UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________
`
`
`INTEL CORPORATION,
`Petitioner
`
`v.
`
`QUALCOMM INCORPORATED,
`Patent Owner
`
`_________________________
`
`
`Case IPR2019-000049
`U.S. Patent No. 9,154,356
`
`_________________________
`
`
`PATENT OWNER’S UNOPPOSED MOTION FOR ADMISSION PRO HAC
`VICE OF WILLIAM E. DEVITT
`
`
`
`
`
`
`
`
`
`_________________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________
`
`
`INTEL CORPORATION,
`Petitioner
`
`v.
`
`QUALCOMM INCORPORATED,
`Patent Owner
`
`_________________________
`
`
`Case IPR2019-000049
`U.S. Patent No. 9,154,356
`
`_________________________
`
`
`PATENT OWNER’S UNOPPOSED MOTION FOR ADMISSION PRO HAC
`VICE OF WILLIAM E. DEVITT
`
`
`
`
`
`
`
`
`
`Statement Of Precise Relief Requested
`Pursuant to 37 C.F.R. § 42.10(c) and Paper No. 6 authorizing the parties to
`
`Case IPR2019-000049
`U.S. Patent No. 9,154,356
`
`
`I.
`
`file motions for pro hac vice admissions under 37 C.F.R. § 42.10(c), Patent Owner
`
`Qualcomm Incorporated (“Qualcomm” or “Patent Owner”) respectfully requests that
`
`the Patent Trial and Appeal Board (the “Board”) admit William E. Devitt pro hac vice
`
`in this proceeding. Petitioner does not oppose this motion.
`
`II.
`
`Statement Of Facts Showing Good Cause For The Board To Recognize
`Counsel Pro Hac Vice During The Proceeding
`In accordance with 37 C.F.R. § 42.10(c), 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 to any other conditions
`
`as the Board may impose. Section 42.10(c) indicates that “where lead counsel is a
`
`registered practitioner, a motion to appear pro hac vice by counsel who is not a
`
`registered practitioner may be granted upon a showing that counsel is an experienced
`
`litigating attorney and has an established familiarity with the subject matter at issue
`
`in the proceeding.” The facts here establish good cause for the Board to recognize
`
`William E. Devitt pro hac vice in this proceeding.
`
`
`
`Lead counsel, David B. Cochran (Reg. No. 39,142), and back-up
`
`counsel Matthew W. Johnson (Reg. No. 59,108), Joseph M. Sauer (Reg. No. 47,919),
`
`
`
`
`1
`
`
`
`Case IPR2019-000049
`U.S. Patent No. 9,154,356
`
`Joshua R. Nightingale (Reg. No. 67,865), David M. Maiorana (Reg. No. 41,449),
`
`and Thomas W. Ritchie (Reg. No. 65,505) are registered practitioners.
`
`
`
`Counsel, William E. Devitt, is an experienced litigator and has
`
`established familiarity with the subject matter at issue in the proceeding.
`
`
`
`Accompanying this motion as Exhibit 2028 is the Declaration of
`
`William E. Devitt in Support of this Motion for Admission Pro Hac Vice (“Devitt
`
`Decl.”). In his declaration, Mr. Devitt asserts:
`
`I am a member in good standing of the Bars of the State of Illinois and
`
`the District of Columbia, and am admitted to practice before the
`
`Northern District of Illinois, Eastern District of Texas, Eastern District
`
`of Wisconsin. Devitt Decl. ¶ 3 (Ex. 2028).
`
` Mr. Devitt also asserts:
`
`I am familiar with the subject matter at issue in this proceeding, and I
`
`have reviewed in detail the papers filed in this proceeding. In addition
`
`to the instant proceeding, my firm currently represents Patent Owner in
`
`the following other pending cases involving the patent at issue in this
`
`proceeding: IPR2019-00047, IPR2019-00048, IPR2019-00128, and
`
`IPR2019-00129. I am representing and have represented Patent Owner
`
`Qualcomm
`
`Inc.
`
`in multiple patent-related matters,
`
`including
`
`Qualcomm Inc. v. Apple Inc., 3:17-cv-02398 (S.D. Cal.), which is
`
`
`
`
`2
`
`
`
`related to and involves the same patent at issue in this proceeding.
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`Case IPR2019-000049
`U.S. Patent No. 9,154,356
`
`
`Devitt Decl. ¶¶ 11-12 (Ex. 2028).
`
`
`
`In his declaration, Mr. Devitt also attests to each of the listed items
`
`required by the “Order – Authorizing Motion for Pro Hac Vice Admission” in Case
`
`IPR2013-00639, Paper 7. See Devitt Decl. ¶¶ 1-13 (Ex. 2028).
`
`III. Conclusion
`For the foregoing reasons, Patent Owner respectfully requests that William E.
`
`Devitt be admitted pro hac vice in this proceeding.
`
`
`
`January 21, 2020
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`/Joseph M. Sauer/
`Joseph M. Sauer (Reg. No. 47,919)
`JONES DAY
`901 Lakeside Avenue
`Cleveland, OH 44114
`(216) 586-7506
`jmsauer@jonesday.com
`
`
`Attorney For Patent Owner,
`Qualcomm Incorporated
`
`3
`
`
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`UPDATED TABLE OF EXHIBITS
`
`Exhibit
`2001
`
`Description
`Advisory Action dated June 16, 2014
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`2013
`
`2014
`
`2015
`
`2016
`
`2017
`
`2018
`
`2019
`
`Request for Continued Examination dated July 17, 2014
`
`Request for Continued Examination dated May 20, 2015
`
`Reserved
`
`Reserved
`
`Reserved
`
`Reserved
`
`Reserved
`
`Reserved
`
`Reserved
`
`Reserved
`
`Reserved
`
`U.S. Patent No. 9,161,254
`
`Transcript of the First Deposition of Patrick Fay, Ph.D.
`
`’356 Patent File History – List of References Considered By
`Examiner
`
`’356 Patent File History – Foreign Reference WO 2012/008705
`
`’356 Patent File History – Foreign Reference GB 2472978
`
`U.S. Pat. No. 10,044,613
`
`Qualcomm Inc., STRATEGIES TO WIN IN LTE AND EVOLVE TO LTE
`ADVANCED (2013)
`
`2020
`
`U.S. Pat. Pub. No. 2013/0217398
`
`
`
`
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`Case IPR2019-000049
`U.S. Patent No. 9,154,356
`
`
`2021
`
`2022
`
`2023
`
`2024
`
`2025
`
`2026
`
`2027
`
`2028
`
`ERIK DAHLMAN ET AL., 4G LTE/LTE-ADVANCED FOR MOBILE
`BROADBAND (Academic Press 2011) (excerpted)
`
`Qualcomm Carrier Aggregation Infographic (2014)
`
`Reserved
`
`Declaration of Daniel Foty, Ph.D.
`
`THE OXFORD ENGLISH DICTIONARY (Oxford University Press) (2d
`ed. 1989) (excerpted)
`
`3GPP TS 36.101 V11.0.0, 3RD GENERATION PARTNERSHIP PROJECT;
`TECHNICAL SPECIFICATION GROUP RADIO ACCESS NETWORK;
`EVOLVED UNIVERSAL TERRESTRIAL RADIO ACCESS (E-UTRA);
`USER EQUIPMENT (UE) RADIO TRANSMISSION AND RECEPTION
`(RELEASE 11 ), MARCH 2012 (excerpted)
`
`ʼ356 Patent File History – List of References Considered By
`Examiner
`
`Declaration of William E. Devitt in Support of Motion for
`Admission Pro Hac Vice
`
`
`5
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`
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`
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`Case IPR2019-000049
`U.S. Patent No. 9,154,356
`
`
`CERTIFICATE OF SERVICE
`
`I certify that a copy of the foregoing Patent Owner’s Unopposed Motion for
`
`Admission Pro Hac Vice of William E. Devitt and accompanying declaration was
`
`served on January 21, 2020 by electronic mail, on the following counsel of record
`
`for Petitioner:
`
`David L. Cavanaugh, david.cavanaugh@wilmerhale.com
`
`John V. Hobgood, john.hobgood@wilmerhale.com
`
`Benjamin S. Fernandez, ben.fernandez@wilmerhale.com
`
`Gregory H. Lantier, gregory.lantier@wilmerhale.com
`
`
`
`
`
`
`
`
`
`
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`
`
`/Joseph M. Sauer/
`Joseph M. Sauer (Reg. No. 47,919)
`JONES DAY
`901 Lakeside Avenue
`Cleveland, OH 44114
`(216) 586-7506
`jmsauer@jonesday.com
`
`
`Attorney For Patent Owner,
`Qualcomm Incorporated
`
`
`
`6
`
`
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