLE-1014
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`U.S. Patent Application Publication No. 2011/0081634 to
`Kurata (“Kurata”)
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`APPLE-1015
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`Declaration of Mr. Chris Butler for Nokia N95/APPLE-1010
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`APPLE-1016
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`Declaration of Mr. Scott Delman for Wang/APPLE-1005
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`APPLE-1017
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`APPLE-1018
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`APPLE-1019
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`Cohn, D., Caruana, R., & McCallum, A. Semi-supervised
`clustering with user feedback in Constrained Clustering:
`Advances in Algorithms, Theory, and Applications, 4(1), 17-32
`(2009). (“Cohn”)
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`Ruzzelli, A., Nicolas, C. Schoofs, A., O;”Hare, G. Real-time
`recognition and profiling of appliances through a single
`electricity sensor, Proc. 7th Annual IEEE Conference on Sensor
`Mesh (SECON), Boston. MA 2010. (“Ruzzelli”)
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`Cilla, R., Particio, M., Garcia, J., Berlanga, A., and Molina, J.
`Recognizing Human Activities from Sensors Using Hidden
`Markov Models Constructed by Feature Selection, Algorithms
`2009, 2: pp282-300. (“Cilla”)
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`APPLE-1020
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`The Seventh Edition of the Authoritative Dictionary of IEEE
`Standards Terms (2000)
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`APPLE-1021
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`RESERVED
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`ii
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`Proceeding No.: IPR2018-01281
`Attorney Docket: 39521-0042IP1
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`APPLE-1022
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`Declaration of Noah C. Graubart
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`Served, not filed:
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`Declaration of Dr. James Allen
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`Declaration of Mr. Jacob Robert Munford
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`iii
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`Proceeding No.: IPR2018-01281
`Attorney Docket: 39521-0042IP1
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`Pursuant to 37 C.F.R. § 42.10(c), Petitioner, Apple Inc. (“Petitioner” or
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`“Apple”) respectfully requests that the Board recognize Noah C. Graubart as
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`counsel pro hac vice in this proceeding. Petitioner seeks the counsel of Mr.
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`Graubart due to his experience in representing Apple in other patent-related
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`matters and particularly due to his familiarity with the substantive and technical
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`issues involved in this proceeding. This motion is authorized by the Notice of
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`Filing Date Accorded to Petition and Time for Filing Patent Owner Preliminary
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`Response that was mailed on September 6, 2018.
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`Patent Owner does not oppose this motion.
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`Statement of Facts
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`Mr. Graubart is a patent litigation attorney with over 15 years of experience
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`representing clients in cases involving smartphone software, audio and video
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`processing, telecommunications solutions, wireless networking, optical
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`networking, computer hardware interfaces, and semiconductor fabrication
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`methods. Mr. Graubart regularly litigates patent cases before the U.S. District
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`Courts across the country, at the U.S. International Trade Commission, as well as
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`arguing or briefing cases in the U.S. Courts of Appeals, including at the Federal
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`Circuit. Through his practice in such cases, Mr. Graubart has gained substantial
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`experience in all aspects of patent infringement litigation and other areas of
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`intellectual property. Mr. Graubart began his legal career as a clerk for the
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`Proceeding No.: IPR2018-01281
`Attorney Docket: 39521-0042IP1
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`Honorable Jerry E. Smith of the United States Court of Appeals for the Fifth
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`Circuit. Mr. Graubart’s biography is attached as Appendix A of Exhibit 1022.
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`Mr. Graubart also has particular experience and familiarity with the
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`substantive and technical issues involved in this inter partes review proceeding. In
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`a related matter, Qualcomm Incorporated v. Apple Inc., Case No. 3:17-cv-02402-
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`CAB-MDD pending in the United States District Court for the Southern District of
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`California, Mr. Graubart is serving as counsel for Apple Inc. This related litigation
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`involves the patent at issue in this inter partes review proceeding.
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`Declaration of Individual Seeking to Appear
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`This Motion for Pro Hac Vice Admission is accompanied by a Declaration
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`of Noah C. Graubart.
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`Accordingly, Apple submits that there is good cause under 37 C.F.R. §
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`42.10(c) for the Board to recognize Noah C. Graubart as counsel pro hac vice
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`during this proceeding.
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`Dated April 18, 2019
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`/Timothy W. Riffe/
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`W. Karl Renner, Reg. No. 41,265
`Timothy W. Riffe, Reg. No. 43,881
`Thomas A. Rozylowicz, Reg. No. 50,620
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
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`Attorneys for Petitioner
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`Proceeding No.: IPR2018-01281
`Attorney Docket: 39521-0042IP1
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e)(4), the undersigned certifies that on April 18,
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`2019, a complete and entire copy of this Petitioner’s Motion for Pro Hac Vice and
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`Exhibit 1022 were provided via email, to the Patent Owner by serving the email
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`correspondence addresses of record as follows:
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`Eagle Robinson
`R. Ross Viguet
`Norton Rose Fulbright US LLP
`98 San Jacinto Blvd., Suite 1100
`Austin, TX 78701
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`Email: eagle.robinson@nortonrosefulbright.com
`ross.viguet@nortonrosefulbright.com
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`/Diana Bradley/
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`Diana Bradley
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`(858) 678-5667
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