`Tel: 571-272-7822
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` Paper No. 15
`
` Entered: April 23, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`QUALCOMM INCORPORATED,
`Patent Owner.
`____________
`
`Case IPR2018-01281
` Case IPR2018-012821
`Patent 8,768,865 B2
`____________
`
`
`
`Before MICHELLE N. WORMMEESTER and AMANDA F. WIEKER,
`Administrative Patent Judges.
`
`WORMMEESTER, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Motion for Pro Hac Vice Admission of Noah C. Graubart
`37 C.F.R. § 42.10
`
`
`
`1 This Order addresses issues that are identical in each of the identified
`cases. We exercise our discretion to issue this Order to be filed in each case.
`The parties are not authorized to use this style heading in subsequent papers.
`
`
`
`Case IPR2018-01281
`Case IPR2018-01282
`Patent 8,768,865 B2
`
`
`
`In each of the identified cases, Petitioner has filed a motion for pro
`hac vice admission of Noah C. Graubart. Paper 11.2 Each motion is
`supported by a declaration of Mr. Graubart. Ex. 1022. Petitioner asserts that
`Patent Owner does not oppose its motions. Paper 11, 1.
`We have reviewed Petitioner’s submissions and determine that the
`requirements of 37 C.F.R. § 42.10 have been met and that there is good
`cause to admit Mr. Graubart pro hac vice.3
`It is, therefore,
`ORDERED that Petitioner’s motion for pro hac vice admission of
`Noah C. Graubart in each of the identified proceedings is granted;
`FURTHER ORDERED that Mr. Graubart is authorized to appear as
`back-up counsel for Petitioner in the identified proceedings, but
`Mr. Graubart may not act as lead counsel;
`FURTHER ORDERED that Petitioner is to continue to have a
`registered practitioner represent it as lead counsel for the identified
`proceedings;
`
`
`2 Paper and exhibit numbers refer to Case IPR2018-01281. Corresponding
`motions and declarations were filed in each of the cases.
`3 According to the Board’s representative decision in Unified Patents, Inc. v.
`Parallel Iron, LLC, Mr. Graubart’s declaration must provide a statement
`acknowledging that he has read and will comply with the Office Patent Trial
`Practice Guide and the Board’s Rules of Practice for Trials set forth in part
`42 of 37 C.F.R. IPR2013-00639, Paper 7, 3 (PTAB Oct. 15, 2013). In his
`declaration, Mr. Graubart incorrectly cites “part 42 of the Code of Federal
`Regulations.” Ex. 1022, 3. We presume this citation to be a typographical
`error. Pursuant to this Order, by appearing pro hac vice in the identified
`proceedings, Mr. Graubart agrees to comply with part 42 of 37 C.F.R.
`
`2
`
`
`
`Case IPR2018-01281
`Case IPR2018-01282
`Patent 8,768,865 B2
`
`
`
`FURTHER ORDERED that Mr. Graubart is to comply with the
`Office Patent Trial Practice Guide and 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. Graubart 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.; and
`FURTHER ORDERED that Petitioner shall file updated mandatory
`notices in the identified proceedings, pursuant to 37 C.F.R. § 42.8(b)(3),
`providing updated information regarding back-up counsel.
`
`
`
`
`PETITIONER:
`
`Walter Renner
`Timothy Riffe
`Thomas Rozylowicz
`Fish & Richardson P.C.
`Axf-ptab@fr.com
`riffe@fr.com
`tar@fr.com
`
`PATENT OWNER:
`
`Eagle Robinson
`Ross Viguet
`Norton Rose Fulbright US LLP
`Eagle.robinson@nortonrosefulbright.com
`Ross.viguet@nortonrosefulbright.com
`
`
`
`3
`
`
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