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`_________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_________________________
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`INTEL CORPORATION,
`Petitioner
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`v.
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`QUALCOMM INCORPORATED,
`Patent Owner
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`_________________________
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`Case IPR2019-00128
`U.S. Patent No. 9,154,356
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`_________________________
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`PATENT OWNER’S UNOPPOSED MOTION FOR ADMISSION PRO HAC
`VICE OF WILLIAM E. DEVITT
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`Statement Of Precise Relief Requested
`Pursuant to 37 C.F.R. § 42.10(c) and Paper No. 6 authorizing the parties to
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`Case IPR2019-00128
`U.S. Patent No. 9,154,356
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`I.
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`file motions for pro hac vice admissions under 37 C.F.R. § 42.10(c), Patent Owner
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`Qualcomm Incorporated (“Qualcomm” or “Patent Owner”) respectfully requests that
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`the Patent Trial and Appeal Board (the “Board”) admit William E. Devitt pro hac vice
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`in this proceeding. Petitioner does not oppose this motion.
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`II.
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`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
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`pro hac vice during a proceeding upon a showing of good cause, subject to the
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`condition that lead counsel be a registered practitioner and to any other conditions
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`as the Board may impose. Section 42.10(c) indicates that “where lead counsel is a
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`registered practitioner, a motion to appear pro hac vice by counsel who is not a
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`registered practitioner may be granted upon a showing that counsel is an experienced
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`litigating attorney and has an established familiarity with the subject matter at issue
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`in the proceeding.” The facts here establish good cause for the Board to recognize
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`William E. Devitt pro hac vice in this proceeding.
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`Lead counsel, David B. Cochran (Reg. No. 39,142), and back-up
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`counsel Matthew W. Johnson (Reg. No. 59,108), Joseph M. Sauer (Reg. No. 47,919),
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`1
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`Case IPR2019-00128
`U.S. Patent No. 9,154,356
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`Joshua R. Nightingale (Reg. No. 67,865), David M. Maiorana (Reg. No. 41,449),
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`and Thomas W. Ritchie (Reg. No. 65,505) are registered practitioners.
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`Counsel, William E. Devitt, is an experienced litigator and has
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`established familiarity with the subject matter at issue in the proceeding.
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`
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`Accompanying this motion as Exhibit 2028 is the Declaration of
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`William E. Devitt in Support of this Motion for Admission Pro Hac Vice (“Devitt
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`Decl.”). In his declaration, Mr. Devitt asserts:
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`I am a member in good standing of the Bars of the State of Illinois and
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`the District of Columbia, and am admitted to practice before the
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`Northern District of Illinois, Eastern District of Texas, Eastern District
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`of Wisconsin. Devitt Decl. ¶ 3 (Ex. 2028).
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` Mr. Devitt also asserts:
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`I am familiar with the subject matter at issue in this proceeding, and I
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`have reviewed in detail the papers filed in this proceeding. In addition
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`to the instant proceeding, my firm currently represents Patent Owner in
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`the following other pending cases involving the patent at issue in this
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`proceeding: IPR2019-00047, IPR2019-00048, IPR2019-00049, and
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`IPR2019-00129. I am representing and have represented Patent Owner
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`Qualcomm
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`Inc.
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`in multiple patent-related matters,
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`including
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`Qualcomm Inc. v. Apple Inc., 3:17-cv-02398 (S.D. Cal.), which is
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`2
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`related to and involves the same patent at issue in this proceeding.
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`Case IPR2019-00128
`U.S. Patent No. 9,154,356
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`Devitt Decl. ¶¶ 11-12 (Ex. 2028).
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`In his declaration, Mr. Devitt also attests to each of the listed items
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`required by the “Order – Authorizing Motion for Pro Hac Vice Admission” in Case
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`IPR2013-00639, Paper 7. See Devitt Decl. ¶¶ 1-13 (Ex. 2028).
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`III. Conclusion
`For the foregoing reasons, Patent Owner respectfully requests that William E.
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`Devitt be admitted pro hac vice in this proceeding.
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`January 21, 2020
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`Respectfully submitted,
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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
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`
`Attorney For Patent Owner,
`Qualcomm Incorporated
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`3
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`UPDATED TABLE OF EXHIBITS
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`Exhibit
`2001
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`Description
`Advisory Action dated June 16, 2014
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`2002
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`2003
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`2004
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`2005
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`2006
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`2007
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`2008
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`2009
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`2010
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`2011
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`2012
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`2013
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`2014
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`2015
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`2016
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`2017
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`2018
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`2019
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`Request for Continued Examination dated July 17, 2014
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`Request for Continued Examination dated May 20, 2015
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`IDS with Examiner’s Initials
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`International Search Report and Written Opinion
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`Original Claims from the ’423 Application
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`Original Claims from related PCT Application
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`District Court Scheduling Order
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`Intel’s ITC Statement of Public Interest
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`ITC Complaint
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`ITC Scheduling Order
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`ITC Revised Schedule
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`U.S. Patent No. 9,161,254
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`Transcript of the First Deposition of Patrick Fay, Ph.D.
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`’356 Patent File History – List of References Considered By
`Examiner
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`’356 Patent File History – Foreign Reference WO 2012/008705
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`’356 Patent File History – Foreign Reference GB 2472978
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`U.S. Pat. No. 10,044,613
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`Qualcomm Inc., STRATEGIES TO WIN IN LTE AND EVOLVE TO LTE
`ADVANCED (2013)
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`2020
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`U.S. Pat. Pub. No. 2013/0217398
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`U.S. Patent No. 9,154,356
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`2021
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`2022
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`2023
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`2024
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`2025
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`2026
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`2027
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`2028
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`ERIK DAHLMAN ET AL., 4G LTE/LTE-ADVANCED FOR MOBILE
`BROADBAND (Academic Press 2011) (excerpted)
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`Qualcomm Carrier Aggregation Infographic (2014)
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`Google Patents search results for “low noise amplifiers” prior art
`having a priority date before May 25, 2012
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`Declaration of Daniel Foty, Ph.D.
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`THE OXFORD ENGLISH DICTIONARY (Oxford University Press) (2d
`ed. 1989) (excerpted)
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`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)
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`Reserved
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`Declaration of William E. Devitt in Support of Motion for
`Admission Pro Hac Vice
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`Case IPR2019-00128
`U.S. Patent No. 9,154,356
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`CERTIFICATE OF SERVICE
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`I certify that a copy of the foregoing Patent Owner’s Unopposed Motion for
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`Admission Pro Hac Vice of William E. Devitt and accompanying declaration was
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`served on January 21, 2020 by electronic mail, on the following counsel of record
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`for Petitioner:
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`David L. Cavanaugh, david.cavanaugh@wilmerhale.com
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`John V. Hobgood, john.hobgood@wilmerhale.com
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`Benjamin S. Fernandez, ben.fernandez@wilmerhale.com
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`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
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`6
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